F R A N K F U RT K U R N I T K L E I N & S E L Z
488 Madison Avenue
Pc
New York, New York 10022
Tel: (212) 980-0120
Fax: (212) 593-9175
Toby Butterfield, Esq.
Direct Tel : 212 .826.5567
Email : tbutterfield@fkks.com
February 27, 2014
VIA E-MAIL and FEDEX
susan.kw-land@dot.gov
The Hon. Susan L. Kurland
Assistant Secretary for Aviation & Int'l Affairs
Office of the Secretary of Transportation
U.S. Department of Transportation
1200 New Jersey A venue, SE
Washington, DC 20590
United States of America
RE:
Opposition to Application of Blue Jet Sp. z o.o. for Foreign Air Carrier
Permit and Exemption Authority
Docket DOT- OST-2014-0026
Dear Assistant Secretary Kurland:
This firm represents JetBlue Airways Corporation ("JetBlue") in intellectual property and
litigation matters. We are writing to alert you to our client's objections to the application filed
with your Department by Blue Jet Sp. z o.o. ("Blue Jet") for permission to commence air
services throughout the United States. Blue Jet 's name is so confusingly similar to JetBlue' s
name that if Blue Jet's application is granted under its current name, consumer confusion is
inevitable and unavoidable.
We therefore request that the Department deny the application altogether, or suspend the
application until the applicant changes the name under which it will operate in the United States
to one which would not confuse the travelling public, or otherwise resolve our client's
objections. In addition, we request that at the very minimum, the Department will require Blue
Jet to notify JetBlue in accordance with the procedure in FAR§ 215.5 concerning similarity of
names.
JetBlue is the premiere low-cost, high-quality domestic airline in the United States and
currently serves more than seventy destinations in the United States, Mexico, Caribbean and
South America. Through JetBlue ' s longstanding interline and code share relationships with
partner airlines, JetBlue serves additional destinations worldwide, including cities in South
Africa, Europe and the Middle East. JetBlue also maintains interline agreements allowing
passengers to fly with JetBlue partners to cities around the world via code flights.
F R A N K F U RT K U R N I T K L E I N & S E L Z
The Hon. Susan L. Kurland
February 27, 2014
Page 2
Pc
JetBlue has been using its well-known JETBLUE trademark prominently in connection
with every aspect of air travel since at least as early as 1999. JetBlue owns more than thirty-one
federal trademark registrations and pending applications with the United States Patent and
Trademark Office ("USPTO"), some of which are incontestable, for the trademark JETBLUE
and JETBLUE in combination with another word or words. These registrations and applications
include, without limitation, thirteen registrations for transportation of passengers, parcels, freight
and cargo by air (Reg. Nos. 4338485, 4338484, 4338483, 4289126, 3502438, 3084084,
3163121,3163120,3052759,2971984,2947348,2451955, and 2449988). In the European
Union, JetBlue has also secured a Community Trade Mark registration ("CTM") for the
trademark JETBLUE, registration no. 001440288, and various other national European
registrations.
JetBlue ' s customer base is large and widespread. The airline flies at least 75 million
passengers annually on its flights. JetBlue has invested heavily in the advertising and promotion
of its JETBLUE brand and, as a result, the public and trade have come to associate the mark
JETBLUE with goods and services emanating exclusively from JetBlue. The JETBLUE brand is
extremely valuable to JetBlue.
For several years, JetBlue has been attempting to resolve disputes with Blue Jet over its
confusingly similar name. Despite JetBlue ' s prominence and size, nearly four years ago, Blue
Jet started attempting to undermine JetBlue' s trademark rights. Blue Jet first sought to register
its BLUE JET mark in the European Union. When JetBlue opposed that application, Blue Jet
retaliated by seeking to cancel JetBlue's CTM for its mark JETBLUE. Although JetBlue views
Blue Jet's use of its claimed mark as an infringement of JetBlue's rights, and resisted
cancellation of its CTM vigorously, JetBlue was willing to negotiate a worldwide resolution of
the issue. Despite attempting to do so for nearly three years, however, the parties still have not
signed any agreement.
Instead, Blue Jet is now seeking permission to operate in the United States by filing its
application with your department for a Foreign Air Carrier Permit and Exemption Authority (the
"Application"). In the Application, Blue Jet seeks your Department's consent to "engage in ...
foreign charter air transportation of persons and property ... to any point or points in the United
States; foreign air charter service of persons and property between any point or points in the
United Stated and any point or points in any member of the European Union; and ... other
charters; and transp01tation authorized by any additional route rights made available to European
Community carriers in the future." Application, p.l , paras. (i)- (iv).
Such use by Blue Jet of its name and mark BLUE JET in the United States would cause
widespread confusion with JetBlue 's mark JETBLUE to consumers. The two marks consist
exclusively of the same two identical words. We therefore notify you of our objection to the
Application; request that you require Blue Jet to formally notify our client of its Application for
F R A N K F U RT K U R N I T K L E I N & S E L Z
Pc
The Hon. Susan L. Kurland
February 27, 2014
Page 3
registration in accordance with FAR§ 215.5. Meanwhile, JetBlue has filed an action in the
Southern District ofNew York seeking a court declaration that Blue Jet's use of its mark
infringes on J etBl ue' s trademark rights. A copy of the complaint in that action (the "Action") is
enclosed.
JetBlue will require Blue Jet to voluntarily agree to change its name, at least in the US. It
is the responsibility of a junior user to avoid using a mark that is confusingly similar to a mark
already being used by an established business. If Blue Jet does not do so, JetBlue will amend its
claims in the Action to seek all remedies it is entitled to under all applicable United States laws,
including without limitation under 15 U.S.C. §1114(l)(a), §1116-1118, 1125(a)(l). As the
JETBLUE trademark is famous, JetBlue is also entitled to protection and remedies under the
Federal Trademark Dilution Act, 15 U.S .C. § 1125. Finally, JetBlue also plans to file objections
to the permit and exemption application in timely fashion .
This is not intended to be a complete statement of the facts and circumstances
surrounding this dispute, and is without prejudice to and without waiver of JetBlue's rights and
remedies at law and in equity. We look forward to hearing from you and from Blue Jet or its
counsel so we can resolve this longstanding dispute.
Very truly yours,
cr;~~
Toby Butterfield
Enclosure
cc:
Mr. Robert Finamore (via email robert.tinamore@dot.gov w/ enc.)
Gary Garofalo, Esq. (ggaro[alo@ggh-airlaw.com)
Erin Tallardy, Esq. (etallardv@ggh-airlaw.com)
Jason Maddux, Esq. (jmaddux@ggh-airlaw.com)
Counsel for Blue Jet Sp. z o.o. (via email w/ enc.)
Jonathan B. Hill, Esq., Cooley LLP
(via emailjhill@cooley. com w/ enc.)
Beth Goldman, Esq.
FRANKFURT KURNIT KLEIN & SELZ, P.C.
Toby Mi. Butterfield
Beth I. Goldman
th
488 Madison Avenue, 10
Floor
New York, New York 10022
Phone: (212) 980-0120
Fax: (212)593-9175
14 CV
Attorneys for PlaintiffJetBlue Airways Corporation
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
x
JetBlue Airways Corporation,
Plaintiff,
-against-
:
COMPLAINT FOR
DECLARATORY JUDGMENT
14 Civ.
BlueJetSp.zo.o.,
Defendant.
(
)
x
Plaintiff JetBlue Airways Corporation (“JetBlue”), by its undersigned attorneys, submits
this Complaint for Declaratory Judgment against Defendant Blue Jet Sp. z o.o. (“Blue Jet”).
Plaintiffs allege as follows:
Nature of the Action
1.
JetBlue has been using its famous JETBLUE trademark to market and promote its
high quality, low-cost airline services in the United States and abroad since at least 1999.
JetBlue’s medium blue color-scheme and playful logo, including its signature lower-case “j” and
upper-case “B,” are widely recognized. JetBlue has thirty-one federal trademark registrations
with the United States Patent and Trademark Office (“USPTO”), some of which are
incontestable, for the trademark JETBLUE and JETBLUE in combination with another word or
words (“JETBLUE MARKS”). JetBlue also has established its brand in the European Union by
registering the mark “JetBlue” in connection with a wide variety of goods and services, as
partially evidenced by its Community Trademarks (“CTM5”) and national European registrations
of its mark. As a result, the public has come to associate the JETBLUE MARKS with goods and
services emanating exclusively from JetBlue.
2.
Blue Jet is a Poland-based airline that has recently applied for a Community
Trademark (“CTM”) registration the Office of Harmonization for the Internal Market (“OHIM”)
in the EU for various goods and services. Blue Jet filed its first CTM application on July 13,
2009. On March 5, 2010, JetBlue opposed Blue Jet’s CTM registration and in return, Blue Jet
filed requests to revoke certain JetBlue marks. As a result, the parties entered into a prolonged
dispute regarding the registration of marks by the parties before the OHIM.
3.
On February 24, 2014, Blue Jet filed an application before the United States
Department of Transportation for broad rights to act as a foreign air carrier to points in the
United States, and to fly from the United States to points in any country that is a member of the
European Common Aviation Area.
4.
Blue Jet’s use in the United States of the Blue Jet mark in connection with airline
services violates 15 U.S.C.
§
11 14(1)(a) and 1 125(a)(1) because it will cause consumer
confusion, mistake, and will deceive consumers as to the existence of an affiliation, connection,
or association between Blue Jet and JetBlue.
5.
Therefore, JetBlue files this action for a declaratory judgment pursuant to the
federal Declaratory Judgment Act, 28 U.S.C.
§ 2201, seeking a declaration that Blue Jet’s use of
the mark “Blue Jet” in the United States violates JetBlue’s established trademark rights.
2
The Parties
Plaintiff JetBlue is a corporation organized under the laws of Delaware that
6.
maintains its principal place of business at 27-0 1 Queens Plaza North, Long Island City, NY
11101.
Upon information and belief, defendant Blue Jet is an air carrier in Central and
7.
Eastern Europe, which offers airline service throughout the world.
8.
Upon information and belief, defendant Blue Jet maintains its principal place of
business at 02-146 Warszawa, 17 Stycznia 47, Poland.
Jurisdiction and Venue
This is an action for a declaratory judgment pursuant to federal Declaratory
9.
Judgment Act, 28 U.S.C.
10.
§ 2201.
This court has jurisdiction over this case under the Declaratory Judgment Act, 28
U.S.C.A.
§
2201 and Fed. R. Civ. P. 57, both based on the diversity of the parties under 28
U.S.C.A.
§
1332 in tandem with the value of the rights at issue being above $75,000 exclusive of
interest and costs, and on the centrality of substantial federal questions under the federal
trademark statute pursuant to 28 U.S.C.A.
§
1331, 1338(a), and under 15 U.S.C.A.
§
1121.
11.
Venue is proper in this district under 28 U.S.C.
12.
This Court has personal jurisdiction over the Defendant Blue Jet pursuant to New
York Civil Practice Law and Rules (“NYCPLR”)
§
§
1391(b).
301 because Blue Jet has purposely targeted
its activities to and has systematically transacted, done, and solicited business in this district.
Relevant Facts
13.
JetBlue is the premiere low-cost, high-quality domestic airline in the United
States and currently serves some sixty-five destinations in the United States, Mexico, Caribbean,
3
and South America. Through JetBlue’s longstanding relationships with partner airlines, JetBlue
serves additional destinations worldwide. For example, JetBlue has its code on flights between
NY and Dubai, NY and Milan, and NY and South Africa, meaning customers can purchase and
take “JetBlue flights” to/from these destinations that are operated by partner airlines.
14.
JetBlue has been using its well-known JETBLUE trademark in connection with
superior service in every aspect of air travel since at least as early as the year 1999. JetBlue
owns thirty-one federal trademark registrations and pending applications with the USPTO for the
trademark JETBLUE and JETBLUE in combination with another word or words. These
registrations and applications include, without limitation, thirteen registrations for transportation
of passengers, parcels, freight and cargo by air (Reg. Nos. 4338485, 4338484, 4338483,
4289126, 3502438, 3084084, 3163121, 3163120, 3052759, 2971984, 2947348, 2451955, and
2449988). JetBlue also owns a large number of unregistered marks incorporating or comprising
the word JETBLUE used with a variety of goods and services related to travel and air
transportation.
15.
JetBlue has invested millions of dollars in the advertising and promotion of its
JETBLUE trademark, logos, and trade dress. As a result, the public has come to associate the
JETBLUE MARKS with goods and services emanating exclusively from JetBlue. The
JETBLUE MARKS are therefore extremely valuable to JetBlue.
16.
A search of the United States Trademark register shows that Blue Jet has not
applied for or obtained registration of any trademarks in the United States.
17.
JetBlue has also established its brand in the European Union. JetBlue has adopted
and used, by itself or through its global airline partners, the mark “JetBlue” in connection with a
4
wide variety of goods and services, as evidenced by its Community Trade mark registration
(“CTM”) for the trademark JETBLUE, and various other national European registrations.
18.
Blue Jet has direct knowledge of the strength of the JETBLUE MARKS. In the
European Union, Blue Jet adopted and used the figurative mark
BLUE JET
_.—‘
in the
colors dark blue, light blue and white (the “BLUE JET MARK”) in connection with on-demand
charter flights. Blue Jet applied for a Community Trademark registration with The Office of
Harmonization for the Internal Market (“OHIM”) for the figurative BLUE JET MARK,
Community Application No. 008422041, for various goods and services in several classes (the
“BLUE JET CTM”). Blue Jet filed its first CTM application on July 13, 2009. On March 5,
2010, JetBlue filed an Opposition with OHIM to BLUE JET’s CTM, Reference No. B
001631731. In response, Blue Jet filed requests for revocation with OHIM against certain
JETBLUE MARKS, including without limitation, Request for Revocation Nos. 4518C, 4994C
and 4995C.
19.
Since that time, Blue Jet and JetBlue have attempted to amicably resolve their
dispute before OHIM, but have not achieved agreement.
20.
On February 24, 2014, Blue Jet filed an application before the United States
Department of Transportation for a foreign air carrier permit pursuant to 49 U.S.C.
§ 41301 to
enable it to engage in:
i.
foreign charter air transportation of persons and property from any point
or points behind any Member State of the European Union via any point or points
in any Member State and via intermediate points to any point or points in the
United States and beyond;
ii.
foreign charter air transportation of persons and property between any
point or points in the United States and any point or points in any member of the
European Common Aviation Area;
5
iii.
other charters pursuant to the prior approval requirements set forth in Part
212 of the Department’s Aviation Economic Regulations; and
iv.
transportation authorized by any additional route rights made available to
European Community carriers in the future.
Blue Jet also requested exemption authority pursuant to
§ 49 U.S.C. § 40109 to enable it to
provide the services described above pending the issuance of a foreign air carrier permit. Blue
Jet has requested expedited treatment of its application.
21.
Blue Jet’s mark is confusingly similar to the JETBLUE MARKS registered in the
United States. Blue Jet refers to itself on its English language website as “BlueJet” (one word).’
Whether as one word or two, the use of the words “Blue” and “Jet” together have obvious visual,
aural, and connotative similarities to the JETBLUE MARKS. Thus, Blue Jet’s use of the mark
in connection with airline services threatens to cause consumer confusion, mistake, or to deceive
consumers as to the existence of an affiliation, connection, or association between Blue Jet and
JetBlue under 15 U.S.C.
22.
§
11 14(1)(a) and 1 125(a)(1).
Accordingly, JetBlue is entitled to a judgment determining that Blue Jet’s use of
the BLUE JET MARK infringes the JETBLUE MARKS.
COUNT ONE
(Declaration of Trademark Infringement)
23.
JetBlue repeats and realleges the allegations of Paragraphs 1 through 22 of this
Complaint as if fully set forth herein.
24.
JetBlue and Blue Jet have engaged in an extended dispute regarding the
registration and use of Blue Jet’s figurative mark in the EU before the The Office of
Harmonization for the Internal Market (“OHIM”). Blue Jet has now applied to the United States
Department of Transportation for the right to conduct international air carrier services under a
Blue Jet Website, http://www.blueiet.aero/en/czarter-odrzutowcow.aspx (last visited February 27, 2014)
6
mark that infringes the JETBLUE MARKS. Accordingly, an actual, present and justiciable
controversy has arisen between JetBlue and Blue Jet concerning the use by Blue Jet of a mark
that infringes the JETBLUE MARKS.
Prayer for Relief
WHEREFORE, by the undersigned attorneys, JetBlue prays for relief as follows:
A.
A judgment declaring that Blue Jet’s use of the BLUE JET MARK infringes the
JETBLUE MARKS;
B.
That JetBlue recover its costs and disbursements incurred in this action, including
its reasonable attorneys’ fees; and
C.
Such other and further relief as the Court deems just and proper.
Dated: New York, New York
February 27, 2013
FRANKFURT KURNIT KLEIN & SELZ, P.C.
Toby M.J. Butterfield, Esq.
Beth I. Goldman, Esq.
488 Madison Avenue
New York, New York 10022
Tel.: (212) 980-0120
Fax: (212) 593-9175
tbutterfield@flcks.com
bgoldmanflcks. corn
Attorneysfor Plaint ffJetBlue Airways
Corporation
7