outthink v. ibm - trademark complaint.pdf

7/25/2019 Outthink v. IBM - trademark complaint.pdf

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Paul W. Garrity

SHEPPARD, MULLIN, RICHTER & HAMPTON LLP

30 Rockefeller PlazaNew York, NY 10112-0015

Telephone: (212) 653-8700

Facsimile: (212) [email protected]

Lisa M. Martens (pro hac viceto be filed)SHEPPARD, MULLIN, RICHTER & HAMPTON LLP

12275 El Camino Real, Suite 200

San Diego, CA 92130

Telephone: (858) 720-8900Facsimile: (858) 509-3691

[email protected]

Attorneys for Plaintiff Outthink, LLC

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

OUTTHINK, LLC,

Plaintiff,

v.

INTERNATIONAL BUSINESSMACHINES CORPORATION,

Defendant.

Case No.:

COMPLAINT

DEMAND FOR JURY TRIAL

Case 1:16-cv-00852-AKH Document 1 Filed 02/03/16 Page 1 of 26


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Plaintiff Outthink, LLC (Outthink) for its Complaint against defendant International

Business Machines Corporation (Defendant) respectfully alleges as follows:

NATURE OF ACTION

This action seeks remedy for federal trademark infringement, unfair competition, and

false designation of origin in violation of the Lanham Act, 15 U.S.C. 1114 and 1125(a), and

Section 349 of the New York General Business Law and New York State common law for

trademark infringement, unfair competition, and deceptive trade practices. Defendants

unauthorized use and exploitation of the OUTTHINK trademark is likely to cause confusion as

to the affiliation, connection, association, origin, sponsorship, or approval of its services with

those of Outthink. Outthink seeks, without limitation, actual damages, profits, attorneys fees,

costs, punitive and exemplary damages, and injunctive relief.

THE PARTIES

1. Plaintiff Outthink, LLC is a Connecticut limited liability company with a

principal place of business in the state of Connecticut.

2.

On information and belief, Defendant International Business Machines

Corporation is a New York corporation and has its principal place of business in New York.

JURISDICTION AND VENUE

3. This action arises under the trademark infringement, unfair competition, and false

designation of origin laws of the United States, 15 U.S.C. 1114 and 1125(a), and the trademark

infringement, unfair competition, and deceptive trade practices laws under Section 349 of the

New York General Business Law and New York State common law.

4. Subject-matter jurisdiction is vested in this Court pursuant to 28 U.S.C. 1331,

1338(a) and (b), and 1367.



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5. This Court has personal jurisdiction over Defendant because, on information and

belief: (a) Defendant transacts and solicits business within this judicial district; (b) Defendant has

continuous and ongoing business contacts with residents within this judicial district; (c)

Defendant has committed tortious acts within this judicial district which it knew or should have

known would cause injury to Outthink within this judicial district; and/or (d) Defendant has

purposefully availed itself of the privilege of conducting business within this judicial district.

6. Venue is proper pursuant to 28 U.S.C. 1391(b) and (c) because, on information

and belief, Defendant resides in and conducts business in New York County, and a substantial

part of the acts or omissions giving rise to the claims asserted herein occurred and/or had effects

in this district.

FACTUAL BACKGROUND

A. Outthinks History, Business, and Valuable Intellectual Property

7. Outthink provides marketing and creative services by designing traditional and

digital marketing campaigns, developing marketing and advertising strategies, creating brand

identities, and offering public relations services under its OUTTHINK trade name and

trademark.

8. Outthink has offered and provided these creative marketing services for the past

14 years under its OUTTHINK trade name and trademark.

9. Outthink was created by John Visgilio and Ralph Guardiano who shared a single

vision to create a marketing firm to provide its clients with strategies to surpass its competitors

while promoting their brand.



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10. To develop competitive and creative strategies, Outthink analyzes information

and data relevant to its customers and their fields of business to effectively reach its customers

target audience.

11. Under the OUTTHINK mark, Outthink has provided innovative marketing

services to clients across a broad range of industries such as banking, insurance, healthcare,

retail, travel and leisure, business-to-business, and education.

12. The OUTTHINK mark is strong and distinctive when used in connection with

Outthinks consulting services.

13.

Outthink has used the distinctive OUTTHINK mark in connection with its

consulting services since at least as early as June 1, 2002 and in commerce since at least as early

as July 1, 2002 and, as a result, has developed longstanding common law trademark rights in the

OUTTHINK mark.

14. As a company that depends upon both the quality of its services and the reputation

of its brand, Outthink has devoted substantial amounts of time and resources to protect its

intellectual property interests in and to the OUTTHINK mark.

15. Outthink has obtained two federal trademark registrations to protect the value of

its OUTTHINK mark in connection with providing strategic marketing services; public

relations; developing advertising and marketing strategies for others, creating brand identity for

others and television production (collectively referred to herein as the OUTTHINK

Services).

16. The OUTTHINK word mark enjoys registration on the Principal Register of the

United States Patent and Trademark Office (U.S.P.T.O.) at Registration No. 3,646,391 for the



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OUTTHINK Services. A copy of the certificate of registration and a trademark assignment

cover sheet are attached hereto as Exhibit A.

17. Outthink also owns a federal trademark registration for its OUTTHINK logo, as

shown below, on the Principal Register of the U.S.P.T.O. at Registration No. 3,084,613 for the

OUTTHINK Services.

A copy of the certificate of registration and a trademark assignment cover sheet are attached

hereto as Exhibit B. Collectively, Outthinks federal trademark registrations for the

OUTTHINK word mark and logo shall be referred to as OUTTHINK Registrations.

Hereinafter, Outthinks common law trademark rights and OUTTHINK Registrations shall be

referred to as the OUTTHINK Marks.

18. The OUTTHINK Registrations are valid, subsisting, and in full force and effect.

19.

The OUTTHINK Registrations are incontestable and enjoy the conclusive

presumption that the OUTTHINK Registrations are valid and that Outthink has the exclusive

right to use the registered marks in commerce. The OUTTHINK Registrations also provide

constructive notice of Outthinks claim of ownership of the marks.

20. Since its first use of the OUTTHINK Marks 14 years ago, Outthink has invested

substantial resources to advertise and promote the OUTTHINK Marks. For example, Outthink

prominently displays the OUTTHINK Marks and provides information about its services on

various online platforms, including, but not limited to, its web site athttp://outthink.com/,

Instagram, Facebook, and LinkedIn.

http://outthink.com/http://outthink.com/http://outthink.com/http://outthink.com/


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21. Outthink has expended substantial amounts of time, effort, and money to ensure

that the relevant public associates the OUTTHINK Marks with the OUTTHINK Services. As a

result, Outthink and the OUTTHINK Marks have achieved a reputation for excellence.

22. The OUTTHINK Marks have come to symbolize extraordinary good will and are

significant assets of Outthinks business.

B. Defendants Unauthorized Use of the OUTTHINK Mark

23. On information and belief, Defendant offers software products and consulting

services relating to the marketing and creative fields.

24.

On information and belief, in or about October 2015, Defendant launched an

advertising campaign prominently using the name and mark OUTTHINK (the Defendants

Mark) to promote its consulting services to develop marketing and advertising campaigns and

strategies to help businesses gain a competitive advantage in the market (Defendants

Services).

25. On information and belief, Defendant advertises, markets, and offers its

consulting services under Defendants Mark.

26. On information and belief, on or about January 28, 2016, Defendant issued a news

release announcing its intent to acquire a leading, United States-based digital marketing and

creative agency, Resource/Ammirati. Defendants January 28, 2016 news release can be found

on Defendants web site athttps://www-03.ibm.com/press/us/en/pressrelease/48893.wss.

27. On information and belief, Defendants news release stated that Defendants

acquisition of Resource/Ammirati supports Defendants goal of helping clients digitally reinvent

to create transformative brand experiences.

https://www-03.ibm.com/press/us/en/pressrelease/48893.wsshttps://www-03.ibm.com/press/us/en/pressrelease/48893.wsshttps://www-03.ibm.com/press/us/en/pressrelease/48893.wsshttps://www-03.ibm.com/press/us/en/pressrelease/48893.wss


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28. On information and belief, Outthink and Defendant both offer consulting services

relating to marketing and creative to help their customers gain a competitive advantage in

business.

29. Defendants Vice President of Branded Content and Global Creative, Ms. Ann

Rubin, stated in an AdWeek article that with Defendants Services, one can outthink risk,

outthink doubt, outthink competitors . . . . The AdWeek article was posted on the AdWeek

website on October 7, 2015 and can be found athttp://www.adweek.com/news/advertising-

branding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing-

167420.

30. The article also noted that Defendant states that industries such as banking,

insurance, healthcare, and retail can all benefit from Defendants Services.

31. On information and belief, Defendant offers its consulting services under

Defendants Mark to the same customers and industries to which Outthink offers the

OUTTHINK Services under the OUTTHINK Marks.

32.

On information and belief, Defendants first use of Defendants Mark in or about

October 2015 is well after Outthinks first use in commerce of its OUTTHINK Marks for the

OUTTHINK Services on July 1, 2002.

33. On information and belief, since Defendant began its use of Defendants Mark in

or about October 2015 by taking out an eight-page ad in the Wall Street Journal, Defendants use

of Defendants Mark has exponentially increased.

34. On information and belief, Defendant has flooded the marketplace with its

prominent display of Defendants Mark in promoting its consulting services.

http://www.adweek.com/news/advertising-branding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing-167420http://www.adweek.com/news/advertising-branding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing-167420http://www.adweek.com/news/advertising-branding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing-167420http://www.adweek.com/news/advertising-branding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing-167420http://www.adweek.com/news/advertising-branding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing-167420http://www.adweek.com/news/advertising-branding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing-167420http://www.adweek.com/news/advertising-branding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing-167420http://www.adweek.com/news/advertising-branding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing-167420


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35. Defendants website promotes these services at

http://www.ibm.com/cognitive/outthink/. Screen captures of Defendants website are shown

below.

36. On information and belief, the last frame of Defendants promotional videos and

television broadcast commercials prominently display Defendants Mark alone, as shown below.

A representative sampling of Defendants promotional videos and television broadcast

commercials can be found on Defendants website as well as Defendants YouTube page at

https://www.youtube.com/watch?v=6SNs9kvRWSA;

https://www.youtube.com/watch?v=sR7kyIxQ000;

https://www.youtube.com/watch?v=iRlpj5qNVGI;https://www.youtube.com/watch?v=d-

umbokNLGQ;https://www.youtube.com/watch?v=TMuCVz0EMPs;

https://www.youtube.com/watch?v=pwh1INne97Q;

https://www.youtube.com/watch?v=vqjndtS8jQU;and

https://www.youtube.com/watch?v=lszB8muRqQA.

http://www.ibm.com/cognitive/outthink/http://www.ibm.com/cognitive/outthink/https://www.youtube.com/watch?v=6SNs9kvRWSAhttps://www.youtube.com/watch?v=6SNs9kvRWSAhttps://www.youtube.com/watch?v=sR7kyIxQ000https://www.youtube.com/watch?v=sR7kyIxQ000https://www.youtube.com/watch?v=iRlpj5qNVGIhttps://www.youtube.com/watch?v=iRlpj5qNVGIhttps://www.youtube.com/watch?v=d-umbokNLGQhttps://www.youtube.com/watch?v=d-umbokNLGQhttps://www.youtube.com/watch?v=d-umbokNLGQhttps://www.youtube.com/watch?v=d-umbokNLGQhttps://www.youtube.com/watch?v=TMuCVz0EMPshttps://www.youtube.com/watch?v=TMuCVz0EMPshttps://www.youtube.com/watch?v=TMuCVz0EMPshttps://www.youtube.com/watch?v=pwh1INne97Qhttps://www.youtube.com/watch?v=pwh1INne97Qhttps://www.youtube.com/watch?v=vqjndtS8jQUhttps://www.youtube.com/watch?v=vqjndtS8jQUhttps://www.youtube.com/watch?v=lszB8muRqQAhttps://www.youtube.com/watch?v=lszB8muRqQAhttps://www.youtube.com/watch?v=lszB8muRqQAhttps://www.youtube.com/watch?v=vqjndtS8jQUhttps://www.youtube.com/watch?v=pwh1INne97Qhttps://www.youtube.com/watch?v=TMuCVz0EMPshttps://www.youtube.com/watch?v=d-umbokNLGQhttps://www.youtube.com/watch?v=d-umbokNLGQhttps://www.youtube.com/watch?v=iRlpj5qNVGIhttps://www.youtube.com/watch?v=sR7kyIxQ000https://www.youtube.com/watch?v=6SNs9kvRWSAhttp://www.ibm.com/cognitive/outthink/


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37. Upon information and belief, on or about January 24, 2016, during the AFC

Championship game between the New England Patriots and the Denver Broncos, Defendant

promoted its broadcast commercial three different times.

38. Upon information and belief, each time the broadcast commercial was shown, the

last frame of the commercial displayed Defendants Mark alone.

39. On January 6, 2016, Defendants Chairman, President, and Chief Executive

Officer, Ginni Rometty, delivered a keynote address at the Consumer Technology Associations

CES trade show in Las Vegas, Nevada.

40. On information and belief, Defendants Mark served as the backdrop to Ms.

Romettys keynote address, as shown below.



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41.

Defendant also prominently displays Defendants Mark on its LinkedIn, Twitter,

and Facebook pages athttps://www.linkedin.com/company/ibm,

https://www.facebook.com/IBM/,andhttps://twitter.com/ibm,with a representative example

shown below as accessed from Defendants LinkedIn and Facebook pages on January 26, 2016.

https://www.linkedin.com/company/ibmhttps://www.linkedin.com/company/ibmhttps://www.linkedin.com/company/ibmhttps://www.facebook.com/IBM/https://www.facebook.com/IBM/https://twitter.com/ibmhttps://twitter.com/ibmhttps://twitter.com/ibmhttps://twitter.com/ibmhttps://www.facebook.com/IBM/https://www.linkedin.com/company/ibm


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42. On information and belief, Defendant selected Defendants Mark as a search term

with the Google, Yahoo, and Bing search engines. The screen captures shown below are the

results for the search term OUTTHINK in the Google, Yahoo, and Bing search engines as

searched on January 31, 2016.



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43. On information and belief, as a result of Defendants selection of Defendants

Mark as a search term with the Google, Yahoo, and Bing search engines, Defendants ad will

appear above or next to the search results, as illustrated below.



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44. On information and belief, Defendants widespread nationwide use of

Defendants Mark is intended to cause, and in fact has caused, consumers to associate

Defendants Mark with Defendant.

45. On information and belief, given Defendants rampant use of Defendants Mark,

it is likely that consumers will be confused and deceived as to the source, affiliation, or

sponsorship of Defendants Mark and are likely to believe that Defendant is actually the senior

user and owner of Defendants Mark, when, in fact, it is Outthink.

46. On information and belief, Defendant advertises and promotes Defendants

Services through a variety of marketing channels that overlap with Outthinks marketing

channels, including without limitation on the Internet, social media platforms like LinkedIn and

Instagram, and the CES trade show.

47. On information and belief, Defendant has devoted substantial resources toward

advertising and promoting Defendants Services under Defendants Mark, including using

celebrity endorsements from singer-songwriter Bob Dylan and tennis extraordinaire Serena

Williams.

48. Outthink has never authorized Defendant to use Defendants Mark or to assert or

suggest any affiliation with or endorsement by Outthink.

49. On information and belief, as a result of Defendants use of an identical mark for

Defendants Services, consumers who encounter Defendants use of Defendants Mark have

been and are likely to continue to be confused as to the source of Defendants Services, or as to

their connection to or affiliation with Outthink and the OUTTHINK Services.

50. After Defendant launched its nationwide advertising campaign for Defendants

Mark, numerous third parties, including Outthinks customers, potential customers, members of



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the general public, and the press, contacted Outthink mistakenly believing that the advertisement

was for Outthink, that Outthink had created the advertising campaign for Defendant, that

Defendant had acquired Outthink, or that there was some other relationship, source, sponsorship

or affiliation between Defendant and Outthink because the marks and the manner in which the

marks are shown are so similar.

51. On information and belief, Defendant adopted Defendants Mark with

constructive notice of Outthink and its well-known OUTTHINK Marks.

52. On October 14, 2015, Outthink provided actual notice to Defendant of its rights in

the OUTTHINK Marks when it sent a letter to Defendant alerting Defendant to Outthinks

trademark rights and demanding that Defendant cease all use of Defendants Mark.

53. As of the filing of this Complaint, Defendant has not ceased use of Defendants

Mark. Defendants proliferation of its use of Defendants Mark, even after being put on notice

of Outthinks rights, is knowing, intentional and willful.

FIRST CLAIM FOR RELIEF

Trademark Infringement

[Section 32(1) of the Lanham Act, 15 U.S.C. 1114(1)]

54. Outthink incorporates by reference the allegations set forth above.

55. Outthink owns the federally registered OUTTHINKMarks. The OUTTHINK

Marks are strong and distinctive and designate Outthink as the source of all services advertised,

marketed, sold or used in connection with the marks.

56. Outthink is the senior user of the OUTTHINKMarks, as it began using the marks

in interstate commerce long before Defendant commenced use of its confusingly similar mark.



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57. On information and belief, Defendant was aware of the OUTTHINK Marks

before adopting and using Defendants Mark for Defendants Services. Thus, Defendants

unauthorized use of Defendants Mark was and is knowing, intentional and willful.

58. On information and belief, through use of an identical mark, Defendant intended

to, and did in fact, confuse and mislead consumers into believing that Outthink somehow

authorized, sponsored, approved, licensed or participated in Defendants use of Defendants

Mark.

59. Defendant does not have authorization, license or permission from Outthink to

advertise, market or sell its services under Defendants Mark, which is used in connection with

services that are identical and/or substantially similar to the OUTTHINK Services.

60. On information and belief, Defendants use of Defendants Mark has already

caused and will continue to cause confusion as to the origin of Defendants Services, whether

there is a relationship between Outthink and Defendant, or whether Defendants Services have

been sponsored, approved, licensed by or associated with Outthink, or are in some way

connected to or affiliated with Outthink.

61. On information and belief, Defendants use of Defendants Mark will likely cause

consumers to be confused as to the source, affiliation, or sponsorship of Defendants Mark and

are likely to believe that Defendant is the senior user and owner of Defendants Mark.

62. As a direct and proximate result of Defendants wrongful conduct, Outthink has

been and will continue to be damaged.

63. Defendants actions thus constitute trademark infringement in violation of 15

U.S.C. 1114(1).



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64. Outthink has no adequate remedy at law. Unless Defendant is enjoined from

committing the unlawful acts alleged herein, including the unauthorized use in commerce of

Defendants Mark, Outthink will continue to suffer irreparable harm. Accordingly, Outthink is

entitled to injunctive relief pursuant to 15 U.S.C. 1116 restraining Defendant, its officers,

agents and employees, and all persons acting in concert with them, from engaging in any further

such acts of trademark infringement in violation of the Lanham Act.

65. Pursuant to 15 U.S.C. 1117(a), Outthink is also entitled to recover damages it

has sustained and will sustain as a result of Defendants wrongful conduct, and the gains, profits

and advantages that Defendant has obtained as a result of its wrongful conduct. At present,

Outthink is unable to ascertain the full extent of its damages, or the gains, profits and advantages

that Defendant has obtained by reason of its wrongful conduct described herein.

66. Defendants conduct was intentional and Outthink is therefore entitled to an

award of treble damages against Defendant pursuant to 15 U.S.C. 1117(a).

67. Defendants willful acts make this an exceptional case under 15 U.S.C. 1117(a),

and thus, Outthink is entitled to an award of attorneys fees and costs.

SECOND CLAIM FOR RELIEF

Unfair Competition and False Designation of Origin

[Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)]


69. Outthink owns the federally registered OUTTHINK Marks. The OUTTHINK

Marks are incontestable and designates Outthink as the source of all services advertised,

marketed, sold or used in connection with the OUTTHINK Marks.

70. Outthink is the senior user of the OUTTHINK Marks as it began using the marks

in interstate commerce long before Defendants first use of Defendants Mark.



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71. On information and belief, Defendant was aware of Outthink and the OUTTHINK

Marks prior to adopting and/or using Defendants Mark for Defendants Services. Thus,

Defendants unauthorized use of Defendants Mark was and is knowing, intentional and willful.

72. On information and belief, through its use of the identical OUTTHINK mark,

Defendant intended to, and did in fact, confuse and mislead consumers into believing that

Outthink somehow authorized, sponsored, approved, licensed or participated in Defendants use

of the confusingly similar mark or was related to or affiliated with Defendant.

73. In fact, there is no formal connection or association between Outthink and

Defendant, nor has Outthink authorized, licensed or given permission to Defendant to use

Defendants Mark in any manner.

74. On information and belief, Defendants use of Defendants Mark has caused and

will likely continue to cause confusion as to the origin of Defendants Services, as well as

whether there is a relationship between Outthink and Defendant.

75. As a direct and proximate result of Defendants wrongful conduct, Outthink has

been and will continue to be damaged.

76. Defendants actions thus constitute false designation of origin and unfair

competition in violation of 15 U.S.C. 1125(a).

77. Outthink has no adequate remedy at law. Unless Defendant is permanently

enjoined from committing the unlawful acts alleged herein, including the unauthorized use in

commerce of Defendants Mark, Outthink will continue to suffer irreparable harm. Accordingly,

Outthink is entitled to injunctive relief pursuant to 15 U.S.C. 1116 restraining Defendant, its

officers, agents and employees, and all persons acting in concert with them, from engaging in



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any further such acts of unfair competition and false designation of origin in violation of the

Lanham Act.

78. Pursuant to 15 U.S.C. 1117(a), Outthink is also entitled to recover damages it

has sustained and will sustain as a result of Defendants wrongful conduct, and the gains, profits

and advantages that Defendant has obtained as a result of Defendants wrongful conduct. At

present, Outthink is unable to ascertain the full extent of its damages, or the gains, profits and

advantages that Defendant has obtained by reason of Defendants wrongful conduct described

herein.

79. Defendants conduct was intentional and Outthink is therefore entitled to an

award of treble damages against Defendant pursuant to 15 U.S.C. 1117(a).

80. Defendants willful acts make this an exceptional case under 15 U.S.C. 1117(a),

and thus, Outthink is entitled to an award of attorneys fees and costs

THIRD CLAIM FOR RELIEF

Trademark Infringement

[New York Common Law]


82. Outthink has valid and protectable common law rights in the OUTTHINK Marks.

83. Outthink is the senior user of the OUTTHINK Marks.

84. Defendants use of the confusingly similar Defendants Mark in connection with

similar services is likely to cause confusion as to the origin of Defendants Services, and/or as to

Outthinks association with them.

85. Defendants actions alleged herein constitute common law infringement of the

OUTTHINK Marks.



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86. On information and belief, Defendants infringement of Outthinks rights is

willful.

87. Defendants wrongful acts have permitted and will continue to permit Defendant

to receive substantial profits based upon the strength of Outthinks reputation and the substantial

goodwill built up in the OUTTHINK Marks.

88. As a result of Defendants infringing actions, Outthink has been and will continue

to be irreparably harmed.


committing the unlawful acts described herein, including without limitation, use of Defendants

Mark, Outthink will continue to suffer irreparable harm. Thus, Outthink is entitled to an

injunction restraining Defendant, its officers, agents and employees, and all persons acting in

concert with them, from engaging in any further such acts of trademark infringement in violation

of New York common law.

FOURTH CLAIM FOR RELIEF

Unfair Competition

[New York Common Law]


91. By engaging in the wrongful conduct described herein, Defendant willfully

intended to trade on the strength and reputation of Outthink and/or the OUTTHINKMarks that

caused injury to Outthink.

92. Defendants wrongful use of Defendants Mark in connection with Defendants

Services has caused and is likely to cause confusion, mistake and deception as to the affiliation,

connection and association of Defendant with Outthink and/or as to the origin, sponsorship and

approval of Defendants Services offered under Defendants Mark.



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93. As a direct and proximate result of Defendants unlawful acts, Outthink has

suffered and will continue to suffer injury.


committing the unlawful acts described herein, Outthink will continue to suffer irreparable harm.

Thus, Outthink is entitled to an injunction restraining Defendant, its officers, agents and

employees, and all persons acting in concert with them, from engaging in any further such acts of

unfair competition in violation of New York common law.

95. As a result of Defendants acts described herein, Defendant has been unjustly

enriched at Outthinks expense and Outthink has suffered a competitive injury and damages in an

amount to be proven at trial.

96. On information and belief, Defendant acted with oppression, fraud, malice and

willfully intended to trade on the strength, reputation and goodwill association with Defendants

Mark, to mislead the purchasing public, and to cause injury to Outthink. Thus, Outthink is

entitled to punitive damages.

FIFTH CLAIM FOR RELIEF

Deceptive Acts and Practices Unlawful

[New York General Business Law 349]


98. New York General Business Law, Section 349 states in relevant part that:

Deceptive acts or practices in the conduct of any business, trade or commerce or in the

furnishing of any service in this state are hereby declared unlawful.

99. Through its advertisement and offer to perform services in connection with

Defendants Mark, Defendant has engaged in consumer-oriented conduct that has affected the

public interest of New York and has resulted in injury to consumers in New York.



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100. Defendants deceptive acts or practices, as described herein, are materially

misleading. Such acts or practices have deceived or have a tendency to deceive a material

segment of the public to whom Defendant has directed its marketing activities, and Outthink has

been injured thereby.

101. By the acts described above, Defendant has willfully engaged in deceptive acts or

practices in the conduct of its business in the furnishing of its services in violation of Section 349

of the New York General Business Law.

102. Defendant has caused, and will continue to cause, irreparable injury to Outthink.

Outthink has no adequate remedy at law and is thus damaged in an amount not yet determined.

PRAYER FOR RELIEF

WHEREFORE, Outthink prays for judgment against Defendant as follows:

1. That Defendant be held liable for federal trademark infringement, unfair

competition, and false designation of origin in violation of the Lanham Act, 15 U.S.C. 1114

and 1125(a); trademark infringement, unfair competition, and deceptive trade practices in

violation of Section 349 of the New York General Business Law and New York State common

law;

2. For an order enjoining Defendant, its agents, employees, representatives, partners,

joint ventures, and/or anyone acting on behalf of, or in concert with Defendant from:

A. advertising, marketing or selling any products or services under

Defendants Mark, or any colorable imitation(s) of Defendants Mark, including any mark that

incorporates the term OUTTHINK, or any other phrase, term, or logo that is likely to cause

confusion with Outthink or its OUTTHINK Marks.

B. using in commerce or facilitating the use in commerce of the OUTTHINK

Marks, or any other phrase, term, mark, trade name, logo or design that falsely represents, or is



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SMRH:474676473.6 -23-

likely to confuse, mislead, or deceive consumers, or members of the public to believe that

services advertised, marketed, sold and/or offered for sale by Defendant originate from Outthink,

or that such services have been sponsored, approved, or licensed by or associated with Outthink,

or are in some way connected to or affiliated with Outthink;

C. doing or allowing any act or thing which is likely to injure Outthinks

business reputation or goodwill;

D. engaging in any acts of federal, state or common law trademark

infringement, false designation of origin, or unfair competition that would damage or injure

Outthink; and

E. participating or assisting in any of the above activities.

3. That Defendant, pursuant to 15 U.S.C. 1116(a), be required to file with the

Court and to serve on Outthink within thirty (30) days after service of an injunction order as

requested herein, a report in writing under oath setting forth in detail the manner and form in

which Defendant has complied with the Courts order.

4. That an accounting be ordered of all of the profits realized by Defendant, or

others acting in concert or participation with Defendant, from Defendants unauthorized use and

infringement of the OUTTHINK Marks.

5. That Defendant be required to account for and pay Outthink all gains, profits, and

advantages derived from its acts of infringement and other unlawful conduct, as alleged herein.

6. That all gains, profits and advantages derived by Defendant from its acts of

infringement and other unlawful conduct alleged herein be deemed to be in constructive trust for

the benefit of Outthink.



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SMRH:474676473.6 -24-

7. That judgment be entered against Defendant for Outthinks actual damages as a

result of Defendants acts of infringement and other unlawful conduct alleged herein, and for any

additional profits attributable to Defendants wrongful conduct, according to proof.

8. That Defendants unlawful conduct as alleged herein be deemed a willful

violation of Outthinks intellectual property rights.

9. That the Court declare this an exceptional case.

10. That Outthinks actual damages be trebled pursuant to 15 U.S.C. 1117(a).

11. That Outthink recover its reasonable attorneys fees pursuant to 15 U.S.C.

1117(a).

12. That Outthink be awarded punitive and exemplary damages pursuant to New

York common law.

13. That Outthink recover the costs of this suit.

14. That Outthink be granted pre-judgment and post-judgment interest on the

damages caused by Defendant.

15.

That Outthink be granted such other and further relief as the Court deems just and

proper.



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SMRH:474676473.6 -25-

Dated: February 3, 2016

Respectfully submitted,

By: /s/ Paul W. Garrity

Paul W. Garrity (NY Bar No. 2756419)

[email protected]

Sheppard, Mullin, Richter & Hampton LLP30 Rockefeller Plaza

New York, NY 10112-0015


Lisa M. Martens(pro hac vice to be filed)

[email protected]

Sheppard, Mullin, Richter & Hampton LLP12275 El Camino Real, Suite 200

San Diego, CA 92130

Telephone: (858) 720-8900

Facsimile: (858) 509-3691

Attorneys for Plaintiff

Outthink, LLC



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JURY DEMAND

Plaintiff Outthink, LLC demands a trial by jury of all issues triable by jury.

Dated: February 3, 2016

Respectfully submitted,

By: /s/ Paul W. Garrity

Paul W. Garrity (NY Bar No. 2756419)

[email protected], Mullin, Richter & Hampton LLP

30 Rockefeller Plaza

New York, NY 10112-0015Telephone: (212) 653-8700

Facsimile: (212) 653-8701

Lisa M. Martens

(pro hac vice to be filed)

[email protected], Mullin, Richter & Hampton LLP

12275 El Camino Real, Suite 200

San Diego, CA 92130


Attorneys for PlaintiffOutthink, LLC


outthink v. ibm - trademark complaint.pdf

Documents