UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

__________________________________________

SIMONE KELLY-BROWN and OWN YOUR |

POWER COMMUNICATIONS, INC. |

|

Plaintiffs, |

|

v. |

|

OPRAH WINFREY, HARPO PRODUCTIONS, |

INC., HARPO, INC., HEARST CORPORATION, |

HEARST COMMUNICATIONS, INC., WELLS |

FARGO & COMPANY, ESTEE LAUDER |

COMPANIES, INC., CLINIQUE |

LABORATORIES, LLC, CHICO’S FAS, INC., |

ABC COMPANIES 1-100 (names being fictitious) |

AND JOHN DOES 1-100 (names being fictitious) |

|

Defendants. |

_________________________________________ |

_____________________________________________________________________________________

Plaintiffs’ Brief in Support of Motion for Preliminary Injunction

_____________________________________________________________________________________

Patricia Lawrence-Kolaras, Esq.

The PLK Law Group, P.C.

284 U.S. Route 206, Bldg. E, Ste. 10

Hillsborough, NJ 08844

Tel: (908) 431-3108

Fax: (908) 431-3109

patricia@plklawgroup.com

Attorneys for the Plaintiffs

Civil Action No. 2:11-cv-04360-SRC-MAS

Hon. Stanley R. Chesler, U.S.D.J.

Hon. Michael A. Shipp, U.S.M.J.

Motion Date: September 6, 2011

ii

TABLE OF CONTENTS

TABLE OF AUTHORITIES .................................................................................................. iv

PRELIMINARY STATEMENT ..............................................................................................1

LEGAL ARGUMENT ..............................................................................................................4

KELLY-BROWN IS ENTITLED TO A PRELIMINARY INJUNCTION AGAINST

DEFENDANTS’ COUNTERFEITING AND INFRINGEMENT OF THE OWN YOUR

POWER TRADEMARK WHICH IS CONFUSING THE PUBLIC, USURPING

KELLY-BROWN’S EXCLUSIVE RIGHTS AND INTERFERING WITH HER

BUSINESS. ............................................................................................................................4

I. KELLY-BROWN HAS A REASONABLE PROBABILITY OF SUCCESS AS

DEFENDANTS HAVE BLATANTLY COUNTERFEITED AND INFRINGED

THE OYP TRADEMARK AND TORTIOUSLY INTERFERED WITH

BUSINESS PRACTICES. ............................................................................................5

A. Defendants Have Counterfeited Kelly-Brown’s OYP Trademark in Violation of

the Lanham Act. ......................................................................................................5

1. Defendants have infringed Kelly-Brown’s registered Own Your Power

trademark in violation of the Lanham Act. ......................................................5

a. The OYP Trademark is valid and protectable, and is owned by Kelly-

Brown. ......................................................................................................5

b. The Defendants’ use of Own Your Power caused confusion. .................6

2. Defendants have intentionally used the registered trademark knowing that it

was a counterfeit. ............................................................................................. 19

a. The Defendants’ mark is a counterfeit of the OYP Trademark........... 19

b. The Defendants have intended to counterfeit the OYP Trademark. ... 21

B. Defendants Have Tortiously Interfered with Kelly-Brown’s Prospective Business

Advantage. ............................................................................................................. 23

1. Kelly-Brown reasonably believed that the exclusive ownership of the OYP

Trademark would lead consumers to seek OYP Services from her. .............. 23

2. The Defendants intentionally and inappropriately infringed the OYP

Trademark. ...................................................................................................... 24

iii

3. The Defendants’ infringing actions caused economic harm to

Kelly-Brown. .................................................................................................... 25

II. KELLY-BROWN WILL BE IRREPARABLY HARMED BY DENIAL OF THE

INJUNCTION. .................................................................................................................... 26

III. GRANTING PRELIMINARY RELIEF WILL NOT RESULT IN EVEN

GREATER HARM TO DEFENDANTS. ....................................................................... 27

IV. GRANTING THE PRELIMINARY RELIEF WILL BE IN THE PUBLIC

INTEREST. ......................................................................................................................... 28

V. THE BOND REQUIREMENT SHOULD BE WAIVED. .............................................. 29

CONCLUSION ....................................................................................................................... 30

iv

TABLE OF AUTHORITIES

Cases

A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc.

237 F.3d 198 (3d Cir. 2000)…………..…………………………………………………….8, 17

ACLU v. Black Horse Pike Reg’l Bd. Of Educ., 84 F.3d 1471 (3rd Cir. 1996)..............................4

ACLU v. Mukasey, 322 F.3d 240, 250 (3rd Cir. 2003) .................................................................4

Am. Plan Corp. v. State Loan & Fin. Corp., 365 F.2d 635 (3d Cir. 1966) ....................................8

Am. Tel. & Tel. Co. v. Winback & Conserve Program, Inc., 42 F.3d 1421 (3d Cir. 1994) .......... 28

Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960 (6th Cir. 1987) ......................................7

Banff, Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d 486 (2d Cir. 1988). ....................................7

Brookfield, Commc’ns, Inc. v. W. Coast Entm’t. Corp., 174 F.3d 1036 (9th Cir. 1999) .............. 14

Chanel v. Gordashevsky, 558 F. Supp. 2d 532 (D.N.J. 2008) .......................................................5

Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270 (3d Cir. 2001). .......... 17

Coach, Inc. v. Cosmetic House, 2011 U.S. Dist. LEXIS 32924, 8-9 (D.N.J. Mar. 29, 2011) ........5

Coach, Inc. v. Ocean Point Gifts, 2010 U.S. Dist. LEXIS 59003 (D.N.J. June 14 2010) ............ 22

Commerce Nat'l Ins. Servs. v. Commerce Ins. Agency, Inc., 214 F.3d 432 (3d Cir. 2000) ............7

E. & J. Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp. 457 (N.D. Cal. 1991) ............. 14

Fisons Horticulture v. Vigoro Indus., Inc., 30 F.3d 466 (3d Cir. 1994). .......................................7

GoTo.com, Inc. v. The Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) ..................................... 11

Harlem Wizards Entm’t Basketball, Inc. v. NBA Props., Inc.,

952 F. Supp. 1084 (D.N.J. 1997)..............................................................................................7

Herbko Int’l, Inc., v. Kappa Books, Inc.,

308 F.3d 1156, 1165, 64 U.S.P.Q.2D (BNA) 1375 (Fed. Cir. 2002) .........................................9

Ideal Indus., Inc. v. Gardner Bender, Inc., 612 F.2d 1018 (7th Cir. 1979) ................................. 27

Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983) .........................................................6

v

Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700 (3d Cir. 2004). ......................................... passim

Masters Software Inc. v. Discovery Commc’ns., Inc.,

No. C10-405RAJ (W.D.Wash. July 16, 2010). ....................................................................... 14

Metro Publ'g, Inc. v. Surfmet, Inc.,

2002 U.S. Dist. LEXIS 26232 (N.D. Cal. July 3, 2002). ................................................... 11, 16

Microsoft Corp. v. CMOS Techs., 872 F. Supp. 1329 (D.N.J. 1994) .......................... 8, 14, 21, 22

Morton v. Beyer, 822 F.2d 364 (3d Cir.1987). ........................................................................... 26

Opticians Ass’n of Am. v. Indep. Opticians of Am., 920 F.2d 187 (3d Cir. 1990) .......... 5, 8, 27, 28

Pa. Bus. Bank v. Biz Bank Corp., 330 F. Supp. 2d 511, 522 (E.D. Pa. 2004) .............................. 15

Pappan Enters., Inc. v. Hardee’s Food Sys., Inc., 143 F.3d 800 (3d Cir. 1998) .................... 26, 28

Pedi-Care, Inc. v. Pedi-A-Care Nursing Inc., 656 F. Supp. 449 (D.N.J 1987) ..............................5

Pep Boys Manny, Moe & Jack of Ca. v. Goodyear Tire & Rubber Co.,

2002 U.S. Dist. LEXIS 5925, 2002 WL 524001. .................................................................... 15

Platypus Wear, Inc. v. Bad Boy Club, Inc.,

No. 08-02662, 2009 U.S. Dist. LEXIS 60637 (D.N.J. July 15, 2009). .................................... 22

Primepoint, LLC., v. Primepay, Inc., 545 F. Supp. 2d 426, 437 (D.N.J. 2008). .......... 9, 13, 14, 22

Printing Mart-Morristown v. Sharp Elecs. Corp., 116 N.J. 739, 563 A.2d 31 (1989) ................. 23

S & R Corp. v. Jiffy Lube Int'l, Inc., 968 F.2d 371 (3d Cir. 1992) ........................................ 25, 26

Sabinsa Corp. v. Creative Compounds, LLC, 609 F.3d 175, 187 (3d Cir. 2010) ......................... 12

Securacomm Consulting Inc. v. Securacom Inc., 166 F.3d 182 (3d Cir. 1999) ..................... 21, 24

Temple University v. White, 941 F.2d 201 (3d Cir. 1991) .......................................................... 29

TimesMirror Magazines, Inc. v. Las Vegas Sports News, L.L.C.,

212 F.3d 157 (3d Cir. 2000) ............................................................................................. 25, 26

Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc.,

511 F. Supp. 2d 482 (E.D. Pa. 2007) ................................................................................ 13, 14

Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1990 U.S. Dist. LEXIS 2718 ..........9

vi

Zinn v. Seruga, 2009 U.S. Dist. LEXIS 89915. .......................................................................... 23

Statutes

15 U.S.C. § 1114 ................................................................................................................ passim

15 U.S.C. § 1115. .............................................................................................................. 5, 9, 23

15 U.S.C. § 1116. ...................................................................................................................... 19

15. U.S.C. § 1125………………………………...………………………………………………..5

15 U.S.C § 1127. ....................................................................................................................... 19

Treatises

2 J. Thomas McCarthy, Trademarks and Unfair Competition, § 23:20 (4th ed 2011)...................8

2 J. Thomas McCarthy, Trademarks and Unfair Competition, § 30:47 (4th ed 2011)................. 26

Other Authorities

Aswini Anburajan, Breaking Down Oprah’s Numbers, MSNBC, Dec. 7, 2007,

http://firstread.msnbc.msn.com/_news/2007/12/07/4425062-breaking-down-oprahs-numbers

(last visited Jul. 25, 2011). 16

1

PRELIMINARY STATEMENT

Plaintiffs Simone Kelly-Brown and Own Your Power Communications, Inc.

(individually and collectively referred to as “Kelly-Brown”), owner and licensee of the federal

service mark OWN YOUR POWER (Reg. No. 3,434,419 ) (“OYP Trademark”), submit this

Memorandum of Law in support of an application for a preliminary injunction.

Defendants joined forces, conspired and explicitly held themselves out “in Partnership”

(collectively “OYP Partners[hip]” or “Partners[hip]”) (see Exhibit A) to launch a national,

multimedia, cross-promotional campaign that usurped Kelly-Brown’s OYP Trademark, thereby

convincing the public-at-large that Defendants are the originators and the sole source of Kelly-

Brown’s Own Your Power (“Counterfeit Campaign”). This Campaign was designed for the sole

purpose of financial gain for each Partner via solicitation of sponsors, celebrity endorsements,

marketing promotions, prime advertisement placements, and other such beneficial resources.

In publicizing this full-fledged Counterfeit Campaign, the Partnership boldly used a

Counterfeit OYP Trademark prominently on the October 2010 cover of O, The Oprah Magazine,

(“The O Magazine”) a top-rated magazine reaching over 15 million readers. See Exhibit B. This

rare cover feature demonstrates the Partnership’s investment in the Campaign’s success, as

Defendant Oprah Winfrey (“Oprah”), almost never shares that level of prominence. In

furtherance of this pervasive attack against Kelly-Brown, the Partnership re-introduced The O

Magazine’s cover featuring the Counterfeit OYP Trademark on The Oprah Winfrey Show, the

most successful daytime program in television history. This one-of-a-kind debut used its host and

celebrity guest Serena Williams, a world renowned tennis icon, to further endorse the Counterfeit

Campaign and to reach an additional 12 million plus viewers on that day alone. See Exhibit C.

The concurrent use of a popular magazine and television show further publicized the OYP

Partnership as the true source of the OYP Trademark and Services. As if Kelly-Brown had not

2

been attacked enough, nonetheless, the Partnership held a deceptively misleading event under the

Counterfeit OYP Trademark a mere two days before and in the same city as Kelly-Brown’s

annual Own Your Power conference, thereby publicly solidifying itself as the source of OYP

Services. See Exhibit D. The collective and perpetual conduct of the Partnership has devastated

Kelly-Brown. Even at this moment, the Partnership continues its debilitating Counterfeit

Campaign on the official websites of Harpo and Hearst, two of the most influential media

corporations in the world, despite Kelly-Brown’s repeated protests. See Exhibit E.

This intentional, malicious and brazenly unlawful conduct was promulgated by eight

powerful corporate entities and one celebrity of unparalleled power and influence, all with

experience in growing, promoting, and protecting brands. These Defendants include Oprah, an

American television host, media mogul and perhaps the most influential woman in the world; she

declared on the cover of Fortune Magazine, “now I accept that I’m a brand.” See Exhibit F.

Oprah is best known for her Emmy-award winning talk show, The Oprah Winfrey Show that

boasted more than 16 million viewers during its farewell show in 2011. Defendants also include:

a multimedia production conglomerate controlling the entertainment and media interests of

Oprah Winfrey, Harpo, Inc., Harpo Productions, Inc. and its affiliates and/or agents (“Harpo”);

one of the world’s largest, multifaceted communications empires publishing more than 300

magazines and overseeing more than 28 websites and 14 mobile sites and digital magazines,

Hearst Corporation and Hearst Communications, Inc. (“Hearst”); an American multi-national

financial services company, Wells Fargo & Company (“Wells Fargo”); an American-based

retailer specializing in sophisticated women’s apparel with more than 1,150 locations generating

over $69 million annually, Chico’s FAS, Inc. (“Chico’s”); and a high-end skincare company with

products in over 150 countries and territories, Clinique Laboratories, LLC and parent company

3

Estee Lauder Companies, Inc. (“Clinique”). All Defendants work together as OYP Partners. See

Exhibit A.

Given their status, Defendants, well aware of the value of exclusive trademark rights,

have experience with the management and control of brands as well as the know-how to secure

such assets as intellectual property. In fact, each of the Partners has secured numerous federal

trademark registrations, and in paving the way for the debut of OWN, The Oprah Winfrey

Network, LLC (“OWN”), Harpo secured multiple federal trademark registrations for OWN1, thus

showing their knowledge in performing basic trademark searches before launching new brands in

connection with products and services.

However, despite their collective experience, the OYP Partners failed to seek consent or

otherwise arrange to ensure that Kelly-Brown’s exclusive rights were not infringed, even after

being notified of the harm. Instead, the Partners have used their multi-billion dollar media

empires to steamroll over Kelly-Brown without consideration of any kind. As a direct result of

the Partnership’s Counterfeit Campaign, on June 1st of this year, Google’s search engine, perhaps

the most highly celebrated and influential consumer of information in the world, became

convinced that the OYP Partners are the true source of Kelly-Brown’s Services. See Exhibit H.

In stark contrast to both the size and impact of the Defendants, Ms. Kelly-Brown, a small

business owner who has built Own Power Communications, Inc. from the ground up through

more than a decade of hard work, is now seeking the Court’s aid to salvage her livelihood and

business from this onslaught. The OYP Partners have abused their power in pursuit of financial

benefits to which they are not entitled and exhibited clear-cut trademark infringement.

1 Olabrice R. Jackson (“Jackson”), owner of the mark “OWN Onyx Women’s Network” (Reg.

No. 3,212,542); Harpo arranged a transfer to OWN, LLC to avoid infringing Jackson’s exclusive

rights. See Exhibit G.

4

Defendants used the identical letters, words, and order of Kelly-Brown’s OYP Trademark and

caused confusion amongst the public, and as such, Kelly-Brown is likely to succeed on the

merits of this action. To deny preliminary relief under these circumstances will cause Kelly-

Brown to suffer irreparable harm far greater than that of the Defendants, and because the balance

of equities tips in Kelly-Brown’s favor, Kelly-Brown now respectfully requests that this Court

enjoin the Defendants from continuing to operate in blatant disregard of the law.

STATEMENT OF FACTS

In the interest of brevity, please see the Complaint and Certification of Simone Kelly-Brown.

LEGAL ARGUMENT

KELLY-BROWN IS ENTITLED TO A PRELIMINARY INJUNCTION AGAINST

DEFENDANTS’ COUNTERFEITING AND INFRINGEMENT OF THE OWN YOUR

POWER TRADEMARK WHICH IS CONFUSING THE PUBLIC, USURPING KELLY-

BROWN’S EXCLUSIVE RIGHTS AND INTERFERING WITH HER BUSINESS.

The standards for granting a preliminary injunction in the Third Circuit are well

established. In determining whether to award such relief, the Court considers whether: (1) …the

movant has shown a reasonable probability of success on the merits; (2) …the movant will be

irreparably harmed by denial of the relief; (3) …granting preliminary relief will not result in

even greater harm to the nonmoving party; and (4) … granting the preliminary relief will be in

the public interest. ACLU v. Mukasey, 322 F.3d 240, 250 (3rd Cir. 2003) (quoting Allegheny

Energy v. DOE, Inc., 171 F.3d 153, 158 (3rd Cir. 1999) (citing ACLU v. Black Horse Pike Reg’l

Bd. Of Educ., 84 F.3d 1471, 1477 n.2 (3rd Cir. 1996) (en banc))).

5

I. KELLY-BROWN HAS A REASONABLE PROBABILITY OF SUCCESS AS

DEFENDANTS HAVE BLATANTLY COUNTERFEITED AND INFRINGED THE

OYP TRADEMARK AND TORTIOUSLY INTERFERED WITH BUSINESS

PRACTICES.

A. Defendants Have Counterfeited Kelly-Brown’s OYP Trademark in Violation of

the Lanham Act.

A defendant is liable for counterfeiting under the Lanham Act when it is shown that the

defendant (1) infringed a trademark in violation of the Lanham Act, and (2) intentionally used

the registered trademark knowing that it was a counterfeit or was willfully blind to such use. The

Trademark Act of 1946 (“The Lanham Act”), 15 U.S.C. §§ 1114, 1125 (2006); Coach, Inc. v.

Cosmetic House, 2011 U.S. Dist. LEXIS 32924, 8-9 (D.N.J. Mar. 29, 2011) (citing Chanel v.

Gordashevsky, 558 F. Supp. 2d 532, 537 (D.N.J. 2008)).

1. Defendants have infringed Kelly-Brown’s registered Own Your Power

Trademark in violation of The Lanham Act.

To prove a claim of trademark infringement, a plaintiff must establish that (1) the marks

are valid and legally protectable; (2) the marks are owned by the plaintiff; and (3) the

defendant’s use of the mark to identify goods or services is likely to create confusion concerning

the origin of the goods or services. Opticians Ass’n of Am. v. Indep. Opticians of Am., 920 F.2d

187, 192 (3d Cir. 1990) (citing Pedi-Care, Inc. v. Pedi-A-Care Nursing Inc., 656 F. Supp. 449,

453 (D.N.J 1987); Holiday Inns, Inc. v. Trump, 617 F. Supp. 1443, 1464 (D.N.J. 1985)).

a. The OYP Trademark is valid, protectable, and owned by Kelly-

Brown.

Registration of a mark on the principal register of the USPTO constitutes prima facie

evidence of the validity of the registered mark, the registration of the mark, the registrant’s

ownership of the mark, and the registrant’s exclusive right to use the mark in commerce on or in

connection with the goods or services specified in the registration. 15 U.S.C. §1115(a).

6

Kelly-Brown has been using the OYP Trademark in commerce since November 5, 2006,

and was granted registration of OWN YOUR POWER on the USPTO’s principal register on

May 27, 2008. A copy of Kelly-Brown’s registration certificate is attached hereto and made of

record as Exhibit I. Kelly-Brown’s federally registered OWN YOUR POWER mark is prima

facie evidence of the validity and registration of the mark, ownership of the mark, and the

exclusive right to use the mark on or in connection with the services specified in the registration.

Id.2

b. The Defendants’ use of the Own Your Power Trademark caused

confusion.

To prevail on a claim for trademark infringement under the Lanham Act, the owner of a

valid and legally protectable mark must show that a defendant’s use of a similar mark for its

services “causes a likelihood of confusion.” Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700,

708-09 (3d Cir. 2004). The 3rd Circuit has adopted a non-exhaustive list of factors to consider in

evaluating likelihood of confusion, commonly referred to as the “Lapp Factors.” Id. at 709

(citing Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983)).3

Kelly-Brown also relies upon the law of reverse confusion, which was expressly adopted

by the Third Circuit in Fisons Horticulture v. Vigoro Indus., Inc., 30 F.3d 466, 475 (3d Cir.

2 See also Coach, Inc. v. Ocean Point Gifts, 2010 U.S. Dist. LEXIS 59003 (D.N.J. June 14, 2010)

(“The first two elements are satisfied by registration and ownership of the relevant trademarks.”).

3 The Lapp Factors are as follows: (1) the degree of similarity between the marks; (2) the strength

of the owner’s mark; (3) the price and other factors of consumer care in purchase; (4) the length

of time defendants used the mark without actual confusion; (5) the defendant’s intent in adopting

the mark; (6) evidence of actual confusion; (7) whether the services are marketed and advertised

through the same channels of trade and media; (8) the extent to which the targets of the parties’

sales efforts are the same; (9) the relationship of the goods in the minds of consumer; and (10)

other facts suggesting that the consuming public might expect the prior owner to offer the

services of the defendant or expand into the defendant’s market. Id.

7

1994).4 Essentially, reverse confusion occurs when a larger, more powerful company uses the

trademark of a smaller, less powerful senior owner and thereby likely causes confusion as to the

source of the senior user’s services. Commerce Nat'l Ins. Servs. v. Commerce Ins. Agency, Inc.,

214 F.3d 432, 444 (3d Cir. 2000). The large junior user saturates the market with a similar

trademark and overwhelms the senior user. The public then comes to assume the senior user’s

services are really the junior user’s, or that the former has somehow become connected to the

latter. The result is that the senior user loses the value of the trademark – its service identity,

corporate identity, control over its goodwill and reputation, and ability to move into new

markets. Id. (citing Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960, 964 (6th Cir. 1987)).

In fact, reverse confusion can have an even more devastating effect on the senior user of a

trademark where the public may become so confused that they believe the senior user is actually

the infringer. Harlem Wizards Entm’t Basketball, Inc. v. NBA Props., Inc., 952 F. Supp. 1084,

1091-92 (D.N.J. 1997)

As this is a reverse confusion case, certain Lapp factors must be viewed in a different

context than a case of forward confusion. Commerce Nat'l Ins. Servs., 214 F.3d at 444.

Generally, Lapp factors 2, 5, 9, and 10 must be analyzed with consideration for the commercial

strength of the larger, wealthier junior user as related to the smaller senior user.

(1) Similarity Of The Marks

The Third Circuit has held that when the trademark owner and the alleged infringer are in

direct competition, it is rarely necessary to look beyond the mark itself to decide if there has been

4 Echoing the Second Circuit: “The objectives of [the Lanham] Act… are as important in a case

of reverse confusion as in typical trademark infringement….[if not], a larger company could with

impunity infringe the senior mark of a smaller one…” Banff, Ltd. v. Federated Dep’t Stores, Inc.,

841 F.2d 486, 490-91 (2d Cir. 1988).”

8

an infringement. A & H Sportswear v. Victoria’s Secret, 237 F.3d 198, 214 (3d Cir. 2000)

(although the Lapp factors may always be used in the case of both non-competing and competing

services, if such services are directly competing, judges have considered only the similarity of

the marks themselves). Courts have concluded that such circumstances are an “open and shut

case,” and therefore do not require lengthy litigation to determine liability for trademark

infringement. 2 J. Thomas McCarthy, Trademarks and Unfair Competition, § 23:20 (4th ed.

2011). There is no clearer case of consumer confusion than this case where the Defendants,

acting in direct competition with Kelly-Brown, sold Counterfeit services on which Kelly-

Brown’s OYP Trademark appears in its entirety. Under these circumstances, the likelihood of

consumer confusion, mistake or deception is irrefutable. Microsoft Corp. v. CMOS Techs., 872 F.

Supp. 1329, 1340 (D.N.J. 1994); see also Opticians Ass'n of Am., 920 F.2d at 195 (“there is a

great likelihood of confusion when an infringer uses the exact trademark…”); Am. Plan Corp. v.

State Loan & Fin. Corp., 365 F.2d 635, 639 (3d Cir. 1966) (“Where the names are identical…

the names in themselves are evidence of likelihood of confusion.”).

Defendants have used Kelly-Brown’s OYP Trademark in an identical manner consisting

of the same letters, words, and order. Defendants have also used an identical mark for

competing services that are the same or similar to those of Kelly-Brown’s. Kelly-Brown provides

motivational communications services in the areas of self-awareness, self-realization, and

entrepreneurship (“OYP Services” or “Services”). The Defendants’ Counterfeit Campaign

provides motivational communications services in the areas of self-awareness, self-realization,

and entrepreneurship. See Exhibit J.

Because Defendants are using Kelly-Brown’s exact word mark on competing services,

likelihood of confusion is clear, despite the slight variation of the OYP Trademark’s color, and

9

thus under the first Lapp factor, the marks are not only similar but identical. Herbko Int’l, Inc., v.

Kappa Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002) (Crossword puzzle design overlay on

CROSSWORD COMPANION mark did not distinguish the word portion of the mark from

another mark with identical wording).5 As is plainly clear, the Defendants’ use is representative

of the identical wording Courts have found to be confusingly similar and thus infringing. See

Exhibit K. Although this factor may dispositively indicate likelihood of confusion, the

remaining Lapp factors give further credence to the fact that the Defendants have infringed and

Counterfeited the identical wording of Kelly-Brown’s OYP Trademark.

(2) Strength Of The OYP Trademark

To examine the strength of the mark under Lapp, the Court evaluates 1) the mark's

distinctiveness or conceptual strength (the inherent features of the mark) and 2) its commercial

strength (factual evidence of marketplace recognition). Primepoint, LLC., v. Primepay, Inc., 545

F. Supp. 2d 426, 437 (D.N.J. 2008).

A registered mark is presumed to be distinctive and is afforded the utmost protection. 15

U.S.C § 1115(b). Kelly-Brown’s federal registration of the OYP Trademark on the principal

register is conclusive evidence that the mark is presumed distinctive. At a minimum the OYP

Trademark is a suggestive mark as it was registered without the need to demonstrate

5 see also Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1990 U.S. Dist. LEXIS

2718 (citing 2 McCarthy, at note 62, § 23:15 84-87 (2d ed. 1984)) (“If the dominant part of the

composite mark is the word, then the Court must compare the parties’ word marks aside from the

design. If the words used are the same or confusingly similar then confusion may be likely even

if peripheral differences divide the competing marks”)

10

distinctiveness. See Exhibit I. Such an inherently distinctive mark is entitled to protection.6

Thus, the OYP Trademark is conceptually a strong mark.

As this is a case of reverse confusion, the question of commercial strength relies on the

strength of the larger junior user’s mark and the ability to achieve greater commercial strength in

a short period of time. Fisons, 30 F.3d at 478.7 The Defendants’ Counterfeit Campaign exploited

Kelly-Brown’s OYP Trademark: (1) on the Oprah Winfrey Show, (2) in two editions of O The

Oprah Magazine, (3) on the internet, and (4) at a well-publicized celebrity event. See Exhibits

A-E, respectively. This Counterfeit Campaign was so commercially successful that within

approximately one month, the Defendants’ Counterfeit use of the OYP Trademark was

recognized as equal to or more authentic than Kelly-Brown’s use, as ranked by Google’s search

engine – despite the many years that Kelly-Brown spent building search engine visibility. See

Exhibit L. Additionally, a solid majority of public consumers believe that Oprah is the source of

the services offered in connection with Kelly-Brown’s OYP Trademark, a testament to the

Defendants’ commercial strength. See Certification of Patricia Lawrence-Kolaras; Exhibit M.

6 The OYP Trademark has also been used in the provision of self-awareness and motivational

communication services through various venues and mediums for years and has gained a

substantial following. See Cert. of Kelly-Brown. The notoriety of the OYP Trademark is further

evidenced by the expansion of Own Your Power services to include a radio show, lifestyle

center, biz conference, personal coaching, retreats, blog and the upcoming e-magazine. Id.

7 Six of the seven Defendants in this case are multi-million or billion dollar corporate entities,

who among them maintain ownership in 3 television networks, a catalogue of more than 300

magazines around the world, more than 3 dozen weekly newspapers, at least 30 television

studios, a movie production studio, and countless other multimedia outlets, including internet

websites with tens of millions of monthly visits. The seventh Defendant, Oprah Winfrey, is

routinely described as one of the most powerful media personalities in the world, and the final

episode of her nationally televised Oprah Winfrey Show drew 16.4 million viewers.

11

Thus, under this Lapp factor, the OYP Trademark’s conceptual strength and the Defendants’

overwhelming commercial strength weighs heavily in favor of Kelly-Brown.

(3) Price and Consumer Care in Purchase

Consumers are less likely to be confused when they exercise “heightened care in

evaluating the relevant services before making purchasing decisions." Kos Pharms., 369 F.3d at

715. Where both professionals and the general public are relevant consumers, "the standard of

care to be exercised . . . will be equal to that of the least sophisticated consumer in the class." Id.

at 716.

Both Kelly-Brown and the Partners provide low-cost services to the general public,

including the least sophisticated consumers. See Cert. of Kelly-Brown; Exhibits B-E. Kelly-

Brown uses the OYP Trademark in connection with speaking engagements and on the internet

and through traditional broadcast and print media. See Cert. of Kelly-Brown; Exhibit N.

Similarly, the OYP Partners do the same. See Exhibit J. Courts have recognized that consumers

are more likely to be confused online because they exercise less care in scrutinizing the source of

services. 8

Not only do both Kelly-Brown and the Partners engage in extensive internet marketing

of OYP Services, but Google ranked the Partners’ prominently in the top position ahead of

Kelly-Brown, making consumer confusion nearly unavoidable. See Exhibit H. Because Kelly-

Brown and the Partnership target both the least sophisticated consumers, and because of the

potent exacerbating effect of the internet, such consumers are likely to be confused.

8 See Metro Publ'g, Inc. v. Surfmet, Inc., 2002 U.S. Dist. LEXIS 26232 (N.D. Cal. July 3, 2002)

(“The Ninth Circuit has pointed out that use of the web as a marketing channel is "a factor that

courts have consistently recognized as exacerbating the likelihood of confusion."); GoTo.com,

Inc. v. The Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000) (“Navigating amongst websites

involves practically no effort whatsoever….” The Third Circuit concluded that the “reasonably

prudent purchaser will be equal to that of the least sophisticated consumer.”)

12

Even if the Court were to hold that Kelly-Brown and the Partnership provide services

exclusively to a more sophisticated class of consumers, the court should at a minimum find that

this factor does not weigh against Kelly-Brown due to the similarity of services and targeted

consumers, and due to the identical nature of the marks, which in connection with the

exacerbating effect of the internet, will create a likelihood of confusion as to source of origin or

affiliation. See Kos Pharms., 369 F.3d at 717.

(4) Length Of Time Defendants Have Used The Mark Without Actual Confusion

Although the Third Circuit has held that actual confusion is not necessary to demonstrate

likelihood of success, evidence of actual confusion is highly probative of likelihood of

confusion. Sabinsa Corp. v. Creative Compounds, LLC, 609 F.3d 175, 187 (3d Cir. 2010).9 In

the Kos Pharms. case, the plaintiff produced just one certification by a company executive

indicating that during a thirteen (13) month period, only six (6) individuals were actually

confused, although sixty (60) instances were reported. Kos Pharms., 369 F.3d at 720.

Nonetheless, the Third Circuit held that although only six people were actually confused, that

was “more than [sufficient] evidence of actual confusion….” Id.

Here, the Defendants’ use of Kelly-Brown’s OYP Trademark caused confusion among

more than sixty (60) people beginning just days after Defendants launched their Counterfeit

Campaign. See Cert. of Kelly-Brown; Exhibit L; Exhibit M. Similarly as in Kos Pharms., where

the Third Circuit held that a substantially lesser amount of evidence of actual confusion over a

longer period of time justified weighing both Lapp factors (4) and (6) in favor of the plaintiff, the

same consideration should be given in this instance because greater evidence of actual confusion

9 See also Kos Pharms., 369 F.3d at 720. (Because "reliable evidence of actual confusion is

difficult to obtain in [trademark cases], any such evidence is substantial evidence of likelihood of

confusion…")

13

occurred within a shorter period of time. Despite the fact that evidence of actual confusion is

generally rare, such evidence of actual confusion with Kelly-Brown’s OYP Trademark is ten

times that as documented in Kos Pharms., and is therefore "highly probative of the likelihood of

confusion." Kos Pharms., 369 F.3d at 720.

(5) Intent Of The Defendant

Under the law of reverse confusion, the appropriate inquiry is whether the company

conducted an adequate name search for other companies marketing similar services and whether

it followed through with an investigation if such companies were found. Fisons, 30 F.3d at 480.

Even in cases of forward confusion, the inquiry may extend beyond asking whether a defendant

purposely chose its mark to promote confusion and also examines “[t]he adequacy and care with

which a defendant investigates and evaluated its proposed mark[.]" Primepoint, L.L.C., 545 F.

Supp. 2d at 440. (citing Kos. Pharms., 369 F.3d at 720); see also Urban Outfitters, Inc. v. BCBG

Max Azria Group, Inc., 511 F. Supp. 2d 482, 501 (E.D. Pa. 2007) ("evidence of a defendant's

carelessness in evaluating the potential confusion caused by its mark with that of a senior user is

'highly relevant' and will tend to favor a finding of likelihood of confusion").

Had the Partnership merely entered a basic “Google” search for “own your power” prior

to beginning their Counterfeit Campaign, the first page of results would have been dominated by

at least Two (2) prominent references to Kelly-Brown and the website, www.ownyourpower.biz

(“OYP Biz Site”). See Exhibits N and L. The OYP Biz Site contains a multitude of headers,

banners, and advertisements for the OYP Services all of which are clearly branded with the OYP

Trademark. Additionally, a “Basic Word Mark Search” of the USPTO trademark registry, which

is free and completely open to the public, would have returned an exact result for Kelly-Brown’s

OYP Trademark. If the Defendants did not know about Kelly-Brown’s OYP Trademark, they

14

should have. Masters Software Inc. v. Discovery Commc’ns., Inc., No. C10-405RAJ (W.D.Wash.

July 16, 2010) (order granting preliminary injunction); see Brookfield, Commc’ns, Inc. v. W.

Coast Entm’t. Corp., 174 F.3d 1036, 1059 (9th Cir. 1999).

Thus, had the Partnership employed the most basic of due diligence before engaging in a

broad, nationwide multimedia campaign involving a number of prominent corporate brands, at a

minimum the Partnership would have known of Kelly-Brown and the OYP Trademark. The

Partnership did nothing – not even attempt to contact Kelly-Brown – to ensure that the

Partnership’s use of the OYP Trademark would not infringe upon Kelly-Brown’s exclusive

rights just as Harpo had previously done in acquiring OWN from Olabrice R. Jackson.

Therefore, under the reasoning of the Fisons and Primepoint Courts, such a failure shows intent

to confuse.

If the Partnership did not engage in such basic due diligence, then it can be concluded

that the Partnership’s actions in exploiting the OYP Trademark were reckless or at least careless

and as such, under the reasoning outlined by the Urban Outfitters Court, such conduct would

also favor a finding of likelihood of confusion. Thus, either way, under the fifth Lapp factor it is

clearly shown that the Partners intended to infringe Kelly-Brown’s Trademark.

(6) Evidence Of Actual Confusion

Although proof of actual confusion is not necessary, evidence of actual consumer

confusion provides strong support for finding a likelihood of confusion. Microsoft Corp., 872 F.

Supp. at 1340; E. & J. Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp. 457, 465 (N.D.

Cal. 1991).

As a result of Harpo and its Partners’ exploitation of the OYP Trademark, Kelly-Brown

has been contacted by consumers inquiring about Harpo and its services via various channels of

15

communications, including but not limited to e-mails, text messages, direct messages and

mentions on Twitter, phone calls and other such communications. See Cert. of Kelly-Brown.

Additionally, actual confusion is evidenced by the fact that the renowned and universally

celebrated search engine Google has become confused as to the source of the OYP Services as a

result of the OYP Partnership’s activities. See Exhibit H. Consequently, Google, the ultimate

consumer of information in the world, is so confused as to the source of the OYP Services that

the OYP Partnership is now presumed to be the correct source of OYP Services rather than

Kelly-Brown. Thus, under the sixth Lapp factor, clear evidence of actual confusion exists.

(7) Whether The Services Are Marketed Through The Same Channels Of Trade And

Advertised Through The Same Media.

The seventh Lapp factor relates to how likely the buyers and users of each party’s

services are to encounter the services of the other. “To the extent that the parties overlap in their

promotional means, the greater the likelihood of confusion may be.” Pa. Bus. Bank v. Biz Bank

Corp., 330 F. Supp. 2d 511, 522 (E.D. Pa. 2004) (citing Pep Boys Manny, Moe & Jack of Ca. v.

Goodyear Tire & Rubber Co., 2002 U.S. Dist. LEXIS 5925, 2002 WL 524001 at * 1.)

Similar to the parties in Pa. Bus. Bank, Kelly-Brown and the Partnership both utilize the

internet extensively to market and promote their services. Virtually all of Kelly-Brown’s OYP

Services are marketed through the OYP Biz Site and many other services, including access to

audio/video content, are also directly available from that same website. Likewise, the Partnership

has provided at least 75 internet pages of content all operating under the OYP Trademark, has

provided access to Own Your Power audio/video content on those web-pages, and has directed

viewers to the Harpo web-pages to learn about its Own Your Power services in two (2) separate

editions of the O Magazine. See Exhibits J, O, and A. On its website, Harpo claims to have 70

million page-views per month. Additionally, both Kelly-Brown and the Partnership have utilized

16

internet-based social networking sites such as Facebook and Twitter to advertise their Own Your

Power services. See Cert. of Kelly-Brown; Exhibit D. Thus there is significant overlap in the

channels of communication.10

Furthermore, Kelly-Brown and the Partnership market Own Your Power services in a

similar, non-editorial manner through the use of broadcast media. Harpo and Oprah utilize

broadcast and/or cable television to market and provide services, including the September 27,

2010 broadcast of The Oprah Winfrey Show which prominently displayed a Counterfeit of Kelly-

Brown’s OYP Trademark in connection with Oprah’s provision of services. See Exhibit C.

Likewise, Kelly-Brown has utilized television and radio to market and/or broadcast OYP

Services, including the Own Your Power Radio Show. See Exhibit N. Therefore, under the

seventh Lapp factor, Kelly-Brown and the Defendants market the same services though the same

trade channels.

(8) The Extent To Which The Targets Of The Parties’ Sales Efforts Are The Same

Where parties target sales efforts to the same consumers, there is a stronger likelihood of

confusion. Lapp, 721 F.2d at 463-464. In this case, Kelly-Brown and the OYP Partnership have

targeted sales efforts primarily at women. See Cert. of Kelly-Brown; Exhibit P; Aswini

Anburajan, Breaking Down Oprah’s Numbers, MSNBC, Dec. 7, 2007,

http://firstread.msnbc.msn.com/ _news/2007/12/07/4425062-breaking-down-oprahs-numbers

(last visited Jul. 25, 2011). Thus, because both Kelly-Brown and the OYP Partnership primarily

10 Pa. Bus. Bank, 330 F. Supp. 2d at 522 (when both parties are using the mark in the same

channel of communication – the internet, at least one marketing channel overlaps, and therefore

weighs in favor of finding a likelihood of confusion). As noted in Plaintiff’s argument on Lapp

factor (3), the fact that both parties are also using the internet as a marketing channel also

exacerbates the likelihood of confusion. Metro Publ'g, Inc., 2002 U.S. Dist. LEXIS 26232.

17

target the same consumers, a finding of likelihood of confusion under the eighth Lapp factor is

clear.

(9) The Relationship Of The Services In The Mind Of The Consumer

The ninth Lapp factor focuses on the nature of the services themselves, asking whether it

would be reasonable for consumers to associate or see them as related. A & H Sportswear, 237

F.3d at 215. The question is not whether it is possible to distinguish between the services but

whether, and to what extent, the services seem related, "whether because of [their] near-identity,

. . . or similarity of function, or other factors." Id. at 215; see also Fisons, 30 F.3d at 481.

Additionally, in a case of reverse confusion, the court may also consider facts suggesting that

consumers may believe the same source offers all of the services in question. Fisons, 30 F.3d at

480-481.11

As indicated herein, Kelly-Brown uses the OYP Trademark in connection with speaking

engagements, advocacy and informational content both off-line and on-line in the areas of self-

awareness and motivational communication services. The OYP Partnership has made

unauthorized use of Kelly-Brown’s mark in these same service areas, as an indicia of source,

through each of their infringing activities. See Exhibit J; see also Exhibits A, C, and D. The

nearly identical nature of the services being offered by both parties has and will continue to

cause consumers to assume an erroneous affiliation, connection, or association between Kelly-

Brown and the OYP Partnership. Thus, the undeniable relatedness of the services provided by

11 Courts may consider here "whether buyers and users of each parties' [services] are likely to

encounter the [services] of the other, creating an assumption of common source[,] affiliation or

sponsorship." Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 286 (3d

Cir. 2001).

18

both parties under confusingly similar marks compounds the likelihood that the Defendants use

will confuse the public.

(10) Other Facts Suggesting The Public May Expect The Defendants To Provide

Kelly-Brown’s Services

In assessing this factor, courts may look at any other circumstances in determining

whether consumers may reasonably expect that the Plaintiff will offer services similar to the

Defendants. Lapp, 721 F.2d at 464 (close relationship between [services] that may be used

together supports finding that "even sophisticated customers . . . would find it natural or likely"

that plaintiff might offer [service] similar to defendant's). Under the law of reverse confusion, the

court may also consider facts suggesting that consumers may expect the Defendant to enter into

the Plaintiff’s market or begin to provide the Plaintiff’s services. Fisons, 30 F.3d at 480-481.

In the case now before the Court, the nature of the Own Your Power services being

offered by both Kelly-Brown and the Partnership is that of motivational speaking and

communications focusing on self-awareness and self-realization. See Exhibits T, I, and J. Merely

looking at the claims made in connection with the services provided by each party demonstrates

that a consumer could easily believe that one party would likely provide the services of the other,

particularly when the services are marketed in the same manner. See Exhibits J and T. In fact, a

solid majority of public responses attributed Kelly-Brown’s concept of helping one “attain

anything they want in life” to Oprah. See Cert. of Lawrence-Kolaras. This is conclusive evidence

of the fact that consumers are likely to believe the OYP Partnership offers Kelly-Brown’s

Services.

All Lapp Factors Weigh In Favor Of Likelihood Of Confusion

In the words of McCarthy, the case now before the Court is an “open and shut” example

of trademark infringement, which should not require litigation to determine liability. Not only is

19

this a case where the Defendants have unrepentantly utilized an identical mark for the same

services, in essence daring the rightful owner of the mark to stop them from infringing, but every

single Lapp factor clearly shows a likelihood of confusion. Even after the Defendants were

notified by the rightful owner of the OYP Trademark that they were infringing exclusive rights,

they continued to infringe, and in a show of unbelievable audacity, threatened financial harm

upon Kelly-Brown if she tried to stop them. See Exhibit Q.

The OYP Trademark, owned exclusively by Kelly-Brown, is valid and legally

protectable. Further, evidence of likelihood of confusion as well as actual confusion as a result of

the Defendants’ actions has been clearly demonstrated. Thus, the Defendants are infringing

Kelly-Brown’s OYP Trademark and the Court should recognize a likelihood of success on the

merits for trademark infringement.

2. Defendants have intentionally used the registered trademark knowing that

it was a counterfeit.

In addition to the infringement of Kelly-Brown’s OYP Trademark, Defendants

counterfeited the OYP Trademark by intentionally using an identical mark in connection with the

same services.

a. The Defendants’ mark is a counterfeit of the OYP Trademark.

The Lanham Act defines a counterfeit mark as a spurious mark which is identical with, or

substantially indistinguishable from, a mark registered on the principal register in the USPTO for

the same services sold, offered for sale, or distributed and that is in use, whether or not the

person against whom relief is sought knew that such mark was so registered.” 15 U.S.C §1127;

15 U.S.C. §1116(d)(1)(B).

As demonstrated in the first Lapp factor, Defendants have used a mark that is identical in

letters, words, and order to Kelly-Brown’s OYP Trademark, and because words are the dominant

20

feature of both marks, the marks cannot be distinguished. Further, the Defendants have used a

Counterfeit mark in connection with the same motivational speaking and self-empowerment

services, including seminars and workshops, which promote self and personal awareness that

Kelly-Brown offers in connection with the OYP Trademark. See Exhibits A-D, J.

Defendants, during its September 16, 2010 event, featured a panel of noted celebrities

including fashion designer Vera Wang, and music producer Bob Erzin, and designed a

Counterfeit seminar and workshop to inform, educate, and engage discussion about individuals

and power (“OYP Event”). See Exhibit D. On page 172 of The O Magazine, the OYP Partners

explicitly encouraged those who “Want to learn more about power? What is it, who has it and

how to get it?” to go to Defendants’ official website to view audio/video clips from the OYP

Event. See Exhibit A. Therefore, because Defendants’ used a spurious mark that is identical in

letters, words and order, such exactness makes it substantially indistinguishable from Kelly-

Brown’s OYP Trademark; this Counterfeit mark was offered in connection with the same

services as Kelly-Brown’s OYP Trademark, thus evidences that Defendants have created and

used a Counterfeit mark.

Furthermore, Defendants’ September 27, 2010 episode of The Oprah Winfrey Show was

also a Counterfeit seminar and workshop. On the September 27, 2010 episode of The Oprah

Winfrey Show, Defendant, Oprah Winfrey held up The O Magazine prominently featuring the

Counterfeit OYP Trademark, pointed to it emphatically while advocating to tennis pro, Serena

Williams the importance of “Own Your Power.” Serena Williams then exclaimed “I need that,”

while gesturing for The O Magazine from Oprah. See Exhibit C; Exhibit S. There could be no

more blatant message to the millions of fans of both Oprah Winfrey and Serena Williams that

they needed that particular O, Magazine featuring a Counterfeit of the OYP Trademark to learn

21

more. Defendant, in showing the educational value of its televised seminars and workshops,

announced to millions of viewers that, The Oprah Winfrey Show, was the “world’s biggest

classroom.” (Winfrey, Oprah, The Oprah Winfrey Show, Farewell episode, May 26, 2011). This

alone supports Defendants decision to use the September 27, 2010 one of a kind episode, in

furtherance of its Counterfeit Campaign and used the same letters, words and order identical to

and substantially indistinguishable from the OYP Trademark in connection with OYP Services.

This sort of conduct further solidifies that Defendants, without a doubt, used a Counterfeit mark.

Additionally, Defendants’ official website continues to function as a one-stop-shop for

Counterfeit OYP Services. See Exhibits A, E, J, O. The Defendants’ continued use of the OYP

Counterfeit marks on its official website, long after receiving notice of the infringement, proves

that the Defendants have no intention of stopping, and nothing short of judicial intervention will

protect Kelly-Brown’s exclusive rights. Even more so, throughout the course of the Partners’

Counterfeit Campaign, the Partners have collectively Counterfeited Kelly-Brown’s OYP

Trademark on the cover of The O Magazine, on the televised Oprah Winfrey Show, as the focus

of its OYP Event, and continue to be displayed on its official websites - all the while,

Counterfeiting OYP Services in connection therewith.

b. The Defendants have intended to counterfeit the OYP Trademark.

Although a finding of “knowing” counterfeiting is sufficient to sustain an award for

treble damages, “willful blindness” can also support such an award. Microsoft Corp., 872 F.

Supp. at 1340. The Third Circuit declared that trademark infringement will be considered

"willful" if it "involves intent to infringe or a deliberate disregard of a mark holder's rights." Id.

(citing Securacomm Consulting Inc. v. Securacom Inc., 166 F.3d 182, 187 (3d Cir. 1999)). Intent

to counterfeit can be inferred from continued use after notice is given. Coach, Inc. v. Ocean

22

Point Gifts, 2010 U.S. Dist. LEXIS 59003 (D.N.J. June 14 2010) (citing Platypus Wear, Inc. v.

Bad Boy Club, Inc., No. 08-02662, 2009 U.S. Dist. LEXIS 60637 (D.N.J. July 15, 2009).

There is no question that Defendants have continued to use the Counterfeit mark after

receiving notice of the infringement. See Exhibits R, O and J. On March 22, 2011 Kelly-Brown

formally demanded Defendants to cease and desist use of the OYP Trademark. See Exhibit R.

Defendants acknowledged receipt of such notice by signing for the certified mail receipt attached

to the notice (see Exhibit Q). Yet today, Defendants continue to use a Counterfeit OYP

Trademark. Thus under the reasoning of the Coach and Platypus Wear Courts, Defendants’

conduct in Counterfeiting the OYP Trademark is intentional. At a minimum, the Defendants

were willfully blind to Kelly-Brown’s exclusive rights, as demonstrated in the fifth Lapp factor

above. The Defendants conducted due diligence in securing the OWN trademark before

launching a campaign in furtherance of the OWN Network, shows that the Defendants has

conducted such due diligence prior to launching a significant multimedia campaign – and in the

instance of the OYP Trademark, Defendants acted without regard for the obligation to do so.

Thus, under the reasoning of the Microsoft Corp. Court, Defendants deliberate disregard of

Kelly-Brown’s exclusive rights is evidence that the Defendants’ Counterfeiting actions were

intentional. Moreover, even if the Defendants somehow diverged from due diligence practices in

this particular instance, and yet recklessly proceeded with such a Campaign, Counterfeiting

conduct of the sort is, nonetheless, considered intentional under the reasoning of Primepoint,

L.L.C., 545 F. Supp. 2d at 440.

In light of the foregoing, Kelly-Brown has met the burden of establishing that the

Defendants’ intentionally used the OYP Trademark while knowing it was a Counterfeit, or at the

least acted with a willful disregard for Kelly-Brown’s exclusive rights, and used OYP Services in

23

connection therewith. As such, Kelly-Brown has demonstrated likelihood of success on the

merits as to both trademark infringement and counterfeiting under the Lanham Act.

B. Defendants Have Tortiously Interfered with Kelly-Brown’s Prospective Business

Advantage.

To succeed on a claim for tortious interference with a prospective business advantage,

generally a plaintiff must show “a prospective economic relationship from which the plaintiff has

a reasonable expectation of gain; intentional and unjustifiable interference with that expectation,

and a causative relationship between the interference and the loss of the prospective gain.”

Printing Mart-Morristown v. Sharp Elecs. Corp., 116 N.J. 739 (1989).

In the Third Circuit, a defendant can be liable for tortious interference solely by

infringing a plaintiff’s exclusive intellectual property rights. Zinn v. Seluga, 2009 U.S. Dist.

LEXIS 89915. This holds true particularly when the infringement is that of a registered

trademark. Id. at 95-97. Under these circumstances, the plaintiff must show: (1) reasonable belief

that the exclusive right to utilize the trademark in question would cause customers to buy the

trademarked services from the plaintiff; (2) the defendant intentionally and inappropriately

infringed upon and used the trademark; and (3) the defendant’s activities caused economic harm

to the plaintiff. Id. Additionally, the applicable standard must be flexible and must focus on a

defendant's actions in the context of the case presented. Printing Mart-Morristown, 116 N.J. at

757.

1. Kelly-Brown reasonably believed that the exclusive ownership of the

OYP Trademark would lead consumers to seek OYP Services from her.

Like the ARTOFEX mark in Zinn, the OYP Trademark is valid, legally protectable, and

registered on the principal register of the USPTO. Such registration is prima facie evidence of

Kelly-Brown’s ownership of the mark and the exclusive right to use. See 15 U.S.C. § 1115(a).

24

Kelly-Brown, for many years, exclusively used and owned the OYP Trademark in connection

with OYP Services. As an owner would, Kelly-Brown reasonably believed the OYP Trademark

would lead to purchases of the OYP Services. Thus, similar to the plaintiff in Zinn, Kelly-Brown

reasonably believed that consumers would buy her services.

2. The Defendants intentionally and inappropriately infringed the OYP

Trademark.

Registration of the OYP Trademark also provides Defendants notice of Kelly-Brown’s

exclusive rights. Kelly-Brown is the registered owner of the OYP Trademark as listed in the

principal register of the USPTO; therefore, the availability of the USPTO records provided

notice to the Defendants of her exclusive rights. In the past, the Defendants have checked the

USPTO records to avoid infringement (see fn. 1, supra), so it is clear that the Defendants failed

to do so in this instance. Defendants either knew of or deliberately disregarded Kelly-Brown’s

exclusive rights, and thus intended to infringe and Counterfeit the OYP Trademark. See

Securacomm Consulting Inc., 166 F.3d at 187.

Furthermore, after Defendants have been formally notified of their infringement, they

nonetheless continued the Campaign via the internet while infringing the OYP Trademark. The

Defendants even threatened Kelly-Brown with financial harm and business obstruction via

cancellation of the OYP Trademark if she attempted to stop the infringement. See Exhibit Q. As

the Defendants are well aware, seeking cancellation of the OYP Trademark would completely

destroy Kelly-Brown’s ability to earn a living.

Additionally, the Defendants inappropriately infringed Kelly-Brown’s OYP Trademark

by using identical words, letters, and order of the OYP Trademark in connection with identical

Own Your Power services. More specifically, by hosting an OYP Event just two days before

Kelly-Brown’s annual Own Your Power conference, in the exact same city and providing the

25

same services under the infringed OYP Trademark, the Defendants unlawfully interfered with

Kelly-Brown’s business advantage causing Kelly-Brown’s participation in recent annual events

to be lower than years prior. See Cert. of Kelly-Brown. Subsequently, the Defendants continue

to invite the public to revisit the OYP Event via its official website. Thus, the Defendants have

intentionally and inappropriately infringed the OYP Trademark and are still doing so today.

3. The Defendants’ infringing actions caused economic harm to Kelly-

Brown.

The Defendants’ infringing actions have caused Kelly-Brown to suffer economic harm by

(1) loss of control of the OYP Trademark; and (2) a dramatic decline in interest and participation

in the annual Own Your Power conference. See Cert. of Kelly-Brown. Such results of trademark

infringement constitute irreparable injury, as a matter of law in the Third Circuit. S & R Corp. v.

Jiffy Lube Int'l, Inc., 968 F.2d 371, 378 (3d Cir. 1992); see also TimesMirror Magazines, Inc. v.

Las Vegas Sports News, L.L.C., 212 F.3d 157, 169 (3d Cir. 2000). Irreparable injury of this sort

constitutes economic harm to Kelly-Brown’s business advantage. Therefore, Defendants’

infringing actions have caused Kelly-Brown economic harm.

The Defendants, in launching the national, multi-million dollar, cross-promotional

Counterfeit Campaign that usurped Kelly-Brown’s OYP Trademark and convinced the public-at-

large within days that the Defendants were the originators and the sole source of OYP Services,

intentionally, inappropriately, and unlawfully infringed Kelly-Brown’s OYP Trademark resulting

in irreparable injury as a matter of law. Irreparable injury of this sort constitutes tortious

interference with a business advantage. Therefore, likelihood of success on the merits is clear.

26

II. KELLY-BROWN WILL BE IRREPARABLY HARMED BY DENIAL OF THE

INJUNCTION.

Irreparable harm "must be of a peculiar nature, so that compensation in money alone

cannot atone for it." Morton v. Beyer, 822 F.2d 364, 372 (3d Cir.1987). Grounds for finding

irreparable injury include loss of control of reputation, loss of trade, and loss of goodwill. 2

McCarthy, at § 30:47. In the Third Circuit, it has been established that trademark infringement

amounts to irreparable injury as a matter of law. Kos Pharms., 369 F. 3d at 726 (citing S & R

Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 378 (3d Cir. 1992)).12

Kelly-Brown has conclusively demonstrated likelihood of confusion caused by the

Defendants’ infringement and Counterfeiting of the OYP Trademark, and therefore this Court

should also conclude that she has also demonstrated irreparable harm. The Defendants infringed

and Counterfeited Kelly-Brown’s OYP Trademark; the continuance of such conduct shows the

ongoing infringement of Kelly-Brown’s exclusive rights, thus heightening the irreparable nature

of the inflicted harm. The Defendants’ capability to persuade, confuse and influence the

consuming public is unmatched, as collectively, the Defendants control production studios,

newspapers, websites, dozens of television stations, and hundreds of magazines. Given such

collective power, if Defendants are allowed to continue, the potential harm to Kelly-Brown will

be incalculable.

Similarly, the Defendants tortious interference with Kelly-Brown’s business advantage

through the ongoing infringement and the usurpation of the Own Your Power annual conference

12 see also Times Mirror Magazines, 212 F.3d at 169 (“potential damage to… reputation or

goodwill or likely confusion between parties’ marks” is irreparable injury); Pappan Enters., Inc.

v. Hardee’s Food Sys., Inc., 143 F.3d 800, 805 (3d Cir. 1998) (“Once the likelihood of confusion

caused by trademark infringement has been established, the inescapable conclusion is that there

was also irreparable injury.”)

27

constitute even further irreparable harm to Kelly-Brown. As a result of the Defendants’ actions,

Kelly-Brown’s established business advantage will continue to be diminished as the Defendants’

Counterfeit Campaign continues to eliminate Kelly-Brown’s customer base.

In sum, Kelly-Brown’s OYP Trademark has been infringed and Counterfeited in a

pervasive manner by the Defendants who have caused a loss of control, reputation, and trade in

relation to the OYP Trademark. Therefore, Kelly-Brown is already irreparably harmed.

III. GRANTING PRELIMINARY RELIEF WILL NOT RESULT IN EVEN

GREATER HARM TO DEFENDANTS.

In deciding whether injunctive relief is appropriate, the Court must balance the hardships

to the respective parties. To weigh in favor of the Defendants, the Defendants’ harm must: (1) be

irreparable in nature, and if so, (2) greater than Kelly-Brown’s. Kos Pharms, 369 F. 3d at 727.

Granting the injunction in favor of Kelly-Brown will not irreparably harm the Defendants

because the Defendants have brought about the circumstances under which injunctive relief

should be granted. The Defendants, in entering into a field already occupied by Kelly-Brown and

using a Counterfeit trademark, are responsible for the resulting consequences. Opticians, 920

F.2d at 197 (citing Ideal Indus., Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1026 (7th Cir.

1979) (“Having adopted [a confusing trademark, defendant] cannot now complain that having to

mend its ways will be too expensive.”)) Furthermore, Defendants’ potential injury to goodwill

can be discounted “by the fact that the defendant brought the injury upon itself.” Kos Pharms.,

369 F.3d at 728.

Second, granting Kelly-Brown’s injunction merely requires the Defendants to end their

web-based infringement, and be ordered not to engage in any future OYP Event(s), Campaigns,

or other like services infringing or interfering with Kelly-Brown’s exclusive rights. As all of the

Defendants are multimillion dollar entities, Defendants, at most, will suffer negligible financial

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costs in complying with the order without interrupting day-to-day business operations. Such

nominal costs do not constitute irreparable harm as even “significant financial injuries” do not

amount to irreparable harm. Pappan, 143 F.3d at 805-06.

Lastly, the goal of the preliminary injunction is to maintain the status quo, defined as “the

last peaceable, non-contested status of the parties.” Kos Pharms., 369 F.3d at 729. Kelly-Brown

and Defendants’ last peaceable, non-contested status was when Kelly-Brown controlled the

exclusivity of the OYP Trademark and the Defendants were not infringing Kelly-Brown’s

exclusive rights. Thus, the Defendants would not be irreparably harmed, and even if there was

such harm, the balance would nonetheless weigh heavily in favor of Kelly-Brown.

IV. GRANTING THE PRELIMINARY RELIEF WILL BE IN THE PUBLIC

INTEREST.

Under the Lanham Act, the most basic public interest at stake is the prevention of

confusion, particularly as it affects the public interest in truth and accuracy. Id. at 730. A

likelihood of confusion is created by the use of two confusingly marks, and if such use is

continued, the public interest would be damaged. Id. However, a prohibition upon Defendants’

use of the infringing mark would eliminate that confusion. Id., citing Opticians, 920 F.2d at

198.13

Defendants’ use of the Counterfeit mark is confusingly similar to Kelly-Brown’s OYP

Trademark, and the continuation thereof warrants an injunction to protect the public from such

confusion. Finally, as Kelly-Brown has demonstrated both likelihood of success on the merits

13 See also Am. Tel. & Tel. Co. v. Winback & Conserve Program, Inc., 42 F.3d 1421, 1427 n.8

(3d Cir. 1994) (“As a practical matter, if a plaintiff demonstrates both a likelihood of success on

the merits and irreparable injury, it almost always will be the case that the public interest will

favor the plaintiff.”)

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and irreparable injury, and as there are no exceptional circumstances which should cause the

Court to rule otherwise, the grant of such an injunction is in the public’s best interest.

V. THE BOND REQUIREMENT SHOULD BE WAIVED.

While Rule 65(c) of the Federal Rules of Civil Procedure generally requires that an

applicant for preliminary injunction post a security bond, the court has acknowledged, on several

occasions, that there are some instances in which this strict reading of the rule would be

inappropriate. See Temple University v. White, 941 F.2d 201, 219 (3d Cir. 1991); Fed. R. Civ. P.

65. In determining whether to waive a bond, the Court may balance a number of factors,

including: the hardship a bond requirement would place on the plaintiff, the hardship to the

enjoined party if no bond exists, and whether plaintiff is enforcing a significant right or public

interest. Id. (Bond waiver affirmed where plaintiff faced financial collapse if one were to be

imposed, defendant faced “virtually no risk” without one, and plaintiff enforcing rights under

Medicaid).

The hardship Kelly-Brown stands to face if a bond is required would be not only

substantial, but devastating. In stark contrast, Defendants face virtually no risk and stand to

suffer no significant monetary harm should the Court waive the requirement, particularly

considering that the Defendants could have easily avoided the instant action had they conducted

a mere cursory search, as Defendants have done in the past. Kelly-Brown seeks the enforcement

of a constitutionally-protected intellectual property interest – a significant right – and the

protection of the public right to truth and accuracy. Causing Kelly-Brown to bleed her financial

resources even further in order to halt the unlawful conduct of Defendants, who have nearly

destroyed her livelihood and business already, would be inappropriate. It is within the interest of

justice to waive the security bond here.

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CONCLUSION

For the foregoing reasons, Kelly-Brown respectfully requests that the Court grant the

preliminary injunction.

Respectfully submitted,

The PLK Law Group, P.C.

Dated: Hillsborough, New Jersey

August 3, 2011

By:/s/ Patricia Lawrence-Kolaras

Patricia Lawrence-Kolaras, Esq.

284 U.S. Route 206, Bldg. E, Ste.10

Hillsborough, NJ 08844

Attorneys for Plaintiffs