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NOV 1 9 2014
The JS-44 civil coversheet and the information contained herein neitherreplace norsupplement the filing and serviceof
pleadings or other papers as required by law, exceptas provided by local rulesof court. Thisform, approved bythe
Judicial Conference ofthe United States inSeptember1974,is required foruse ofthe Clerk of Court forthe purposeof
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PLAINTIFFS
INDAI
212-655-3500
CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE ABRIEF STATEMENT OF CAUSE)
(DO NOTCITEJURISDICTIONAL STATUTES UNLESSDIVERSITY)
15 USC 1051
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NATURE OF SUIT
ACTIONS UNDER STATUTES
CONTRACT
PERSONAL INJURY
PERSONAL INJURY
FORFErTURE/PENALTY
[ ] 367 HEALTHCARE/
[]110
IJ120
[]130
N140
MARINE
[ ] 310 AIRPLANE
[ J 315 AIRPLANE PRODUCT
MILLER ACT
NEGOTIABLE
INSURANCE
LIABILITY
INSTRUMENT
[]150
SLANDER
[ ] 340 MARINE
[ ] 345 MARINE PRODUCT
MEDICARE ACT
RECOVERY OF
DEFAULTED
STUDENT LOANS
1)190
[]195
PRODUCT LIABILITY
LIABILITY
INJURY
SOCIAL SECURITY
[ ]290
REAPPORTIONMENT
[
[
[
[
[
] 410 ANTITRUST
] 430 BANKS & BANKING
] 450 COMMERCE
] 460 DEPORTATION
] 470 RACKETEER INFLU
ORGANIZATION ACT
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[ ]861 HIA(1395ff)
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[ ]240
[ ]245
28 USC 157
[ ] 820 COPYRIGHTS
[ ] 830 PATENT
M 840 TRADEMARK
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[ ]220
[ ] 230
[ ] 423 WITHDRAWAL
LIABILITY
[]210
f] 400 STATE
28 USC 158
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21 usr Jf
. . . OTT,
OTHER STATUTES
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(]160
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OF JUDGMENT
[]153
INJURY/PRODUCT LIABILITY l^
[ ] 330 FEDERAL
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OVERPAYMENT &
ENFORCEMENT
[ ]151
[ ]152
APPLICATION
[ J 893 ENVIRONMENTAL
MATTERS
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INFORMATION ACT
26 USC 7609
[ ] 896 ARBITRATION
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1 ] 950 CONSTITUTIONALITY OF
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Lv
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Plaintiff,
COMPLAINT
-against-
CO
CO
Defendants.
Plaintiff Big Apple Tutoring LLC ("Plaintiff or "Big Apple Tutoring"), by its
undersigned attorneys, for its Complaint against defendants Big Apple Education Center, Inc.
("Big Apple Education") and Cambridge Educational Center Inc. also doing business as C2
Education ("C2 Education" and collectively with Big Apple Education, "Defendants"), alleges as
follows:
NATURE OF THE ACTION
1.
Plaintiff owns valuable rights in the federally registered BIG APPLE TUTORING
continuing to be used in connection with educational services, namely tutoring in a wide range of
curriculum and standardized test preparation for students.
2.
Defendants have blatantly and willfully infringed Plaintiffs rights in the BIG
APPLE TUTORING mark by offering the same educational services under the BIG APPLE
designation of origin and unfair competition in violation of the Trademark Act of 1946, as
amended (the Lanham Act, 15 U.SC. 1051, et seq.), unfair competition and trademark
infringement under New York common law, and violation of Section 349 of New York's
General Business Law.
THE PARTIES
4.
Plaintiff is a limited liability company formed and existing under the laws of the
5.
Upon information and belief, Big Apple Education is a limited liability company
formed and existing under the laws of the State of New York and having its principal place of
business at 1556 Third Avenue, Suite 300, New York, NY 10128.
6.
formed and existing under the laws of the State of Virginia and having its principal place of
business at 6465 East Johns Crossing, Duluth, GA 30097.
7.
This Court has jurisdiction over the subject matter of this action pursuant to 28
U.S.C. 1331 (federal question), 15 U.S.C. 1121 (actions arising under the Lanham Act), 28
U.S.C. 1338(a) (acts of Congress relating to trademarks), 28 U.S.C. 1338(b) (pendant unfair
competition claims), and 28 U.S.C. 1367 (supplemental jurisdiction over state claims).
8.
This Court has jurisdiction over Defendants by virtue of the fact that Defendants
have: (1) transacted business with the State of New York on a regular and consistent basis and
(2) infringed Plaintiffs trademark within the State of New York.
9.
FACTS
Plaintiffs Trademarks
10.
Plaintiff is the owner of U.S. Federal Trademark Registration No. 4,631,421 for
"conducting after school math, English, science, foreign languages, and standardized test
preparation in grades K-12 and college level tutoring programs; education services, namely,
providing tutoring in the fields of math, English, science, foreign languages, history, social
sciences, and standardized test preparation for grades K-12 and college level" in Class 41 (the
"BIG APPLE TUTORING Trademark"). A copy of Plaintiffs trademark registration certificate
for this mark is attached hereto as Exhibit A and is incorporated herein by reference.
11.
Plaintiff is also the owner of U.S. Federal Trademark Registration No. 4,636,062
for "conducting after school math, English, science, foreign languages and standardized test
preparation in grades K-12 and college level tutoring programs; education services, namely,
providing tutoring in the fields of math, English, science, foreign languages, history, social
sciences and standardized test preparation for grades K-12 and college level" in Class 41 ("the
BIG APPLE TUTORING and Design Trademark" and collectively with the BIG APPLE
TUTORING Trademark, the "BIG APPLE TUTORING Trademarks").
TUTORING and Design Trademark consists of a design of an apple depicted over a stylized
design of an open book with the wording "BIG APPLE TUTORING LLC" appearing to the right
of the apple and open book designs:
BIG APPLE
TUTORING
LLC
A copy of Plaintiff s trademark registration certificate for this mark is attached hereto as Exhibit
B and is incorporated herein by reference.
3
4444-002 Doc# 21 v.O
12.
Plaintiffs use of the BIG APPLE TUTORING Trademark dates back to at least
as early as August 1, 1998 and use of the BIG APPLE TUTORING and Design Trademark dates
back to at least as early as November 2001. The BIG APPLE TUTORING Trademarks have
been in continual use since such dates. During such time, Plaintiff has gained extensive goodwill
and acquired distinctiveness in connection with its BIG APPLE TUTORING Trademarks.
13.
was registered on March 10, 2003 and which Plaintiff has continually used thereafter in
TUTORING Trademarks for academic tutoring and standardized test preparation: (a) consumers
use the BIG APPLE TUTORING Trademarks to identify and refer to Plaintiffs BIG APPLE
TUTORING brand; (b) Plaintiffs academic tutoring and standardized test preparation are
recognized by consumers as a high quality services emanating from a single source, namely,
Plaintiff; and (c) the BIG APPLE TUTORING Trademarks have built up secondary meaning and
extensive goodwill.
Defendants' Infringement of Plaintiffs Trademarks
15.
trademark in commerce to promote Big Apple Education's academic tutoring and standardized
test preparation services in the New York City metropolitan area.
16.
Defendant Big Apple Education is also the registrant of the domain name
www.bigappleeducation.com, which was registered on September 24, 2011, and website through
which it advertises Big Apple Education's services (the "Infringing Website").
17.
counseling, curriculum and teaching to provide top-notch learning experience for its students.
We cater to K-12 and college students in all major subjects especially in English,
Mathematics, and Science and standardized & admissions tests." Printouts of pages from the
Infringing Website are attached hereto as Exhibit C.
18.
19.
trademark and as part of a domain name is done in connection with the exact same services as
the services offered by Plaintiff in connection with its BIG APPLE TUTORING Trademarks.
20.
Defendant Big Apple Education is also using the following logo in connection
21.
BIGAPPLE
EDUCATION
TUTORING and Design Trademark where an apple design appears to the left of the words BIG
APPLE EDUCATION and the words "BIG APPLE" appear above the word "EDUCATION in
the same arrangement as in Plaintiffs BIG APPLE TUTORING and Design Trademark.
22.
Infringing Website, the user is directed to a webpage boasting "personalized tutoring" services
for "standardized tests," "admissions tests," and "school subjects." According to this page of the
Infringing Website, defendant Big Apple Education is a "franchisee" of C2 Education.
23.
With the Infringing Website, Defendants are seeking to create a false designation
of origin to Plaintiff with the use of the confusingly similar BIG APPLE EDUCATION and BIG
APPLE EDUCATION and Design trademarks.
24.
trademark, and Defendant C2 Education's use of the Infringing Website to promote its own
services and products in connection the BIG APPLE EDUCATION trademark, constitutes
Because Defendants offer educational services and because Plaintiff offers the
same services, consumers are likely to believe that Defendants' services are provided by,
sponsored by, approved by, licensed by, affiliated with or in some other way legitimately
connected to Plaintiff and its BIG APPLE TUTORING Trademarks and related services.
26.
including: (a) Plaintiffs former clients searched the Internet for Plaintiffs contact information,
saw the Infringing Website, and thought that Plaintiff had sold its business; (b) Plaintiffs
existing clients thought that Plaintiff only offered "in-home" sessions because such reference is
on the Infringing Website (but not the BIG APPLE TUTORING Website); and (c) Big Apple
Education's clients contacted Plaintiff, not Big Apple Education, complaining about tutoring
sessions provided by Big Apple Education.
27.
Plaintiff has not authorized Defendants to use the BIG APPLE TUTORING
28.
Upon information and belief, defendant Big Apple Education has recklessly,
willfully and intentionally violated Plaintiffs trademark rights with the deliberate intention of
trading on the valuable goodwill and reputation established in the BIG APPLE TUTORING
Trademarks.
29.
that
By letter dated November 11, 2014, Plaintiff, through legal counsel, demanded
defendant
Big
Apple
Education
cease
from
using
the
domain
name
www.bigappleeducation.com and from any further use of the BIG APPLE EDUCATION
trademark and/or other marks similar to the BIG APPLE TUTORING Trademarks in any
manner, including without limitation, by removing all such references from the Infringing
Website and other advertising materials. However, defendant Big Apple Education refused to
comply.
FIRST CLAIM FOR RELIEF
30.
through 29.
31.
Defendant Big Apple Education's trademark and the Infringing Website are
confusingly similar to Plaintiffs BIG APPLE TUTORING Trademarks and BIG APPLE
TUTORING Website, and create the false and misleading impression that Big Apple Education's
services and the Infringing Website are provided by, sponsored by, approved by, licensed by,
affiliated with or in some other way legitimately connected to Plaintiff and its federally
registered BIG APPLE TUTORING Trademarks and related services.
32.
and standardized test preparation services and products create the false and misleading
impression that C2 Education's services and products are provided by, sponsored by, approved
7
4444-002 Doc# 21 v.O
by, licensed by, affiliated with or in some other way legitimately connected to Plaintiff and its
federally registered BIG APPLE TUTORING Trademarks and related services.
33.
Defendants' conduct has caused, and, unless enjoined by this Court, will continue
trade on the goodwill associated with Plaintiffs federally registered BIG APPLE TUTORING
Trademarks to Plaintiffs great and irreparable injury.
35.
Defendants have caused and are likely to continue causing substantial injury to
the public and Plaintiff, and Plaintiff is entitled to injunctive relief and to recover Defendants'
profits, actual damages, enhanced profits and damages, costs, and reasonable attorneys' fees
under 15 U.S.C. 1114, 1116 and 1117.
SECOND CLAIM FOR RELIEF
36.
through 29.
37.
TUTORING Trademarks and false designation of origin, false representation and false
description arising under 15 U.S.C. 1125(a).
38.
Defendants have caused and are likely to continue causing substantial injury to
Plaintiff and the goodwill associated with Plaintiffs BIG APPLE TUTORING Trademarks,
including diversion of customers from Plaintiff, lost sales and lost profits.
Plaintiff has no
39.
through 29.
40.
BIG APPLE TUTORING Trademarks and the common law rights therein under the common
law of the State of New York, and Defendants' acts have created and will continue to create
consumer confusion, all to the irreparable injury of Plaintiff unless restrained by this Court.
Plaintiff has no adequate remedy at law for this injury.
41.
Defendants acted with full knowledge of Plaintiffs use of the BIG APPLE
TUTORING Trademarks and without regard to the likelihood of confusion of the public created
by Defendants' activities, all to the substantial and irreparable injury of the public and of
Plaintiffs business reputation and goodwill.
42.
trade on the goodwill associated with Plaintiffs BIG APPLE TUTORING Trademarks.
43.
As a result of Defendants' acts, Plaintiff has been damaged in an amount not yet
deter Defendants from similar conduct in the future, Plaintiff additionally is entitled to punitive
damages.
44.
through 29.
45.
consumers with respect to their efforts to pass off their services and products to consumers as
being affiliated with Plaintiffs BIG APPLE TUTORING Trademarks.
46.
47.
48.
Defendants' conduct constitutes unfair and deception acts and/or practices in the
course of a business, trade, or commerce in violation of Section 349 of New York's General
Business Law.
49.
A.
successors and assigns and all others in concert and privity with them from:
i.
ii. doing any other acts which are intended to or will be likely to deceive
consumers or the trade into falsely believing that there is an affiliation or
10
4444-002 Doc# 21 v.O
B.
profits, including without limitation profits derived from the Infringing Website, including
prejudgment interest thereon;
C.
D.
E.
F.
Plaintiff be reimbursed for its costs and expenses, including attorneys' fees,
G.
Plaintiff obtains such other and further relief as the Court deems just and proper.
Jeffrey Weingaj
Kevin Fritz-
Susan Schlesinger
Meister Seelig & Fein LLP
Attorneysfor Plaintiff
11
4444-002 Doc# 21 v.O
TOsiiteU
states
of
3tnerirj>
VB^
SHntteb States! patent anb t&rabemartt (Office
*-Cf
BIG APPLE TUTORING
SERVICEMARK
PRINCIPAL REGISTER
SCIENCES, AND STANDARDIZED TEST PREPARATION FOR GRADES K-12 AND COLLEGE
SEC. 2(F).
You mustfilea Declaration of Use(or Excusable Nonuse) and anApplication for Renewal between
every 9th and lOlh-yearperiod, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above
with the payment of an additional fee.
The United States Patent and Trademark Office (USPTO) will NOT send you any future notice or
reminder of these filing requirements.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holderof an international registration with
an extension of protection to the United States underthe Madrid Protocol musttimely file the Declarations
of Use (or Excusable Nonuse) referenced above directly with the USPTO. The timeperiods for filing are
basedon theU.S.registration date(notthe international registration date). Thedeadlines andgrace periods
for theDeclarations of Use (or Excusable Nonuse) are identical to those for nationally issued registrations.
See15U.S.C. 1058,1141k. However, owners ofinternational registrations do notfile renewal applications
at the USPTO. Instead, the holder must file a renewal of the underlying international registration at the
International Bureauof theWorld Intellectual Property Organization, underArticle7 of theMadridProtocol,
before the expiration of each ten-year term of protection, calculated from the date of the international
registration. See 15 U.S.C. 1141j. Formore information andrenewal forms fortheinternational registration,
see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintainingregistrations are subject to change. Please check the
USPTOwebsite for further information. With the exceptionof renewalapplications for registered
extensions of protection, you can file the registration maintenance documents referenced above online
at http://www.uspto.gov.
OurServices
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11/17/2014 Big Apple Education |SAT, ACT. SHSAT. SSAT. GRE. College Counseling, Boardng School. Graduate School. LEGO civics &technology-About Big.
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Big Apple Education's goal is to help build better future and cultivate tomorrow's
leaders.
CONSULTATION
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and standardized &admissions tests. Our proven track record and results prove that
we are truly a "total educational solution" company in Manhattan, New York City.
We boast the bestcombination ofteachers, counselors, mentors, and educators at Big
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contents, and passionate educators to provide highest quality learning environment
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Columbia University, MA Computing in Education
**!&?'
Jfc UCLA, BA Economics
Getting admitted to the mostselective colleges won't guarantee a successful life.
However, it will go long ways to help one experience what it takes to succeed in life:
learning what dedication and hard work could getyou, fighting through constant
challenges while overcoming it and realizing planning and executing matters. Most
importantly, you surround yourself with an elite network ofstudents, professors and
alumni who may help in paving a way to realize your lifelong dreams and goals. At
Ivy Admissions Consulting, we not only assist in getting you in to your dream school,
our goalisto mentor and guide you to become tomorrow's leaders. Let us be partners
your journey towards success.
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Big Apple Education |SAT. ACT. SHSAT, SSAT, GRE, College Counseling, Boarding School. Graduate School, LEGO civics &technology -Tutoring
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Smarter Students
Personalized Tutoring
C2 5^'< RpmiH-j
Avenge writingscore.-*1!M pt
- standardized tests
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education
be smarter.
Big Apple Education boasts the best tutors in Manhattan, New York. We are a proud franchisee of C2 Educational Center,
and use its top-notch contents and materials.
We believe that a world ofpotential lives within each of our students. It is this belief that drives us to create innovative
tutoring programs and seek inspiring tutors. Above all else, our goal is to help young minds discover and develop their
own potentiaL
We know that each child is unique. That's why C2 offers highly individualized tutoring by a team ofelite instructors. Our
goal is tohelp your child develop his or her full potentiaL We give struggling students the skills tosucceed, and we
guideadvanced students to new academic heights.
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Big Apple Education |SAT. ACT. SHSAT, SSAT, GRE, College Counseling, Boarding School. Graduate School. lGO civics &technology -Tutoring
Customized Curricula
All tutoring sessions are highly personalized to match the individual's goals, level and needs.
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-AU sessions are individualized sessions (1:1 instruction model, up to 3students atatime)
> Step 4: Progress tests &additional consultation sessions are offered to make sure the student is progressing toward
set goals
Schedule
All class slots are 1 hour (K-6) or 2hours (7-12th grade) long. Students can choose a time slot within class hours. All
classes are highly customized toeach student and designed to focus on improving student's weaknesses.
School Year Schedule:
>
Mon-Frl 5-9PM
>
>
M'on-Fri 9-4PM
>
Ssturdcy 9AM-3PM
>
SuodavlOAVi-iFM
Pricing
Minimum sign up requirement is 20 tutoring hours. There are discounts for signing up for 50+ hours. Basically, the more
hours you sign up, the lower the average hourly rate.
The pricing includes diagnostic and interim test &reports, as well as academic consultation sessions. We also provide
class progress reports for each class.
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