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Complaint Punchy Logo
Complaint Punchy Logo
N AT U R E O F T H E A C T I O N
unfair competition and trademark dilution under the federal trademark laws, 15 U.S.C. § 1051 et
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thereof.
T H E PA RT I ES
the laws of the State of New York, having its principal place of business at 243 Fifth Ave., New
York, NY 10016.
existing under the laws of the State of New York, having its principal place of business at 243
domestic corporation duly organized and existing under the laws of the State of Nevada, having a
place of business at 800 E. Charleston Blvd., Las Vegas, Nevada 89104, the address of its
limited liability company duly organized and existing under the laws of the State of Delaware,
having its principal place of business at 340 South Hauser Blvd., No. 432, Los Angeles, CA
90036-3239, and its registered agent, National Corporate Research, LTD., at 615 South Dupont
Promotions and a citizen and resident of the Philippines. Manny Pacquiao spends a substantial
amount of his time in the United States training, boxing and carrying out other business incident
3DFTXLDR¶VEURWKHUDQG3UHVLGHQW6HFUHWDU\DQG7UHDVXUHURIGHIHndant MP Promotions.
organized and existing under the laws of the State of Nevada, having its principal place of
business at 3980 Howard Hughes, Suite 580, Las Vegas, Nevada 89109. Top Rank is a leading
promoter of boxing matches in the United States . The address of its registered agent, The
Prentice-Hall Corporation System Nevada, Inc., is 502 East John Street, Carson City, NV 89706.
Upon information and belief, Michael Heitner, whose business address is 2 Park Avenue, New
JU R ISD I C T I O N A N D V E N U E
10. Subject matter jurisdiction over the Lanham Act claims in this action is conferred
upon the Court pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338 and 1367.
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12. Upon information and belief, this Court has personal jurisdiction over each of the
Merchandise, Manny Pacquiao and Top Rank have conducted press conferences and have
entered into licensing deals in New York, including but not limited to licensing deals for pay-
per-view broadcasting of their boxing matches on HBO, a subsidiary of the media conglomerate
Time Warner, Inc., having corporate offices within the City of New York. Upon information and
belief, Top Rank produces boxing matches in the City of New York. Upon information and
belief, MP Merchandise, Manny Pacquiao and R. Pacquiao have encouraged, ratified, adopted
and/or personally participated in the conduct of MP Promotions, MP Merchandise and Top Rank
complained of herein.
13. Upon information and belief, venue is proper in this judicial district pursuant to 28
U.S.C. § 1391(b) because the Defendants either have substantial contacts with this judicial
district and/or a substantial part of the events or omissions giving rise to the claims in this
Complaint occurred in this judicial district. Additionally, venue with respect to Manny Pacquiao
FA C TS A N D A L L E G A T I O NS C O M M O N T O A L L C L A I MS
including but not limited to boxing gloves, head gear, punch mitts, heavy bags and speed bags, as
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logo is a distinctive pictograph of a boxer from the waist up delivering a roundhouse punch. The
head and hands of the boxer are rendered as three ovals. The oval delivering the punch is not a
16. GB Licensing is the owner of two federal trademark registrations for the Punchy
logo:
025 (clothing, casual wear and sportswear for men and women) and International Class
028 (boxing equipment), first used on May 1, 2003, and registered on March 27, 2007;
and
025, first used on May 1, 2003, and registered on November 20, 2007.
17. The Punchy Trademarks have been in continuous use in interstate commerce since
WKURXJK*%/LFHQVLQJ¶VH[FOXVLYHOLFHQVHH*UDQW%R[LQJ7KHUHJLVWHUHGHxemplars of the
Punchy Trademark Reg. No. 3221254 Punchy Trademark Reg. No. 3341378
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boxing gloves, combined with the use of that equipment by Olympic and world champions,
makes it impossible for boxers, trainers, promoters and fans alike not to be aware of this
distinctive logo. In the boxing world, Grant gloves are famous. Boxing gloves by Grant Boxing
are used professionally by boxers in every weight class. Among current users of Grant gloves are
WBC (World Boxing Council) world heavyweight champion Vitali Klitschko, WBA (World
Holyfield, Wladimir Klitschko, Roy Jones Jr., Joe Calzaghe, Bernard Hopkins and Joan Guzman.
Julio Cesar Chavez Jr., the current World Boxing Council (WBC) Silver Middleweight
Champion, wore Grant gloves from approximately 2004 through 2009. Other past fighters who
used Grant gloves include Felix Trinidad, Antonio Tarver, Roberto Duran, Sugar Ray Leonard,
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shown below.
19. On November 14 2009, the date of a boxing match between Manny Pacquiao and
Miguel Cotto, Grant Elvis Phillips, founder and chief executive officer of Plaintiffs, received a
call from a boxing equipment distributor asking if Grant Boxing had made a deal with MP
Promotions, as he saw what he believed was the Punchy Trademark hanging above the boxing
ring at the Pacquiao-Cotto fight. Mr. Phillips did not see the fight, but set about to investigate the
20. In the ensuing few months Mr. Phillips discovered the Punchy Trademarks had
3URPRWLRQVWKH³,QIULQJLQJ/RJR´$VFDQEe seen from the example below, the Infringing
Logo simply flips horizontally the pictographic portion of the Punchy Trademarks, maintaining
21. Specifically, Mr. Phillips discovered that the Infringing Logo was being used for
the promotion and presentation of boxing matches and on products such as jackets and shirts
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22. On the morning of March 12, 2010, Mr. Phillips delivered cease and desist letters
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We are aware of the use of the Infringing Logo on articles of clothing at live
sporting events, on large banners displayed at such events and in general
promotional materials for such events. ... In particular, I am told that the
Infringing Logo will be prominently displayed in and around the forthcoming
Manny Pacquaio vs. Joshua Clottey fight at Cowboys Stadium, Dallas, Texas,
on Saturday, March 13.
* * *
"Your use of the Infringing Logo in the manner described above constitutes a
violation of our rights and is severely damaging to our proprietary trademark
and, potentially, our business. We ask that you immediately discontinue the use
of the Infringing Logo, as ongoing violations of our rights will not be
tolerated."
23. Between 2:00 and 3:00 pm in the afternoon of March 12, 2010, Mr. Phillips met
Mr. Koncz in the gym at the Gaylord Hotel in Grapevine, Texas. Mr. Phillips told Mr. Koncz
that Manny Pacquiao and his people had to stop using the Punchy Trademarks and that people
were getting confused. Mr. Koncz told Mr. Phillips that he would discuss the matter with Manny
24. Although he waited patiently, Mr. Phillips did not hear back from Mr. Koncz or
anyone in the Pacquiao camp. Moreover, Mr. Phillips began to see clothing bearing the
Infringing Logo for sale on eBay and other websites. Finally, on August 27, 2010, MP
Promotions and Top Rank announced a coast-to-coast media tour to launch the promotion of the
November 13, 2010, fight between Manny Pacquiao and Antonio Margarito. On September 1,
2010, a press conference open to the public, attended by Manny Pacquiao, among others, was
held at Chelsea Piers, Pier 60, in New York City. The Infringing Logo was prominently and
repeatedly displayed on the press conference backdrop and on the press kits that were handed
Logo is displayed in connection with the upcoming Pacquiao-Margarito fight. An image from the
Chelsea Piers press conference, showing the Infringing Logo in various places on the backdrop
(taken from a videoclip RQ7RS5DQN¶VZebsite), is shown below. A copy of the press kit handed
Image from videoclip of press conference at Chelsea Piers, from website of Top Rank, Inc.
25. Clearly, the Defendants have no intention to stop using the Infringing Logo, have
made the Infringing Logo a part of their national promotional campaign for the Pacquiao-
Margarito fight on November 13, 2010, and have encouraged, ratified, adopted and/or personally
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members of the public and the boxing world, thereby damaging Plaintiffs¶ business reputation,
AS A N D F O R A F I RST C A USE O F A C T I O N
Federal T rademar k Infringement
(15 U.S. C . §§ 1114-1117; L anham A ct §§ 32-35)
27. Plaintiffs reallege and incorporate by reference each of the allegations contained
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substantial damages, including without limitation to its business reputation and goodwill.
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DGHTXDWHUHPHG\DWODZ'HIHQGDQWV¶FRQGXFWKDVDOVRFDXVHGDQGXQOHVVHQMRLQHGZLOOFRQWLQXH
to cause inevitable public confusion for which there is no adequate remedy at law.
1116.
amount to be determined at trial, including but not limited to the profits earned by Defendants
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undertaken willfully, thereby entitling Plaintiffs to treble their actual damages and to an award of
35. Pursuant to 15 U.S.C. § 1118, Plaintiffs are entitled to the destruction of all labels,
signs, posters, prints, press kits, packages, wrappers, receptacles and advertisements in the
possession of Defendants or under Defendants¶ control which bear the Infringing Logo.
AS A N D F O R A SE C O N D C A USE O F A C T I O N
F alse Designation O f O rigin, Unfair Competition, F alse A dvertising
(15 U.S. C . § 1125(a); L anham A ct §43(a))
36. Plaintiffs reallege and incorporate by reference each of the allegations contained
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encouraging, ratifying, adopting and/or personally participating in the use of the Infringing Logo
to promote their products and services is likely to cause confusion, mistake and deception on the
as to cause confusion, mistake and deception as to the true origin, sponsorship or approval of
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adequate remedy at law. Defendants¶ conduct has also caused and, unless enjoined, will continue
to cause inevitable public confusion for which there is no adequate remedy at law.
41. Plaintiffs are therefore entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
amount to be determined at trial, including but not limited to the profits earned by Defendants
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undertaken willfully, thereby entitling Plaintiffs to treble their actual damages and to an award of
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44. Pursuant to 15 U.S.C. § 1118, Plaintiffs are entitled to the destruction of all labels,
signs, posters, prints, press kits, packages, wrappers, receptacles and advertisements in the
possession of Defendants or under Defendants¶ control which bear the Infringing Logo.
AS A N D F O R A T H I R D C A USE O F A C T I O N
Federal T rademar k Dilution
(15 U.S. C . § 1125(c); L anham A ct § 43(c))
45. Plaintiffs reallege and incorporate by reference each of the allegations contained
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7UDGHPDUNVLQLQWHUVWDWHFRPPHUFHWRDGYHUWLVHSURPRWHPDUNHWDQGVHOO'HIHQGDQWV¶SURGXFWV
DQGVHUYLFHVLVOLNHO\WRFDXVHGLOXWLRQRI3ODLQWLIIV¶3XQFK\7UDGHPDUNE\EOXUUing and
47. The Punchy Trademarks were first used in commerce on May 1, 2003, and have
been continuously used in commerce since then in connection with the manufacturing,
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advertising its products, the Punchy Trademarks have become famous in the boxing world within
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of the famous Punchy Trademarks by destroying the association between the Punchy Trademarks
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50. 'HIHQGDQWV¶FRQduct has caused and, unless enjoined, will continue to cause
irreparable harm and injury to Plaintiffs, including but not limited to diminution of the value and
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reputation and goodwill, for which there is no adequate remedy at law. Plaintiffs are therefore
51. Pursuant to 15 U.S.C. § 1117(a), due to Defendants¶ willful conduct, Plaintiffs are
entitled to recover damages in an amount to be determined at trial, including but not limited to
the profits earned by Defendants from their misappropriation and unauthorized use of the Punchy
Trademarks.
thereby entitling Plaintiffs, pursuant to 15 U.S.C. § 1118, to the destruction of all labels, signs,
posters, prints, press kits, packages, wrappers, receptacles and advertisements in the possession
AS A N D F O R A F O U R T H C A USE O F A C T I O N
Deceptive T rade Practices
(New Yor k G eneral Business L aw § 349)
53. Plaintiffs reallege and incorporate by reference each of the allegations contained
54. 'HIHQGDQWV¶FRQGXFWDQGVSHFLILFDOO\WKHLUPLVDSSURSULDWLRQDQGXQDXWKRUL]HGXVH
deceptive trade practices in violation of New York General Business Law § 349.
55. Pursuant to New York General Business Law § 239(h), Plaintiffs are entitled to
recover damages in an amount to be determined at trial, including but not limited to the profits
earned by Defendants from their misappropriation and unauthorized use of the Punchy
Trademarks.
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WKHUHE\HQWLWOLQJ3ODLQWLIIVWRWUHEOHWKHLUDFWXDOGDPDJHVDQGWRDQDZDUGRIDWWRUQH\V¶IHHVXQGHU
AS A N D F O R A F I F T H C A USE O F A C T I O N
T rademar k Dilution
(New Yor k G eneral Business L aw § 360-L)
57. Plaintiffs reallege and incorporate by reference each of the allegations contained
of the Punchy Trademarks in interstate commerce and within the State of New York as alleged in
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dilXWHWKHGLVWLQFWLYHTXDOLW\RI3ODLQWLIIV¶IDPRXVPDUNE\GHVWUR\LQJWKHDVVRFLDWLRQEHWZHHQWKH
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irreparable harm and injury to Plaintiffs, including but not limited to diminution of the value and
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60. Consequently, Plaintiffs are entitled to injunctive relief pursuant to New York
PR A Y E R F O R R E L I E F
WHEREFORE, Plaintiffs pray that this Court enter judgment against Defendants and
and any person or entity acting in concert with them, from (i) engaging in any act alleged herein
in violation of the United States trademark laws and/or New York State law, including but not
limited to the use of the Infringing Logo or any mark or logo confusingly similar to the Punchy
Trademarks; and (ii) engaging in any act that constitutes infringement, unfair competition, false
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(b) Requiring Defendants to take any action as may be directed by the Court for the
purpose of attempting to alleviate or remedy confusion among consumers and the boxing
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(d) Ordering Defendants to account to Plaintiffs for their profits derived by reason of
their misappropriation of the Punchy Trademarks and use of the Infringing Logo;
(e) 3XUVXDQWWR86&RUGHULQJWKDW'HIHQGDQWV¶SURILWVEHWUHEOHGDQG
awarded to Plaintiffs;
(f) Pursuant to 15 U.S.C. § 1117, awarding Plaintiffs their costs, expenses and
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(g) Pursuant to 15 U.S.C. § 1118, ordering the destruction of all labels, signs, posters,
prints, press kits, packages, wrappers, receptacles and advertisements in the possession of
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(h) Awarding Plaintiffs damages sufficient to compensate Plaintiffs for the losses and
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(i) Awarding Plaintiffs both prejudgment and postjudgment interest on any monies to
be paid by Defendants;
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(k) Awarding such other and further relief as to the Court seems just, proper and
equitable.
JU R Y D E M A N D