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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK __________________________________________ ) ) ) ) Plaintiff, ) ) v. ) ) THURSDAY FRIDAY, INC., a California ) corporation, ) ) Defendant. ) ) __________________________________________) HERMS INTERNATIONAL, a French corporation, NOTICE OF MOTION PLEASE TAKE NOTICE that defendant Thursday Friday, Inc., by and through counsel, have moved this Court for an Order pursuant to Federal Rule of Civil Procedure 12(b)(6) to dismiss all Counts in the Amended Complaint for failure to state a claim upon which relief can be granted; and PLEASE TAKE FURTHER NOTICE that, pursuant to SDNY Local Rule 6.1, opposition papers shall be served no later than March 21, 2011, and reply papers, if any shall be served no later than March 28, 2011; and PLEASE TAKE FURTHER NOTICE that, a hearing on the Motion will be

No. 11 Civ. 580 (AKH) ORAL ARGUMENT REQUESTED

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scheduled at the Courts convenience as stated in the Courts individual rules. Richmond, Virginia Dated: March 7, 2011 THURSDAY FRIDAY, INC. By: /s/ Jeffrey L. Cimbalo Counsel

Jeffrey L. Cimbalo (JC-6680) The Cimbalo Firm, P.C. 1306 W. Main St. Richmond, VA 23220 Tel: (804) 313-6266 Paul R. Niehaus (PN-3994) S. Gabriel Hayes-Williams (SH-0775) NIEHAUS LLP 1359 Broadway Suite 2001 New York, NY 10018 Tel: (212) 631-0223 Fax: (212) 624-0223 Attorneys for Defendant Thursday Friday, Inc.

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ) ) ) ) ) ) ) ) ) ) ) ) ) )

HERMS INTERNATIONAL, a French corporation, Plaintiff, v. THURSDAY FRIDAY, INC., a California corporation, Defendant.

No. 11 Civ. 580 (AKH) ORAL ARGUMENT REQUESTED

MEMORANDUM IN SUPPORT OF DEFENDANTS MOTION TO DISMISS UNDER RULE 12(b)(6) THE CIMBALO FIRM, P.C. Jeffrey L. Cimbalo (JC-6680) 1306 W. Main St. Richmond, VA 23220 Tel: (804) 313-6266 Paul R. Niehaus (PN-3394) S. Gabriel Hayes-Williams (SH-0775) NIEHAUS LLP 1359 Broadway Suite 2001 New York, NY 10018 Tel: (212) 631-0223 Fax: (212) 624-0223 Attorneys for Defendant Thursday Friday, Inc.

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TABLE OF CONTENTS PRELIMINARY STATEMENT.....1 STATEMENT OF FACTS.......3 ARGUMENT.5 I. II. Legal Standard on Motion to Dismiss.....5 Plaintiffs Claims Fail Generally Because the Amended Complaint does not Allege a Recognizable Trademark in the Birkin Bag Trademark..6 A. B. C. D. III. The Amended Complaint does not allege that the design of the Herms Birkin was intended to designate its source.......6 The Birkin Bag Trademark bears obvious word trademarks which designate its source.......8 The Amended Complaint does not adequately allege a trademark or trade dress in the Birkin Bag Trademark......10 The Amended Complaint does not adequately plead secondary meaning for The Birkin Bag Trademark......13

The Amended Complaint Fails to Plead False Designation of Origin..14 A. B. The Amended Complaint does not allege any use by Thursday Friday of the Birkin Bag Trademark......15 The Amended Complaint does not state that there was any false designation of origin......18

IV.

Infringement of Registered Trademark......20 A. Photographs of what appears to be a Birkin Bag cannot infringe the registered closure design.20

V.

Federal Trademark Dilution...21 A. B. Plaintiff has not adequately pleaded famousness to avail itself of the TDRA.22 The Amended Complaint does not adequately allege tarnishment because the Together Bag is not of low quality or unwholesome.25 i

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C. VI. VII.

The Amended Complaint does not allege that any fame is separate from the fame of registered word marks..26

The Dismissal of the Federal Causes of Action Leaves Only State Claims...27 New York Common Law Trademark Infringement and Unfair Competition27 A. Plaintiff does not adequately plead bad faith or bad intent27

VIII.

Dilution Under New York State Law28 A. Plaintiff does not state a claim for tarnishment under New York law28

IX.

Plaintiff does not Plead Sufficient Facts to Warrant an Injunction...29

CONCLUSION31

ii

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TABLE OF AUTHORITIES Page(s) CASES 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d. Cir. 2005)...16, 17 Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc. 280 F.3d 619 (6th Cir. 2002)....7 American Express Co. v. Goetz 515 F.3d 156 (2d Cir. 2008)....7 Ashcroft v. Iqbal 129 S. Ct. 1937 (2009).5, 12, 13, 18, 24, 28, 30 Bell Atl. Corp. v. Twombly 550 U.S. 544, 112 S. Ct. 1955 (2007)..5 Chambers v. Time Warner, Inc. 282 F.3d 147 (2d Cir. 2000).6 In re Chemical Dynamics, Inc. 839 F.2d 1569 (Fed. Cir. 1988)..7, 9, 12 Clairol Inc. v. Gillette Co. 389 F.2d 264 (2d Cir. 1968).....7 Clinique Laboratories, Inc. v. Dep Corp. 945 F. Supp. 547 (S.D.N.Y. 1996)....25 Cortec Indus., Inc. v. Sum Holding L.P. 949 F.2d 42 (2d Cir. 1991)....10 Dan-Foam A/S v. Brand Named Beds, LLC 500 F. Supp. 2d 296 (S.D.N.Y. 2009)...23 Dastar Corp. v. Twentieth Century Fox Film Corp. 539 U.S. 23,123 S. Ct. 2041 (2003)...19 eBay, Inc. v. MercExchange, L.L.C. 547 U.S. 388, 126 S. Ct. 1837 (2006)....30

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E.J. Brach & Sons 256 F.2d 325 (CCPA 1958).....8 Fendi Adele S.L.R. v. Burlington Coat Factory Warehouse Corp. 689 F. Supp. 2d 585, 598-99 (S.D.N.Y. 2010)..14 Fifth Ave. of Long Island Realty Assoc. v. Caruso Mgmt. Co., Ltd. 718 F. Supp. 2d 292 (E.D.N.Y. 2010)...29 Gant v. Wallingford Bd. Of Educ. 69 F.3d 669 (2d Cir. 1995)...5 Genessee Brewing Co. Inc. v. Stroh Brewing Co. 124 F.3d 137 (2d Cir. 1997).....14, 27 Goldman v. Belden 754 F.2d 1059 (2d Cir. 1985)...5 Grandon v. Merrill Lynch & Co. 147 F.3d 184 (2d Cir. 1998).....5 Heller Inc. v. Design Within Reach, Inc. No. 09 Civ. 1909, 2009 WL 2486054, at *1 (S.D.N.Y. Aug. 14, 2009)6, 11, 12, 14, 22, 23, 24 Hillerich & Bradsby Co. 204 F.2d 287 (CCPA 1953).8 Holiday Inns, Inc. v. 800 Reservation, Inc. 86 F.3d 619 (6th Cir. 1996)16, 17-18 Hormel Foods Corp. 73 F.3d 497 (2d Cir. 1996).........25 Jada Toys, Inc. v. Mattel, Inc. 518 F.3d 628 (9th Cir. 2008).....24 Jofen v. Epoch Biosciences, Inc. No. 01 Civ. 4129, 2002 WL 1461351, at *1 (S.D.N.Y. July 8, 2002)6 Knitwaves, Inc. v. Lollytogs Ltd. 71 F.3d 996 (2d Cir. 1995)...7-8 Landscape Forms, Inc. v. Columbia Cascade Co. 113 F.3d 373 (2d Cir. 1997)..12

iv

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In re Livent, Inc. Noteholders Sec. Lit. 151 F. Supp. 2d 371 (S.D.N.Y. 2001)...17 Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc. 875 F.2d 1026 (2d Cir. 1989).29 Miss Dig Sys., Inc. v. Power Plus Eng'g, Inc. 944 F. Supp. 600 (E.D. Mich. 1996)..16 Miss Universe, L.P. v. Villegas 672 F. Supp. 2d 575 (S.D.N.Y. 2009)...25 Natl Lighting v. Bridge Metal Indus., LLC 601 F. Supp. 2d 556 (S.D.N.Y. 2009)...12 Optimum Technologies, Inc. v. Henkel Consumer Adhesives, Inc. 496 F.3d 1231 (11th Cir. 2007)..19 Port Dock & Stone Corp. v. Oldcastle Northeast, Inc. 507 F.3d 117 (2d Cir. 2007).5 Qualitex Co. v. Jacobson Prods. Co. Inc. 514 U.S. 159, 115 S. Ct. 1300 (1995)......9 Rescuecom, Corp. v. Google, Inc. 562 F.3d 123 (2d Cir. 2009)...16 Savin Corp. v. Savin Group 391 F.3d 439 (2d Cir. 2004)...22 Schenectady Varnish Co., Inc. 280 F.2d 169 (CCPA 1960).8 Sherwood 48 Assoc. v. Sony Corp. of Am. 76 Fed. Appx. 389 (2d Cir. 2003)..11 Smith v. Local 819 I.B.T. Pension Plan 291 F.3d 236 (2d Cir. 2002).5 The Sports Authority, Inc. v. Prime Hospitality Corp. 89 F.3d 955 (2d Cir. 1996)...14, 28 Star Industries v. Bacardi & Co., Ltd. 412 F.3d 373 (2d Cir. 2005).7, 8

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Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. 763 (1992)...11

U.S.C.A. 15 U.S.C.A. 1114..6 15 U.S.C.A. 1114(1)(a) (2010)...20 15 U.S.C.A. 1117(a)-(b) (2010)......28 15 U.S.C.A. 1125(a)(1)(2010).20 15 U.S.C.A. 1125(a)(1)(A) (2010)....6, 14-15 15 U.S.C.A. 1125(c)6, 30 15 U.S.C.A. 1125(c)(2)(C) (2010)..25 15 U.S.C.A. 1125 (c)(4)(B) (2010)26 15 U.S.C.A. 1127 (2010)......6, 7, 15, 20 15 U.S.C.A. 1367(c)(3)..27 OTHER 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 19:17 at p. 909 (2d ed. 1984)........9 New York Gen. Bus. L. 360-l (2010)...6, 14, 28

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Defendant Thursday Friday, Inc. (Thursday Friday) respectfully submits this memorandum of law in support of its motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. PRELIMINARY STATEMENT At the heart of this matter is plaintiff Herms Internationals attempt to destroy a new business for the alleged sin of producing a tote bag that has the gall to imply that paying $6,000 for a fancy purse is just a little ridiculous. Herms alleges that Thursday Fridays Together Bag creates unacceptable customer confusion with plaintiffs Herms Birkin handbag, despite its own allegations that: one is mass-manufactured out of canvas and the other handcrafted from the finest leather; one is a plain open tote bag while the other has a distinctive three-lobed flap design with keyhole shaped notches; one is a boxy rectangle and the other has a dimpled triangular profile; one does not close while the other has a closure of two thin, horizontal straps with metal plates that fit over a circular lock; one is entirely open and the other has a padlock; and one retails for $35, while the other start[s] at about $6,000, and some models are more expensive. (Am. Compl. 11, 13.) Nevertheless, Herms has alleged that the Together Bag creates customer confusion and infringes upon Hermss trademarks in the design of the Birkin Bag. The Amended Complaint suffers not from a mere lack of detail, but a comprehensive lack of substance that the pleading of sufficient facts provides. Importantly, Herms has not alleged nor could it that the Together Bag is a knock-off of the Herms Birkin bag. Nowhere either does the Amended Complaint use the words counterfeit, copy, imitation, copyright, design patent, or trade dress. Nor is there any reference to Hermss own use of its newly claimed trademark

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(the Birkin Bag Trademark) as a designator of source, or that Thursday Friday used its alleged trademarks at all. There are no facts to support any allegation that the designs of an Herms Birkin and the Together Bag look in any way alike, or that a Together Bag could ever be confused with an Herms Birkin bag. Instead, plaintiff rests its entire case on the allegation that Thursday Friday has affixed photographs of what appears to be a genuine Plaintiffs Birkin Bag to its inexpensive tote bag. (Am. Compl. 44.) But even this allegation withers under scrutiny, since even a cursory examination of the two bags shows that that the Together Bag does not depict a genuine Herms Birkin bag because, as plaintiff well knew when drafting its Amended Complaint, Herms Birkin bags have the word trademark Herms-Paris or the like stamped at least three times on the bag, and the Together Bag photographs do not show any such marks. Faced with the indisputable facts that the Together Bag does not use the words Herms or Birkin, the Amended Complaint reaches further afield and claims that the Together Bag violates a new trademark based on the three-dimensional design of the Herms Birkin Bag. Referring to this unregistered trademark as the Birkin Bag Trademark, plaintiff claims infringement of a three-dimensional unregistered trademark in the form of a false designation of origin claim as well as dilution of that unregistered trademark. It also claims infringement of a registered trademarked closure on the Herms Birkin bag with which, by the registrations own terms, the Together Bag shares not a single feature. The Amended Complaint is adequately straightforward in one, possibly unintentional way it claims that Defendant is simply riding on the reputation and recognition of the Birkin Bag . . . . (Am. Compl. 1.) Plaintiff, by its Amended

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Complaint, is seeking to imbue its non-patented, non-copyrighted design with permanent trademark protection based on various theories of what amounts to gestalt infringement. The law knows of no such claim. Because plaintiff fails to plead any cause of action existing under federal or New York law, the Amended Complaint should be dismissed. And, because none of the counts set forth in the Amended Complaint can be repleaded adequately, they should be dismissed with prejudice. STATEMENT OF FACTS According to the Amended Complaint, plaintiff Herms is a worldwide manufacturer and retailer of high-quality, hand-made goods. (Am. Compl. 8-9.) The Amended Complaint repeatedly emphasizes that the Herms name is associated with hand made luxury goods of the highest quality. (Id.) According to the Amended Complaint, each Herms Birkin bag is handcrafted from the finest leather by an experienced artisan or artisans requiring between sixteen and nineteen hours of intensive labor and craftsmanship to create. (Am. Compl. 13.) Despite prices of $6,000 and up, there is an eighteen month waiting list to obtain an Herms Birkin bag in the United States. (Id.) The Amended Complaint states four distinctive design characteristics of the Herms Birkin Bag, adding the term inter alia to imply more: (a) a distinctive three lobed flap design with keyhole shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps with metal plates at their end that fit over a circular turn lock, and (e) [sic] a padlock, which sometimes is placed within the turn lock and is sometimes placed at the end of a leather

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fob. (Am. Compl. 11.) Plaintiff further emphasizes that the bags closure is particularly distinctive and recognizable. (Am. Compl. 12.) On the other hand, as alleged by the Amended Complaint, Defendants Together Bag is an inexpensive five-sided cotton canvas tote bag imprinted with an image of what is alleged to be an Herms Birkin Bag. (Am. Compl. 21.) As revealed by the photographs of the Together Bag attached to the Amended Complaint, the Together Bag does not have: (a) a distinctive three lobed flap design (b) a dimpled triangular profile, (c) a closure consisting of two thin, horizontal straps with metal plates at their end; or (d) a padlock. (Id. Exh. G.) Nor does the Together Bag have a particularly distinctive or recognizable closure, for the simple reason that it has no closure at all. (Id.) Plaintiff filed its original Complaint on January 28, 2011. On February 11, 2011, Thursday Fridays counsel notified plaintiffs counsel of a serious factual error in its Complaint and its need for withdrawal or correction. (Declaration of Jeffrey L. Cimbalo, March 7, 2011 (Cimbalo Dec.) 4.) Paragraph 18 of the original Complaint stated that there were no visible word trademarks on the Herms Birkin bags exterior. (Complaint 18.) In response to plaintiffs counsels astonishing statement that neither he personally nor his client knew whether word trademarks were visible on the Herms Birkin bags exterior, Thursday Fridays counsel forwarded his own research to plaintiffs counsel showing that several trademarks can readily be seen on the Herms Birkin bag, and providing photographs of the word marks Herms-Paris and others. (Cimbalo Dec. Exh. 1.) On February 17, 2011, plaintiff filed its Amended Complaint with a new paragraph 18, omitting its earlier allegation that there were no word trademarks on the exterior of the Herms Birkin bag. (Am. Compl. 18.) Because the

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colloquy between counsel directly led to the change in the Amended Complaint, it cannot be but that plaintiffs counsel relied on the e-mail exhange and the photographs therein when drafting of the Amended Complaint. (Id.) ARGUMENT I. Legal Standard on Motion to Dismiss On a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), the allegations in the Complaint are accepted as true, and all reasonable inferences must be drawn in the plaintiffs favor. Grandon v. Merrill Lynch & Co., 147 F.3d 184, 188 (2d Cir. 1998); Gant v. Wallingford Bd. Of Educ., 69 F.3d 669, 673 (2d Cir. 1995). The Courts function on a motion to dismiss is not to weigh evidence that might be presented at a trial but merely to determine whether the complaint itself is legally sufficient. Goldman v. Belden, 754 F.2d 1059, 1067 (2d Cir. 1985). The Court should not dismiss a claim if the plaintiff has stated enough facts to state a claim to relief that is plausible on its face, and a claim is deemed to have facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955, 1974 (2007); Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009). But while the Court should construe the factual allegations in the light most favorable to the plaintiff, the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions. Iqbal, 129 S. Ct. at 1940; see also Port Dock & Stone Corp. v. Oldcastle Northeast, Inc., 507 F.3d 117, 121 (2d Cir. 2007); Smith v. Local 819 I.B.T. Pension Plan, 291 F.3d 236, 240 (2d Cir. 2002).

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In deciding the defendants motion to dismiss, the Court may consider documents attached to the Complaint or incorporated in it by reference, matters of which judicial notice may be taken, or documents that the plaintiff relied upon in bringing suit and either are in its possession or of which it had knowledge. See Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2000); see also Jofen v. Epoch Biosciences, inc., No. 01 Civ. 4129, 2002 WL 1461351, at *1 (S.D.N.Y. July 8, 2002). See generally, Heller Inc. v. Design Within Reach, Inc., 2009 WL 2486054, at *1 (S.D.N.Y. Aug. 14, 2009). II. Plaintiffs Claims Fail Generally Because the Amended Complaint does not Allege a Recognizable Trademark in the Birkin Bag Trademark Plaintiffs Amended Complaint lists five causes of action.1 All but one of the causes of action (Count Two) is unalterably founded on the theory that the design of the Herms Birkin bag (as opposed to merely its name) is a cognizable and enforceable trademark. However, plaintiff has not shown and cannot show that the design of the Herms Birkin bag is an enforceable trademark. Although each of the causes of action suffers from additional flaws, for this reason alone much of the Amended Complaint must be dismissed. A. The Amended Complaint does not allege that the design of the Herms Birkin was intended to designate its source. Section 1127 of the Lanham Act defines a trademark as any word, name, symbol, or device, or any combination thereof which serves to identify and distinguish
1

The causes of action are for: (i) false designation of origin under 15 U.S.C.A. 1125(a)(1)(A); (ii) federal trademark infringement under 15 U.S.C.A. 1114; (iii) New York common law trademark infringement and unfair competition; (iv) dilution under 15 U.S.C.A. 1125(c); and (v) dilution under New York Gen. Bus. L. 360-l. It is arguable that Count Three addresses common law infringement of both the Birkin Bag Trademark and the registered closure that is the subject of Count Two, but that is nowhere stated in the Amended Complaint. This section applies to Count Three only to the extent the Birkin Bag Trademark is relied upon as protectable. 6

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his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods. 15 U.S.C.A. 1127 (2010) (emphasis added). Though some marks are inherently distinctive, and therefore eligible for protection under the Lanham Act, not all inherently distinctive symbols or words on a product function as trademarks. Clairol Inc. v. Gillette Co., 389 F.2d 264, 269-71 & n.16 (2d Cir. 1968). To be protected as a trademark, a designation must create a separate and distinct commercial impression, which . . . performs the trademark function of identifying the source of the merchandise to the customers. In re Chemical Dynamics, Inc., 839 F.2d 1569, 1571 (Fed. Cir. 1988). An unregistered mark is entitled to protection under the Lanham Act if it would qualify for registration as a trademark. Star Industries v. Bacardi & Co., Ltd., 412 F.3d 373, 381 (2d Cir. 2005). The Lanham Act makes clear that only trademarks that serve as designators of source may qualify for the Acts protection. A mark that does not perform the role of identifying a source is not a trademark. American Express Co. v. Goetz, 515 F.3d 156, 159 (2d Cir. 2008). Trademark law seeks to protect the effable markers used to identify the source of a good in commerce, not [t]he aura about a product, the cachet that ownership or display of it creates, and the kind of appeal it has to certain consumers. Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 63031 (6th Cir. 2002). Thus, if a designation does not indicate its source, it cannot be protected under the Lanham Act. Plaintiff nowhere states that the Birkin Bag Trademark design was ever intended to be a designator of source, nor that the mark as claimed is likely to serve primarily as a designator of origin of the product. Knitwaves, Inc. v. Lollytogs Ltd., 71

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F.3d 996, 1008 (2d Cir. 1995) (denying trademark protection of a design where the designs were not primarily intended as source identification). Lanham Act protection is therefore unavailable to plaintiff for its claimed Birkin Bag Trademark. B. The Birkin Bag Trademark bears obvious word trademarks which designate its source. Plaintiff claims that the Birkin Bag Trademark is the design of the Birkin Bag. (Am. Compl. 18.) For reasons discussed below (infra at pp. 10-12), this may or may not be signaling that plaintiff is trying to plead a distinctive trade dress that is being infringed. But it cannot be disputed that anyone looking at an Herms Birkin bag can readily identify its source as Herms-Paris. As plaintiffs gyrations between the original and Amended Complaints illustrate, this word trademark is fatal to its claim for design trademark. It has long been axiomatic that where word trademarks are present, a background or design upon which the word trademark functions must have a separate meaning sufficient to be an unmistakable, certain and primary means of identification pointing distinctly to the commercial origin of such product in order to itself be protectable. E.J. Brach & Sons, 256 F.2d 325, 326 (CCPA 1958); Schenectady Varnish Co., Inc., 280 F.2d 169, 170 (CCPA 1960) (proof adduced that its design apart from the word mark Schenectady, has become distinctive of appellants goods in commerce); Hillerich & Bradsby Co., 204 F.2d 287, 289 (CCPA 1953) (the evidence fails to establish that the bat-buying public attaches the claimed trade mark meaning to the oval as used on applicants product, as it did the words Louisville Slugger); Star Industries, 412 F.3d at 382 (A design used in conjunction with other marks is separately protectable in its own right if it creates a separate and distinct impression from the impression created by

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the other marks.). The analysis boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct trademark in and of itself. Chemical Dynamics, 839 F.2d at 1571, citing 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 19:17 at p. 909 (2d ed. 1984). That judgment cannot be reached, and the Birkin Bag Trademark could never be alleged to be registrable, without allegations of specific facts that make plausible the claim that the design has secondary meaning despite, and in addition to, the word marks on the design itself. The Amended Complaint contains none. Put another way, the purpose of trademarks law is to protect trademark users from the threat of others using their source-identifying marks. Qualitex Co. v. Jacobson Prods. Co. Inc., 514 U.S. 159, 163-64, 115 S. Ct. 1300, 1303 (1995). In this case, the presence of those word trademarks on the Herms Birkin bag makes the source of the overall design manifest on sight and its required protection complete under the Lanham Act. Not a single fact alleged in the Amended Complaint changes this analysis. Here, the Amended Complaint admits that word trademarks such as HermsParis serve as explicit source identifiers on the Herms Birkin bag. Though the image resolution is not ideal once printed, Exhibits to the Amended Complaint show that engraving exists on the closure that says Herms-Paris. (Am. Compl. Exh. A (second photograph); Exh. C (ELLE February 2000); Exh. E, p. 3 (showing photograph of an Herms Birkin closure on a book); Cimbalo Dec. Exhibit 4 (showing a higher resolution photo of the book cover with the word marks).) Clearer photographs showing the exterior trademarks in detail are attached as Exhibit 1 to the Declaration of Jeffrey L.

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Cimbalo, filed herewith.2 The purpose and effect of these word trademarks is to clearly identify the source of the Herms Birkin bag, in that they show the manufacturer (Herms) and the geographic origin (Paris). Plaintiffs counsel clearly knew that to admit the presence of multiple word trademarks (Herms-Paris) would be fatal to plaintiffs claim. Thus, the original Complaint contained the demonstrably false allegation that the Herms Birkin bag did not contain any visible word trademarks on its exterior or on any hang tags sold with it. (Compl. 18.) After Thursday Fridays counsel pointed out this obvious falsity, plaintiff altered the allegation to state that the Herms Birkin bag does not bear the word mark BIRKIN on its exterior or on any hang tags sold with it. (Am. Compl. 18.) In both paragraphs 18, plaintiff actually stumbles across the correct legal standard, then fails to plead facts that would allow it to adequately plead secondary meaning apart from its visible word marks. While this one-clause alteration may save plaintiffs counsel from Rule 11 sanctions, it does nothing to address the fundamental problem that a genuine Herms Birkin bag is still clearly identified by a word trademark stamped on the exterior of the bag, and not by its design. C. The Amended Complaint does not adequately allege a trademark or trade dress in the Birkin Bag Trademark. The Amended Complaint claims that the design of the Birkin Bag Trademark is the unregistered trademark capable of being infringed. (Am. Compl. 18.) But while

Because plaintiff relied on a colloquy between counsel in amending its original Complaint, the Court may reference that colloquy (which included the exchange of the attached photos) in considering Defendants motion to dismiss without converting the motion to one under Rule 56. Cortec Indus., Inc. v. Sum Holding L.P., 949 F.2d 42, 4748 (2d Cir. 1991) (Cimbalo Dec. 4-6.).

10

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the Amended Complaints recitation of distinctive characteristics readily distinguishes plaintiffs bag from the Together Bag, it is far from sufficient to describe a protectable trade dress. The Supreme Court has defined trade dress as essentially [the] total image and overall appearance of a product, and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 112 S. Ct. 2753, 2755 n.1 (1992). To sufficiently plead protectable trade dress in the Second Circuit, a plaintiff must plead much more than plaintiff does here: To establish that product trade dress is protectable, the plaintiff must 1) offer a precise expression of the character and scope of the claimed trade dress; 2) allege that the claimed trade dress has secondary meaning; 3) allege a likelihood of confusion between the plaintiffs good and the defendants; and 4) allege that the claimed trade dress is non-functional. Sherwood 48 Assoc. v. Sony Corp. of Am., 76 Fed. Appx. 389, 391 (2d Cir. 2003) (internal quotations and citations omitted). Here, aside from the several problems with plaintiffs attempt to plead secondary meaning (infra at pp. 12-14), plaintiff has also failed to articulate facts in support of the first and fourth elements of this test. The Birkin Bag Trademark is nowhere described as anything other than the design, and the Amended Complaints non-exhaustive list of features3 that presumably makes up its design or trade dress is insufficient. Plaintiff must articulate the specific elements which compromise its distinct dress and in particular specify not just which features are distinctive, but also how they are distinctive. Heller, 2009 WL 2486054 at *6 (citation omitted) (emphasis in original). Laudatory descriptions without
3

The Amended Complaint appends to its list of features the term, inter alia, stating that there are other distinctive features that remain unpleaded. 11

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specificity fail to indicate what unique combination of features makes the trade dress . . . likely to be perceived by consumers as bearing the stamp of their maker. Id., citing Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381-82 (2d Cir. 1997). A laundry list of the elements that constitute a . . . design is insufficient to show distinctiveness. Id., citing Natl Lighting v. Bridge Metal Indus., LLC, 601 F. Supp. 2d 556, 562 (S.D.N.Y. 2009) (internal quotations omitted) (dismissal appropriate where plaintiff includes no additional details regarding which elements of the plaintiffs trade dress design are distinctive, much less how certain elements are distinctive). It is the plaintiffs, and not the Courts, job to distill . . . those elements that are common to a line of products and both distinctive and non-functional. Id., citing Natl Lighting, 601 F. Supp. 2d 556 at 563. Plaintiff has failed to do so. Plaintiff has further failed to satisfy the fourth prong of the Second Circuits test for trade dress, by failing to allege any facts in support of the formulaic and conclusory statement that the design of the Birkin Bag is not functional. The photos of the Herms Birkin bag plaintiff provides as attached to the Amended Complaint seem to be of different colors, materials, and possibly size, and can offer no help in discerning what features are claimed as part of the design, functional or not. (Am. Compl. Exh. A.) Because plaintiff does not plead which items are sufficiently distinctive so as to comprise trade dress, gives no additional facts as to how certain elements are distinctive or non-functional, and has failed to identify any facts to support its conclusion that the design is not functional, it cannot plead the existence of a trademark in the Birkin Bag Trademark, or that it is a protectable design under the Lanham Act. (Am. Compl. 27.); Iqbal, 129 S. Ct. at 1951.

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D. The Amended Complaint does not adequately plead secondary meaning for The Birkin Bag Trademark. Finally, the Amended Complaint fails to plead secondary meaning apart from rote recitations and vague conclusions. Plaintiff claims enormous sales, in an amount by far insufficient to be granted fame under the dilution statute (infra pp. 21-22), about $28.5 million per year. (Am. Compl. 14, 18.) Its extensive advertising and promotion is not quantified in the Amended Complaint. (Id. 18.) Its ubiquitous publicity and attention is a bald conclusion, and one that is blunted by the fact that plaintiff itself claims that millions of women recognize its appearance, rather than tens of millions of women, and one of its proffered examples of publicity leading to fame actually misidentifies the model, calling it a Herms Kelly bag. (Id.; Exh. C (ELLE 2000 article).) Enormous, extensive, and ubiquitous are not facts, but laudatory labels and conclusions that cannot serve to enhance plaintiffs formulaic claims of secondary meaning as to sales, advertising, and publicity. Iqbal, 129 S. Ct. at 1949. Plaintiff has taken so many short cuts in pleading secondary meaning that the overall result falls far short of the factual pleading standard of making it facially plausible that the claims could be true. Id. In fact, aside from the obvious failure to plead secondary meaning of the design in the presence of exterior word trademarks, the Amended Complaint would not even plead secondary meaning had Herms decided not to put its name and origin all over the Herms Birkin. Thus, plaintiffs claim of the Birkin Bag Trademark is facially implausible and all Counts relying on the existence of the mark should be dismissed. Iqbal, 129 S. Ct. at 1949. These include Count One (false designation of origin), Count Three (New York common law trademark infringement and unfair competition as to the Birkin Bag

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Trademark),4 Count Four (federal trademark dilution), and Count Five (dilution under New York General Business Law 360-l), since they all rely on the Birkin Bag Trademark to actually be used as a designation of source in order to avail itself of those various laws protections. Heller, 2009 WL 2486054 at *3 (federal dilution); The Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955, 966 (2d Cir. 1996) (distinctive mark required for New York dilution statute). Because the Amended Complaint did not and cannot allege that the Birkin Bag Trademark is a trademark or protectable trade dress under the Lanham Act, its claims for redress of some violence to it cannot survive a motion to dismiss, however designated. III. The Amended Complaint Fails to Plead False Designation of Origin In addition to failing to sufficiently identify the trademark that Defendants Together Bag purportedly infringes, the Amended Complaints individual causes of action each suffer their own specific defects. Count One of the Amended Complaint is captioned False Designation of Origin 15 U.S.C.A. 1125(a)(1)(A). (Am. Compl. at p. 7.) Count One pertains only to the unregistered alleged Birkin Bag Trademark which the Amended Complaint defines as the design of the Birkin Bag. (Id. 27-28.) Section 1125(a)(1)(A) of the Lanham Act provides as follows: 1125. False designations of origin and false descriptions forbidden (a) Civil action.

An unfair competition claim under common law is governed largely by the same standards as its Lanham Act counterparts, except common law requires a showing of bad faith or intent. Fendi Adele S.L.R. v. Burlington Coat Factory Warehouse Corp., 689 F. Supp. 2d 585, 598-99 (S.D.N.Y. 2010), citing Genessee Brewing Co. Inc. v. Stroh Brewing Co., 124 F.3d 137, 149 (2d Cir. 1997). 14

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(1)

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which(A) is likely to cause confusion, or to cause 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.

15 U.S.C.A. 1125(a)(1)(A) (2010) (emphasis added). Section 1127 defines use in commerce as: The term use in commerce means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce (1) on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce. . . . 15 U.S.C.A. 1127 (2010) (emphasis added) (Constructions and Definitions Intent of Chapter). In addition to the Amended Complaints failure to adequately plead a trademark or trade dress in the Birkin Bag Trademark (supra at pp. 10-12), the Amended Complaint does not plead any use of plaintiffs trademark or trade dress by Thursday Friday, and cannot plead any other type of false designation of origin claim. A. The Amended Complaint does not allege any use by Thursday Friday of the Birkin Bag Trademark. As emphasized above, the statute requires separate pleading and proof of use of

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a trademark in order to establish a false designation of origin claim. 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 412 (2d Cir. 2005) (Not only are use, in commerce, and likelihood of confusion three distinct elements of a trademark infringement claim, but use must be decided as a threshold matter because, while any number of activities may be in commerce or create a likelihood of confusion, no such activity is actionable under the Lanham Act absent the use of a trademark.); Rescuecom, Corp. v. Google, Inc., 562 F.3d 123, 127-28 (2d Cir. 2009) (Our court ruled in 1-800 that a complaint fails to state a claim under the Lanham Act unless it alleges that the defendant has made use in commerce of the plaintiffs trademark as the term use in commerce is defined in 15 U.S.C.A. 1127, and reaffirming 1-800s holding as having binding precedential value); see also Holiday Inns v. 800 Reservation, 86 F.3d 619, 626 (6th Cir. 1996) ([T]he defendants use of a protected mark . . . is a prerequisite to the finding of a Lanham Act violation.); Miss Dig Sys., Inc. v. Power Plus Eng'g, Inc., 944 F. Supp. 600, 602 (E.D. Mich. 1996) (As the language of these statutory provisions shows . . . the court . . . must first find that the defendant . . . has made an actual use of the plaintiffs trademark. In the absence of this preliminary finding, there can be no liability for trademark infringement or unfair competition under the Lanham Act.). The Together Bag cannot be said to have used the Birkin Bag Trademark so as to constitute use under the Lanham Act, even if the existence of the trademark itself had been adequately pleaded. As alleged in the Amended Complaint, the Herms Birkin design is three-dimensional, with a set of characteristic design features including (inter alia) the three-lobed flap design, a dimpled triangular profile, a characteristic closure, and a padlock. (Am. Compl. 11.) Thus, the only way for a product to infringe upon

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this design trademark consisting of the overall design is for the product to use the trademark in three dimensions, utilizing the physical characteristics described above. In contrast, the disconnected color photographs on the sides of the Together Bag are twodimensional, and do not share any of the features listed in Paragraph 11 of the Amended Complaint, nor the Herms Birkins word trademarks, nor virtually any other features. A two-dimensional image (itself not alleged to be protected) simply cannot constitute use of trademark that by plaintiffs own admission can only be expressed in three dimensions. (Id.) When Thursday Friday affixes photographs to the sides of the Together Bag (Am. Compl. 34.), it cannot be said, and is not said in the Amended Complaint, that it is affixing a three-dimensional design or trademark at all, let alone plaintiffs three-dimensional alleged design or trademark. Indeed, even if two-dimensional photographs could infringe on a physical trademark, such is not the case here, since the photographs placed on the Together Bag are not those of a genuine Herms Birkin. As noted above, genuine Herms Birkin bags contain prominent word marks on the closure, padlock, and elsewhere, while the images on the Together Bag do not contain them at all. (Supra, at pp. 9-10.) This Court need not feel constrained to accept as truth conflicting pleadings that . . . are contradicted either by statements in the complaint itself or by documents upon which its pleadings rely. In re Livent, Inc. Noteholders Sec. Lit., 151 F. Supp. 2d 371, 405 (S.D.N.Y. 2001).5

Plaintiff attempts to side-step the fundamental use requirement by intertwining its infringement allegations with its allegations of likelihood of confusion. (Am. Compl. 28.) This is impermissible, as use is a separate component of pleading and proof from likelihood of confusion, and one that the Amended Complaint does not and cannot say. See 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d at 412; Holiday Inns, 86 F.3d at 17

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A close reading of the Amended Complaint illustrates this fundamental flaw. Nowhere does plaintiff aver that the Together Bags design looks in any way like the design of an Herms Birkin, or even that the two are generally similar in physical appearance. Plaintiff cannot do so since every conceivable feature of an Herms Birkin is entirely absent from the Together Bag, meaning the overall look of the two are nothing at all alike. Plaintiff therefore seems to be trying to plead aura infringement or gestalt infringement instead of trade dress infringement, where only the latter can be a cause of action. Plaintiffs careful pleading around this threshold issue of use is insufficient to state a claim of use. Plaintiff will find it impossible to replead properly because the Together Bags design, ostensibly the subject of plaintiffs action, cannot be said to have used the design of the Herms Birkin bag. Because plaintiff does not plead use, Count One should be dismissed. B. The Amended Complaint does not state that there was any false designation of origin. Since plaintiff does not use trade dress in its Amended Complaint, it is far from plain what claim to relief it is making, though it is titled false designation of origin. Out of an abundance of caution, Count One may also be dismissed because plaintiff alleges no facts that Thursday Friday has made any false designation of the source of its goods, if plaintiff is determined not to even have intended to plead trade dress

626. As to likelihood of confusion, the Amended Complaint offers only conclusory abstractions such as that the Together Bag is creating the false impression that Plaintiff has given in to the temptation [which temptation, incidentally is also nowhere alleged] to license its famous trademark for mass market goods. (See, e.g., Am. Compl. 44.) No facts are pleaded that raise the plausibility that these conclusions are likely at all, which also dooms its pleading of likelihood of confusion. Iqbal, 129 S. Ct. 1949. 18

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infringement. Essentially, a false designation claim requires a showing that the defendant made some false designation as to the source of the goods, thereby misleading the public as to the identity of the producer of the tangible product sold in the marketplace. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 31, 123 S. Ct. 2041, 2047 (2003); see also Optimum Technologies, Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1248 (11th Cir. 2007) (citing Dastar). The two false designation of origin varieties, passing off, where a producer misrepresents his own goods or services as someone elses or reverse passing off, where the producer misrepresents someone elses goods or services as his own, seem completely facially impossible even under the facts pleaded in the Amended Complaint. Dastar, 539 U.S. at 27 n.1, 123 S. Ct. at 2045 n.1 (2003) (reading origin to mean producer of the tangible product sold in the marketplace, and rejecting a reverse passing off false designation claim when it is clear that defendant is the producer). However, the Amended Complaint makes no allegation that Thursday Friday falsely claims to be selling plaintiffs goods when it is not or that it is actually selling plaintiffs goods under its own name. The Amended Complaint cannot be read to state a claim for any variety of false designation of origin, which can include trade dress infringement when properly pleaded, though here it is not. (Point II.C., supra at pp. 10-12.) A false designation claim is therefore unavailable to plaintiff, and Count One should be dismissed with prejudice.

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IV.

Infringement of Registered Trademark Count Two of the Amended Complaint claims trademark infringement based on

U.S. Reg. No. 1,806,107, shown in Exhibit B of the Amended Complaint. For the reasons below, Count Two does not state a claim upon which relief can be granted. A. Photographs of what appears to be a Birkin Bag cannot infringe the registered closure design. 15 U.S.C.A. 1114(1)(a) prohibits the use in commerce of any reproduction, counterfeit, copy, or colorable imitation of a registered mark . . . . 15 U.S.C.A. 1114(1)(a) (2010). A colorable imitation includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive. 15 U.S.C.A. 1127 (2010). The same considerations of pleading use of the mark apply fully to the registered mark, as it is not pleaded. 15 U.S.C.A. 1125(a)(1) (2010) (use in commerce required for a violation to occur); see also supra at pp. 15-18. Plaintiff does not plead that the affixation of the one photograph showing its closure on the Together Bag is actually an affixation of its trademark, such that the photo could actually constitute use by Thursday Friday. (Am. Compl. 34.) Moreover, there are absolutely no allegations that the Together Bag is an attempted reproduction, counterfeit, colorable imitation, or copy of the Herms Birkin closure. Nevertheless, plaintiff continues its obtuse march through the Lanham Act by claiming that a picture of what appears to be an Herms Birkin closure on a piece of canvas can somehow constitute a colorable imitation of a three-dimensional closure, and that this representation is likely to cause confusion. Again, plaintiff does not plead that the photographs are a colorable imitation of the registered closure trademark.

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Just as no allegation is made that the Together Bag in any way copies plaintiffs trade dress, no allegation is made that the side of the Together Bag that depicts a closure (and not even a genuine closure with the word trademarks), is likely to cause confusion because it looks so much like the genuine three-dimensional closure. A glance at the registration confirms that it is impossible for plaintiff to plead this cause of action. In the registration, a mark is described that shows a closure wrapping around and attached to the flap of a handbag. (Am. Compl. Exh. B.) Therefore, in order to infringe on the registered mark, there would actually have to be a threedimensional strap that wrapped around a bag and attaches to the flap of a handbag. On the Together Bag, there is no strap and no flap. (Id. Exh. G.) It stretches the Lanham Act beyond recognition that the Together Bags two-dimensional representation of an Herms-Birkin-like strap could be considered as so resembling a three-dimensional mark as described in the registration as likely to cause confusion. No allegation in the Amended Complaint says that either, as it could hardly be written or thought with a straight face. By the terms of the registration itself, it is inconceivable that photographs of the registered closure could infringe upon the trademark. Plaintiff therefore cannot adequately plead infringement of the registered mark. V. Federal Trademark Dilution Count Four purports to allege federal trademark dilution of its Birkin Bag Trademark by tarnishment, claiming that Defendants inexpensive, lower quality products cause this tarnishment. (Am. Compl. 43-44.) Plaintiff nowhere claims that the registered closure is famous, so this Count appears to only apply to the Birkin Bag

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Trademark. But plaintiff cannot adequately plead several elements necessary to state a federal trademark dilution claim. A trademark holder claiming dilution under the Trademark Dilution Revision Act (TDRA) must show the following four elements: 1) the mark is famous, 2) the defendant is making use of the mark in commerce, 3) the defendants use of the mark began after the mark became famous, and 4) the likelihood of dilution. Heller, 2009 WL 2486054 at *3. Plaintiff fails to adequately plead the fundamental element of the test, that the mark is famous, only pleads the likelihood of dilution in a formulaic way without any supporting facts, Iqbal, 129 S. Ct. at 1949, and fails to plead any facts whatsoever as to when its mark supposedly became famous. A. Plaintiff has not adequately pleaded famousness to avail itself of the TDRA. As shown above (supra at pp. 15-18), plaintiff does not adequately plead that either plaintiff or Thursday Friday is making use of the mark in commerce. But just as importantly, plaintiffs allegations for fame fall far short of adequacy. The TDRA requires that the senior mark be truly famous before a court will afford the owner of the mark the vast protections of the FTDA. Savin Corp. v. Savin Group, 391 F.3d 439, 449 (2d Cir. 2004). The statute examines several factors, but Courts generally have limited famous marks to those that receive multi-million dollar advertising budgets, generate hundreds of millions of dollars in sales annually, and are almost universally recognized by the general public. Heller, 2009 WL 2486054, at *3 (citations omitted). With the 2006 amendments to the FTDA, which added the phrase widely recognized by the general consuming public of the United States, Congress intended to reject dilution claims based on niche fame, i.e. fame limited to a particular channel of trade, segment

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of industry or service, or geographic region. Id. Plaintiffs claim to fame for the Birkin Bag Trademark is plainly insufficient. Plaintiff simply concludes that its design has become . . . well recognized among the general public, (Am. Compl. 15.) with the unquantified limitation that it is immediately recognizable to millions of women, and without alleging that it is widely recognized by the general consuming public of the United States, with a population of about 300 million persons. (Id. 1.) See also Heller, 2009 WL 2486054 at *4. It also states that photo spreads incorporating the Birkin Bag are a staple of fashion magazines . . . with nationwide circulations, without any information on how large those circulations are for a magazine in that niche. (Id. 15.) These allegations, at most, state a claim for exactly the type of niche fame Congress rejected when passing the TDRA, that is fame limited to a particular channel of trade, segment of industry or service, or geographic region. Heller, 2009 WL 2486054 *4, citing Dan-Foam A/S v. Brand Named Beds, LLC, 500 F. Supp. 2d 296, 307 n.90 (S.D.N.Y. 2009). Nothing in the Amended Complaint breaks whatever fame plaintiff has out of its niche. The Amended Complaint fails to adequately allege a sizable advertising effort, number of units sold, or significant enough sales to warrant fame under the TDRA. The Amended Complaint is also completely silent on plaintiffs advertising budget, which is alleged only as extensive, (Am. Compl. 18), and the failure to plead any facts as to this weighed heavily in the dismissal in Heller. Heller, 2009 WL 2486054 at *4 (plaintiff did not include any information about the chairs advertising budget or the strength of consumer recognition in the general population, and dilution claim dismissed for failure to adequately plead fame). No Exhibits to the Amended Complaint and no

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allegations in it reflect that plaintiff does any advertising. The number of units sold, some 30,000 over seven years, or about 4,300 per year, also is far short of what makes fame even a close call. See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 635 (9th Cir. 2008) (holding that a reasonable jury could find Hot Wheels famous because Mattel had sold three billion units) (emphasis added). Also, the seven years of sales data listed in the Amended Complaint averages a bit over $28.5 million annually, (Am. Compl. 14), hardly the hundreds of millions of dollars in sales annually recognized in Heller as the prudential limits to famousness. Heller, 2009 WL 2486054 at *3, citing, inter alia, Jada Toys, 518 F.3d at 635. In short, it might be possible that the registered mark Herms-Paris is famous under the statute, though it may well not be because of the same niche problem, but one of its handbag models design is much further away from legal fame, and the pleadings are insufficient to raise the plausibility of it. Iqbal, 129 S. Ct. at 1949. Plaintiffs sales numbers were what they were, and it will not ever be able to allege facts about fame sufficient to reach the level of commercial ubiquity that brands like Coca-Cola, Chevrolet, or Kodak enjoy because of huge advertising, a huge middle class market, and huge sales. This may be because broad recognition is required to sell millions of those products instead of a few thousand products each year, as plaintiff alleges. (Am. Compl. 14.) That is not in any way to disparage plaintiffs notoriety, as being referenced on one episode of a relatively successful cable comedy like Sex and the City is very nice indeed for brand promotion. (Id. 16.) But it is not sufficient to allege fame under the law of this Circuit. Count Four should be dismissed on this ground.

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B.

The Amended Complaint does not adequately allege tarnishment because the Together Bag is not of low quality or unwholesome.

Plaintiff fails also to adequately allege dilution by tarnishment. Dilution by tarnishment is an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. 15 U.S.C.A. 1125(c)(2)(C) (2010). As this Court has explained: Tarnishing may occur when a mark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context, with the result that the public will associate the lack of quality or lack of prestige in the defendants goods with the plaintiffs unrelated goods. Miss Universe, L.P. v. Villegas, 672 F. Supp. 2d 575, 592 (S.D.N.Y. 2009), citing Hormel Foods Corp., 73 F.3d 497, 507 (2d Cir. 1996). The sine qua non of tarnishment is a finding that plaintiffs mark will suffer negative associations through defendants use. Hormel, 73 F.3d at 507. The Amended Complaint does not in any way allege that the Together Bag is portraying plaintiffs trademark in an unwholesome or unsavory context. Nor is the Together Bag alleged to be shoddy, merely that it is inexpensive and of lower quality when compared to hand made handbags . . . of the highest quality. (Am. Compl. 9, 44.) This is not sufficient to state a claim for dilution by tarnishment. Pleading lower quality and price are not sufficient to plead tarnishment. Clinique Laboratories, Inc. v. Dep Corp., 945 F. Supp. 547, 562 (S.D.N.Y. 1996) (Clinique argues that its trade mark and trade dress will be tarnished by Deps cheap knock-offs of the CLINIQUE line of products. However, this argument does not fit within the boundaries of tarnishment . . . The Basique product line is neither shoddy or unwholesome. . . .). Because plaintiff does not and cannot allege that the Together Bag

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is of objectively low quality, rather than just lower than the very highest (which pursuant to plaintiffs tautology any other bag would be), it cannot adequately plead a claim of tarnishment in this Circuit. For this reason as well, the federal tarnishment claim should be dismissed with prejudice. C. The Amended Complaint does not allege that any fame is separate from the fame of registered word marks.

With its deafening silence as to the presence of word marks on the Herms Birkin, the Amended Complaint cannot adequately plead fame, because the fame of the Birkin Bag Trademark must be alleged separately from those word marks. The statute reads: In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that (A) (B) the claimed trade dress, taken as a whole, is not functional and is famous; and if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.

15 U.S.C.A.1125 (c)(4)(B) (2010) (emphasis added). Herms-Paris, the words visible on the closure and Herms elsewhere on the Herms Birkin, use one or more of plaintiffs several registered combined or character word marks on the principal register, any of which this Court may take judicial notice. (Cimbalo Dec. Exhibits 2-3.) Similar to plaintiffs inability to plead secondary meaning without being candid about its own products configuration, the failure of plaintiff to address or even state the presence of those word marks make it impossible to make out a claim of federal dilution, as the word marks are not distinguished from the overall design. This provides another independent reason for dismissal of this Count.

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VI.

The Dismissal of the Federal Causes of Action Leaves Only State Claims Because plaintiff has not adequately pleaded any federal cause of action in Counts

One, Two, and Four, meriting their dismissal, and because the sole bases for jurisdiction pleaded are federal question and trademark jurisdiction, (Am. Compl. 5), it is respectfully suggested that this court should decline to exercise its discretion to hear the remaining state claims under 15 U.S.C.A. 1367(c)(3). VII. New York Common Law Trademark Infringement and Unfair Competition

Should the Court choose to exercise discretionary jurisdiction, the state law claims should be dismissed as well. For the same reasons plaintiffs Lanham Act claims for false designation of origin and registered trademark infringement fail to state a claim, the New York common law trademark infringement and unfair competition claims cannot state a claim. An unfair competition claim under common law is governed largely by the same standards as its Lanham Act counterparts, except the common law requires a showing of bad faith or intent. Genesee Brewing Co., 124 F.3d at 149. Plaintiff does not state whether this Count applies to the Birkin Bag Trademark or its registered closure, but the pleadings fail to establish Thursday Fridays bad faith or bad intent as to either. A. Plaintiff does not adequately plead bad faith or bad intent. The Amended Complaint contains only the most conclusory allegation of intent to infringe, which cannot serve to state a claim for bad faith: Upon information and belief, Defendant has undertaken these acts with the express intent to confuse, mislead, or deceive the public as to the origin of Defendants products. (Am. Compl. 39.) A more formulaic recitation of the element of bad faith could not likely have been drafted, and plaintiff pleads no facts that give any sense anywhere in the Amended Complaint of what

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that express intent might be. Iqbal, 129 S. Ct. at 1949. In fact, aside from the myriad other physical dissimilarities between the two marks, the fact that the Together Bag does not show the word trademarks that are shown on the Herms Birkin refutes any intent to make the images look exactly as though they were of a genuine Herms Birkin bag. (Am. Compl. Exhs. A, G.) No facts or inferences point to a willfulness to infringe, dilute, or cause confusion. As such, plaintiffs claim of intent is not made facially plausible by any facts and cannot state a claim for intent to infringe. Iqbal, 129 S. Ct. at 1949. Because plaintiff cannot plead intent, it cannot state a claim for common law trademark infringement and unfair competition under New York law for this reason as well.6 Count Three should therefore be dismissed. VIII. Dilution Under New York State Law A. Plaintiff does not state a claim for tarnishment under New York law. Under the New York anti-dilution statute, N.Y. Bus. Law 360-l, a plaintiff must demonstrate ownership of a distinctive mark and likelihood of dilution of that mark through blurring or tarnishment. Sports Authority, 89 F.3d at 966. Plaintiffs vague description of its Birkin Bag Trademark and its failure to allege any use of that alleged mark as a trademark (supra at pp. 15-18), provide independent reasons to dismiss Count Five for failure to state a claim. The failure to adequately plead tarnishment by

To the extent this Court dismisses any of the Counts in the Amended Complaint, it is respectfully suggested that any remaining federal claims be assessed for whether they require a showing of willfulness to adequately plead an entitlement to lost profits or treble damages, and strike those remedies from the Amended Complaint if those remaining claims do require willfulness because, as shown above, it is not adequately pleaded. 15 U.S.C.A. 1117(a)-(b) (2010) (willfulness required as to false designation claims to recover lost profits or treble damages). Plaintiff also makes no allegations that can make anything about this case extraordinary that would justify its claim in its Prayer to attorneys fees. Id.
6

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association with shoddy or unwholesome goods (supra at pp. 24-25), also fails as to the state claim. Count Five should be dismissed on all these grounds. In addition, plaintiff does not plead that the two marks, the Birkin Bag Trademark design and the Together Bag are substantially similar, and this also is a ground for dismissal of this Count. As the Second Circuit has interpreted the New York statute, [T]he similarity [of the two marks at issue] must be substantial before the doctrine of dilution may be applied. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1028-29 (2d Cir. 1989). The court there held that the marks must be very or substantially similar and that, absent such similarity, there can be no viable claim of dilution. Id. at 1029; see also Fifth Ave. of Long Island Realty Assoc. v. Caruso Mgmt. Co., Ltd., 718 F. Supp. 2d 292, 314 (E.D.N.Y. 2010) (citing Mead Data). No allegation can fairly be said to imply that the marks are even close to similar, let alone very or substantially so, and photographs of the two marks attached to the Amended Complaint more than confirm their almost total lack of similarity. (Am. Compl. Exhs. A, G.) Plaintiffs New York dilution claims are therefore inadequately pleaded, cannot be pleaded sufficiently, and therefore dismissal with prejudice is appropriate. IX. Plaintiff Does Not Plead Sufficient Facts to Warrant an Injunction.

Plaintiff does not plead, as it must, that sufficient facts exist to warrant the issuance of a permanent injunction. The Supreme Court has unanimously held: According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the

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public interest would not be disserved by a permanent injunction. eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391, 126 S. Ct. 1837 (2006). The Amended Complaint does not offer anything but the most formulaic and conclusory recitations of these elements, to the extent it touches upon them at all. Plaintiff several times offers the same bromide: Herms and the public have been and will continue to be irreparably damaged unless Defendant is enjoined by this Court from advertising and selling its infringing tote bag. (Am. Compl. 30, 35, 40, 45, 49.) These are so formulaic that it calls the Together Bag infringing even in Counts where dilution is alleged. (Id. 45, 49.) To the extent the pleading standard for a permanent injunction may be attenuated for Count Four, federal trademark dilution, because injunction is the only remedy available absent a showing of willfullness, 15 U.S.C.A. 1125(c), it is certain that all Counts but Count Four suffer from the same obvious pleading deficiency. (Supra at pp. 27-28 (willfulness not adequately pleaded).) Thus, if Count Four is dismissed, all other claims for a permanent injunction are clearly insufficiently pleaded in the Amended Complaint. Plaintiff fails to plead any facts as to how it has suffered irreparable injury, why remedies at law are inadequate to compensate for that stated but unsupported injury (though its Prayer asks for damages or other money), nor any facts relating to the balance of hardships or the public interest whatsoever. The Amended Complaints pleading here too could be the exemplar for the type of inadequate and conclusory pleading Iqbal now punishes with dismissal of the claim, though there are many other excellent examples therein. Iqbal, 129 S. Ct. at 1951. Because plaintiff utterly fails to plead facts justifying

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the issuance of a permanent injunction sought in its Prayer, that remedy should be stricken along with the dismissal of the various Counts. CONCLUSION For all the above reasons, all Counts in the Amended Complaint should be dismissed with prejudice. Dated: Richmond, Virginia March 7, 2011

THE CIMBALO FIRM, P.C.

/s/ Jeffrey L. Cimbalo Jeffrey L. Cimbalo (JC-6680) 1306 W. Main St. Richmond, VA 23220 Tel: (804) 313-6266 Paul R. Niehaus (PN-3994) S. Gabriel Hayes-Williams (SH-0775) NIEHAUS LLP 1359 Broadway Suite 2001 New York, NY 10018 Tel: (212) 631-0223 Fax: (212) 624-0223 Attorneys for Defendant Thursday Friday, Inc.

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CERTIFICATE OF SERVICE I, Jeffrey L. Cimbalo, an attorney duly admitted to the bar of this court, and the Principal of the law firm The Cimbalo Firm, P.C., Counsel to Defendant Thursday Friday, Inc., hereby certify that on March 7, a true and correct copy of the 1) Defendants Notice of Motion to Dismiss; 2) Memorandum of Law in Support of Defendants Motion to Dismiss; 3) Declaration Jeffrey L. Cimbalo, with exhibits; and 4) Defendants Rule 7.1 Statement, which have been electronically filed with the Clerk of Court using the CM/ECF system, which automatically sent e-mail notification to counsel of record to Andrew Baum at abaum@foley.com. Dated: March 7, 2011 Richmond, Virginia /s/ Jeffrey L. Cimbalo Jeffrey L. Cimbalo

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