IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
DESIGNER PREVIEWS, INC., a New York
Corporation,
Plaintiff,
v.
DESIGNER PREVIEWS, INC., an Illinois
Corporation and LINDA COHEN,
Defendants.
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COMPLAINT
Plaintiff Designer Previews, Inc. by way of this Complaint against Defendants Designer
Previews, Inc. and Linda Cohen (collectively “Defendants”), hereby alleges as follows:
NATURE OF THE ACTION
1.
This is an action for trademark infringement and unfair competition, arising under
the laws of the United States, including but not limited to 15 U.S.C. § 1114(1) and 15 U.S.C. §
1125(a) and for violations of the Consumer Fraud and Deceptive Business Practices Act and
Uniform Deceptive Trade Practices Act under the laws of the State of Illinois, 815 ILCS § 505
and 815 ILCS § 510.
THE PARTIES
2.
Designer Previews, Inc. (“DP”) is a corporation organized pursuant to the laws of
the State of New York with is principle place of business in Sag Harbor, New York.
3.
Defendant Designer Previews, Inc. (“IL Company”) is a corporation organized
pursuant to the laws of the State of Illinois with is principle place of business in Chicago,
Illinois.
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4.
Upon information and belief, Defendant Linda Cohen (“Cohen”) is an Illinois
citizen over the age of 18 residing at 3249 N. Talman, Chicago, Illinois 60618. Linda Cohen is
the President and registered agent of the IL Company.
JURISDICTION AND VENUE
5.
This Court has subject matter jurisdiction over DP’s claims pursuant to 28 U.S.C.
§§ 1331 and 1338 and 15 U.S.C. § 1121(a). This Court has supplemental jurisdiction over the
remaining claims pursuant to 28 U.S.C. § 1367(a) because such claims form part of the same
case or controversy.
6.
This Court has personal jurisdiction over Defendants because Defendants are
Illinois citizens, have engaged in business activities in and directed to this district, and the IL
Company has its principal place of business located within this judicial district.
7.
Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391 because all
Defendants reside within this judicial district.
BACKGROUND
8.
DP is in the business of providing interior design and commercial architectural
services.
9.
DP was founded in New York City in 1985 by Karen Fisher (“Fisher”).
10.
Between 1985 and the early 1990’s, DP gained a significant degree of success and
notoriety within the interior design and commercial architecture industry.
11.
Based on its success, DP entered into a number of franchise agreements with
franchisees in Atlanta, Georgia and several cities in Florida, including Palm Beach, Miami, Boca
Raton, Jupiter, Naples and Key Biscayne CONFIRM CITIES.
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The Chicago Franchise
12.
Consistent with this franchise business model, in or about 1997, DP entered into a
franchise agreement with an individual named Michael Walsh (“Walsh”).
13.
Walsh became the owner and operator of an Illinois DP franchise based in
Chicago (“Chicago Franchise”).
14.
In or about May of 1999, Walsh sold the Chicago Franchise to Cohen, and
assigned all right, title, and interest thereunder to Cohen.
15.
The previously executed franchise agreement between DP and Walsh remained in
effect until February 20, 2007, at which time the franchise agreement expired.
16.
Cohen assumed the Chicago Franchise and, from 1999 through 2007, operated the
Chicago Franchise pursuant to the terms of the franchise agreement.
17.
In 2006, shortly before the franchise agreement expired, Cohen formed a
corporation named Designer Previews, Inc. by filing articles of incorporation with the Illinois
Secretary of State.
18.
After the expiration of the franchise agreement in 2007, Cohen and DP, under
direction of Fisher, continued their business relationship upon the same terms, custom, and
practice as existed during the term of the franchise agreement.
19.
To that end, Cohen continued to pay royalties specified in the franchise agreement
to DP, up to and including the year 2011.
DP’s Change of Control and Direction
20.
In 2011, Fisher became ill, and in 2012, Fisher died.
21.
After Fisher’s death, Donna Paul (“Paul”) purchased DP from the estate of Fisher.
Paul is the current owner and Chief Executive Officer of DP.
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22.
Subsequent to Paul’s purchase of DP, Paul decided to pursue a new business
strategy for DP, and began to systematically terminate the franchise agreements with franchisees
in Chicago and elsewhere.
23.
Upon receiving notice from Paul that DP intended to terminate the Chicago
Franchise’s franchise and/or license rights, Cohen objected, claimed that she, Cohen, owned the
Chicago Franchise independent of DP, and alleged that she owned a separate and distinct
trademark in the name “Designer Previews Chicago.”
24.
On or about December 4, 2012, DP sent Defendants a cease and desist letter
demanding that they immediately and permanently discontinue use of the name “Designer
Previews Chicago.”
25.
DP,
individually
and
through
counsel,
has
continuously
exchanged
correspondence with Defendants since November of 2012 in an attempt to resolve this dispute, to
no avail.
26.
Despite the termination of the franchise agreement and cease and desist letters,
Defendants continue to operate and maintain: the corporate registration of the IL Company; the
domain name and website available at “designerpreviewschicago.com;” and a business that is
confusingly similar to, in direct competition with, and which passes off and trades upon the
goodwill of DP and its registered trademark.
27.
For exampe, the front page of Defendants’ designerpreviewschicago.com website
states that “Designer Previews began in 1985 as the country’s first and most innovative referral
service in helping homeowners select a design professional.” This information relates to DP, not
Cohen or the IL Company.
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28.
Searching for the term “Designer Previews” in popular search engines returns
search results in which Defendants’ website is listed prominently next to DP’s. For example, a
search run shortly before the filing of this Complaint returned the following result:
29.
Defendants use the following logo, which is confusingly similar to DP’s:
Defendants’ Logo:
30.
DP’s Logo:
Whereas DP owns and operates the the domain names and websites available at
designerpreviews.com,
designerpreviews-atlanta.com,
Defendants operate designerpreviewschicago.com.
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and
designerpreviews-miami.com,
DP’s Federally Registered Service Mark
31.
DP first used, and first used in commerce, “Designer Previews” as a service mark
identifying DP’s business and services on or before August 12, 1986 (hereafter “DESIGNER
PREVIEWS”).
32.
DP filed its application for registration of DESIGNER PREVIEWS on January
25, 1988, which was registered on September 27, 1988.
33.
The initial registration of DESIGNER PREVIEWS was cancelled by the U.S.
Patent and Trademark Office (“USPTO”) in or about 1995 for DP’s failure to make the
appropriate maintenance filings.
34.
DP at all times continued to use DESIGNER PREVIEWS in commerce despite
the aforementioned cancellation.
35.
On January 8, 2009, DP filed an application for a new registration of DESIGNER
PREVIEWS, which application was approved by the USPTO.
36.
DP is the owner of the federally registered service mark DESIGNER
PREVIEWS, which is the subject of U.S. Reg. No. 3666286. The status of the DESIGNER
PREVIEWS registration is active.
37.
Between 1986 and the present, DP has expended hundreds of thousands, or
millions, of dollars advertising its services and business using the DESIGNER PREVIEWS
mark.
38.
DP has established significant goodwill in connection with its business, which
goodwill the public associates with DP’s mark DESIGNER PREVIEWS.
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COUNT I
Trademark Infringement
39.
DP restates and re-alleges all of the allegations contained in Paragraphs 1 through
38 as if fully set forth herein.
40.
DP is the owner and senior user of DESIGNER PREVIEWS, which it has
continuously used in commerce since at least 1986 through the present.
41.
Defendants used and continue to use “Designer Previews” in commerce, without
the authority of DP, in connection with the offering of their services.
42.
For example, Defendants use and display the name “Designer Previews” on
designerpreviewschicago.com.
43.
Furthermore, Defendants use a logo that is confusingly similar to the DP logo and
offer services identical to DP, both of which Defendants use with authority from DP.
44.
Defendants’ activities as described in this Complaint constitute trademark
infringement pursuant to 15 U.S.C. § 1114.
45.
Defendants’ infringing activities have been committed without the authority of
DP, and, in fact, in express contravention of demands by DP to immediately discontinue such
infringing activities.
46.
Defendants’ past and continued infringing uses of Designer Previews have caused
actual confusion and/or are likely to cause confusion, mistake, and deception in the marketplace.
47.
Defendants’ use of “Designer Previews” in commerce is likely to cause
confusion, mistake, or deception in that clients and potential clients of DP are likely to believe
that there is an affiliation, association, connection, approval, licensing agreement, or sponsorship
between Defendants and DP, or that Defendant is DP.
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48.
Defendants’ past and continued infringing use in commerce of Designer Previews
has caused considerable damages, in an amount to be proven at trial, and will cause irreparable
harm to DP if Defendants are not immediately and permanently enjoined from using “Designer
Previews.”
COUNT II
Unfair Competition
49.
DP restates and re-alleges all of the allegations contained in Paragraphs 1 through
34 and 37-38 as if fully set forth herein.
50.
In the alternative to Count I, and to the extent this Court enters a finding to cause
the DESIGNER PREVIEWS mark to be cancelled or abandoned, DP is the owner of an
unregistered service mark, termed ”Designer Previews.”
51.
DP is the owner and senior user of the service mark “Designer Previews,” which
it has continuously used in commerce since at least 1986 through the present.
52.
Defendants used, and continue to use, “Designer Previews” in commerce, without
the authority of DP, in connection with the offering of their services.
53.
Defendants display a confusingly similar “Designer Previews” logo on their
website without disclosing that Defendants have no agreement, affiliation, or sponsorship with
DP.
54.
Defendants’ use of “Designer Previews” in commerce is likely to cause
confusion, mistake, or deception in that clients and potential clients are likely to believe that
there is an affiliation, association, connection, approval, licensing agreement, or sponsorship
between Defendants and DP, or that Defendant is DP.
55.
The likely confusion, mistake, or deception caused by Defendants unauthorized
use of DP’s “Designer Previews” mark is in violation of 15 U.S.C. § 1125.
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56.
As a direct and proximate result of the likely confusion, mistake, or deception
caused by Defendants, DP has suffered, and will continue to suffer, damage, in an amount to be
proven at trial, and irreparable harm unless Defendants are enjoined.
57.
In accordance with the provisions of Lanham Act, Sections 1116 and 1117, DP is
entitled to injunctive relief, disgorgement, damages, and costs of prosecuting this action. 15
U.S.C. §§ 1116-1117.
COUNT III
Violation of Illinois Uniform Deceptive Trade Practices Act
58.
DP restates and re-alleges all of the allegations contained in Paragraphs 1 through
57 as if fully set forth herein.
59.
At all times relevant, the Illinois Uniform Deceptive Trade Practices Act
(“UDTPA”) was in effect. 815 ILCS § 510/2.
60.
At all times relevant, the UDTPA provided in pertinent part that “a person
engages in a deceptive trade practice when, in the course of his or her business ... [she] causes
likelihood of confusion or of misunderstanding as to the source, sponsorship, approval, or
certification of goods or services.” 815 ILCS § 510/2(a)(2).
61.
Defendants use “Designer Previews” on Defendants’ website to promote and
advertise its design services, without authority from DP.
62.
The front page of Defendants designerpreviewschicago.com website states that
“Designer Previews began in 1985 as the country’s first and most innovative referral service in
helping homeowners select a design professional.”
63.
Defendants do not acknowledge to the public that they are not associated or
affiliated in any way with DP.
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64.
DP has established goodwill and maintained a publicly recognized standard of
quality services for over 25 years.
65.
Defendants’ use of “Designer Previews” began after DP’s use in commerce of the
DESIGNER PREVIEWS mark.
66.
Defendants’ unauthorized use of “Designer Previews” allows Defendants to
unlawfully trade upon the goodwill that DP has established over the past 25 or more years.
67.
As a result of Defendants’ unauthorized use of “Designer Previews” in connection
with Defendants’ services, and by advertising on designerpreviewschicago.com, Defendants
cause and/or are likely to cause confusion or misunderstanding, in violation of the UDTPA.
68.
Defendants mislead, and/or are likely to mislead, clients and prospective clients of
DP as to the source, connection, affiliation, or association between the IL Company and DP.
69.
Defendants’ unauthorized and improper use of “Designer Previews” has caused
DP actual damages in an amoutn to be proven at trial.
70.
Unless enjoined by this Court, DP will continue to suffer damages and irreparable
harm, for which DP has no adequate remedy at law.
COUNT IV
Violation of Illinois Consumer Fraud and
Deceptive Business Practices Act
71.
DP restates and re-alleges all of the allegations contained in Paragraphs 1 through
70 as if fully set forth herein.
72.
At all times relevant, the Illinois Consumer Fraud and Deceptive Practices Act
was in effect. 815 ILCS § 505/1, et seq. (the “Act”).
73.
The Act states as follows:
Unfair methods of competition and unfair or deceptive acts or practices, including but not
limited to the use or employment of any deception fraud, false pretense, false promise,
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misrepresentation or the concealment, suppression or omission of any material fact, with
intent that others rely upon the concealment, suppression or omission of such material
fact, or the use or employment of any practice described in Section 2 of the "Uniform
Deceptive Trade Practices Act", approved August 5, 1965, in the conduct of any trade or
commerce are hereby declared unlawful whether any person has in fact been misled,
deceived or damaged thereby. In construing this section consideration shall be given to
the interpretations of the Federal Trade Commission and the federal courts relating to
Section 5 (a) of the Federal Trade Commission Act.
74.
Defendants’ actions constitute conduct in trade or commerce as set forth in the
aforementioned Act.
75.
Defendants represent that their services are being sponsored by, or otherwise
affiliated with, those of DP.
76.
Moreover, Defendants do not identify to the public that they are in no way
affiliated with DP.
77.
Defendants fraudulently convey that IL Company is connected with DP by using
an identical corporate name, claiming to have been in operation since 1985 when, in fact, the IL
Company was formed in 2006, and by using a confusingly similar domain name and mark as DP.
78.
Defendants’ unauthorized activities constitute fraud, misrepresentation or the
concealment, suppression, and/or omission of material facts.
79.
Defendants intend that others rely upon their concealment, suppression, and/or
omission of material facts to direct clients and/or potential clients of DP to Defendants’ business.
80.
As a direct and proximate result of Defendant’s aforesaid violation of the
Consumer Fraud and Deceptive Business Practices Act, DP has suffered damages in an amount
to be proven at trial.
81.
In accordance with Section 505/10(a) of the Act, DP is entitled to damages,
including but not limited to actual damages, injunctive relief, attorneys’ fees and any other relief
which the court deems proper.
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PRAYER FOR RELIEF
WHEREFORE, Designer Previews, Inc. respectfully requests that this Court enter
judgment against Defendants, jointly and severally, as follows:
(1)
That the Court issue temporary and permanent injunctive relief against each of the
Defendants, and each Defendant’s officers, agents, representatives, servants, employees,
attorneys successors and assigns, and all others in active concert or participation with
Defendants, that they be enjoined and restrained from:
(a)
using DP’s trademarks, service marks, trade names, or anything
confusingly similar thereto in connection with the description, marketing, promotion,
advertising, or offer of sale of interior design services, architectural services, or the
selection of construction and design professionals for clients;
(b)
infringing DP’s service marks; and
(c)
using, registering, or maintaining any registration of any domain name
containing the Designer Previews mark, or any other confusingly similar terms;
(2)
That the Court award to DP actual damages for Defendants’ infringement,
deceptive trade practices, and/or consumer fraud in an amount to be determined at trial;
(3)
That the Court disgorge Defendants of any revenues or profits gained or received
as a result of Defendants’ unauthorized use of DP’s marks;
(4)
That the Court award to DP the cost and disbursements of this action and
reasonable attorneys’ fees; and
(5)
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Award to DP such other relief as this Court deems just and appropriate.
DATED:
Respectfully submitted,
By: _______________________________
One of the Attorneys for Plaintiff
Designer Previews, Inc.
Daniel L. Farris
Nicole A. Poulos
Polsinelli PC
161 N. Clark Street, Suite 4200
Chicago, IL 60601
Main: (312) 819-1900
Facsimile: (312) 819-1910
dfarris@polsinelli.com
npoulos@polsinelli.com
Firm No.: 47375
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