Case 4:15-cv-40012 Document 1 Filed 01/20/15 Page 1 of 10

UNITED STATES DISTRICT COURT

FOR THE DISTRICT COURT OF MASSACHUSETTS

SMITH & JONES ADVERTISING, INC.,

Plaintiff
V.

CIVIL ACTION NO.: 4:15-CV-40012

THE IDEA AGENCY, LLC,

Defendant

COMPLAINT AND DEMAND FOR TRIAL BY JURY

Plaintiff Smith & Jones Advertising, Inc. (hereinafter Smith & Jones or Plaintiff), by
and through its undersigned counsel, for its complaint against Defendant, The Idea Agency,
LLC (hereinafter Idea Agency or Defendant), states as follows:
1.

This is an action for trademark infringement under the Lanham Act,

15 U.S.C. 1114(a), unfair competition, passing off, and false designation of origin under the
Lanham Act, 15 U.S.C. 1125(a), and common law trademark infringement, arising from
Defendants unauthorized use of Plaintiffs federally registered trademark IDEA AGENCY, for
advertising services; branding services, namely consulting, development, management and
marketing of brands for businesses and/or individuals.
Parties
2.

Smith & Jones is a Corporation duly organized under the laws of the

Commonwealth of Massachusetts with primary offices located at 76 Main Street, Sturbridge,

Massachusetts 01566.

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3.

Upon information and belief, Defendant Idea Agency is a limited liability

corporation organized under the laws of the state of New York, with a principal place of business
at 18 Myrtle Avenue, Troy, New York 12280. Upon information and belief, Idea Agencys only
member is Charles Breiner. Mr. Breiner incorporated as THE IDEA AGENCY in 2012 as a
New York LLC while working for Smith & Jones in Massachusetts.
Jurisdiction of Venue
4.

This Court has subject matter jurisdiction over this action pursuant to the Lanham

Act, 15 U.S.C. 1121, and Title 28 of the United States Code, 28 U.S.C. 1331, 1338(a) and (b)
and 1367. The amount in controversy exceeds $75,000. Therefore, this Court also has
jurisdiction under 28 U.S.C. 1332.
5.

Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and (c).

6.

This Court has personal jurisdiction over Defendant pursuant to the Massachusetts

Long-Arm Statute, Mass. Gen Laws. ch. 223A, 3, and under federal due process principles.

Factual Allegations
7.

Smith & Jones is an advertising agency that provides all aspects of advertising

services, branding services, and management and marketing of brands for its customers.
8.

Smith & Jones has one primary office, located in Sturbridge, Massachusetts.

9.

In August 2010, Smith & Jones began marketing its services under the trademark

IDEA AGENCY.

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10.

Smith & Jones owns U.S. Trademark Registration No. 4,636,937 for the mark

IDEA AGENCY for advertising services; branding services, namely consulting, development,
management and marketing of brands for businesses and/or individuals in International Class 35.
A copy of the Certificate of Registration is attached as Exhibit A. The Certificate of
Registration is valid and subsisting, and Smith & Jones owns record title to the IDEA
AGENCY mark.
11.

The IDEA AGENCY Certificate of Registration is prima facie evidence of the

validity of the IDEA AGENCY trademark, Smith & Jones ownership of the registered
trademark, and Smith & Jones exclusive right to use the registered trademark in connection with
the services specified in the certificate of registration under 15 U.S.C. 1115(a), as well as
constructive notice of Smith & Jones claim of ownership under 15 U.S.C. 1072.
12.

As a result of Smith & Jones use of the IDEA AGENCY mark since 2010, and

through extensive advertising and promotional efforts, the IDEA AGENCY trademark has
become recognized as identifying the services of Smith & Jones, and Smith & Jones has built up
substantial good will in the IDEA AGENCY mark.
13.

In early 2011, Smith & Jones began discussions with Mr. Breiner about a business

development position with Smith & Jones. In June of 2011 Mr. Breiner through his company
Virus Communications Group, became a contractor to Smith & Jones. As a contractor, Mr.
Breiner had access to Smith & Jones marketing materials owned by Smith & Jones, and knew of
Plaintiffs use of the trademark IDEA AGENCY.
14.

Charles Breiner, who upon information and belief is the only member of The Idea

Agency, began using The IDEA AGENCY name in October 2012 according to the New York
Secretary of States Office. (A copy of the New York Secretary of States website is attached as
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Exhibit B). In October of 2012, Mr. Breiner was still working for Smith & Jones. At no time
did Mr. Breiner notify Smith & Jones of his unauthorized use of the Plaintiffs trademark IDEA
AGENCY.
15.

Defendant Idea Agency is advertising and doing business under the name, The

Idea Agency, LLC. A screenshot of Defendants website www.chuckbreiner.com showing use

of the IDEA agency is attached as Exhibit C.
16.

Defendant is offering identical and related services as Plaintiff in an identical

commercial field to identical customers, using the identical words idea agency, that is
confusingly similar to Smith & Jones registered mark IDEA AGENCY.
17.

Defendants use of IDEA agency in conjunction with advertising and selling

advertising services, branding services, namely, consulting, development, management and

marketing of brands for businesses and/or individuals (hereinafter the Defendants Services) is
causing and will continue to cause confusion in the marketplace between the sources of the
competing services provided by Idea Agency and Smith & Jones, such that customers are likely
to be mistakenly led to believe the Defendants Services are produced or sponsored by Smith &
Jones.
18.

Upon information and belief, the Defendants Services promoted and sold by

Defendant under the name Idea Agency is actually causing customers to be confused as to the
origin of the services.
19.

Defendant had and has actual knowledge of Smith & Jones trademark rights in

the IDEA AGENCY brand.

20.

Despite having actual knowledge of Smith & Jones trademark rights, Defendant

began and continues to market its infringing services under the IDEA agency name.
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21.

Defendants infringement of Smith & Jones IDEA AGENCY trademark is

willful, deliberate, fraudulent and intentional.

22.

Defendant fraudulently and intentionally copied Smith & Jones IDEA

AGENCY trademark in an effort to deceive the consuming public and to benefit from the
goodwill associated with Smith & Jones services.
Count I
(Trademark Infringement Lanham Act, 15 U.S.C. 1114(a))
23.

Plaintiff Smith & Jones repeats and realleges all paragraphs of this Complaint as

though fully set forth herein.

24.

Smith & Jones is the owner of the trademark IDEA AGENCY, Trademark

Registration No. 4,636,937 which is valid and subsisting.

25.

Defendant Idea Agencys aforementioned acts in using the words IDEA agency

on its website promoting Defendants Services constitute trademark infringement in violation of

the Lanham Act, 15 U.S.C. 1114(a).
26.

Such acts by the Defendant are without authority or permission of Smith & Jones

and are likely to cause confusion, mistake or to deceive as to the source of origin of such
services, and are believed to already have caused actual confusion in the marketplace.
27.

As a direct result of Defendants infringement of Smith & Jones trademark

rights, Smith & Jones has suffered, and will continue to suffer, actual monetary damages in an
amount to be established at trial.
28.

The actions of the Defendant have and will continue to cause irreparable harm to

Smith & Jones, including but not limited to, irreparable harm to Smith & Jones goodwill
associated with its trademark and reputation, for which there is no adequate remedy at law.
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Count II
(False Designation -- Lanham Trademark Act, 15 U.S.C. 1125(a))
29.

Plaintiff Smith & Jones repeats and realleges all paragraphs of this Complaint as

though fully set forth herein.

30.

Smith & Jones is the owner of the trademark IDEA AGENCY, Trademark

Registration No. 4,636,937 which is valid and subsisting.

31.

Defendant Idea Agency has, on or in connection with its services, used in

commerce and continues to use in commerce, Plaintiffs IDEA AGENCY mark.

32.

Such use is without permission or authority of Smith & Jones and is likely to

cause confusion, to cause mistake, and to deceive as to the affiliation, connection, or association
of Defendant with Plaintiff, and as to the origin, sponsorship, or approval of Defendants
Services, by Smith & Jones.
33.

Defendants violation of Smith & Jones rights in the IDEA AGENCY mark is

knowing, willful, deliberate, fraudulent, and intentional, and was made with the knowledge that
such violation would damage Smith & Jones and its trademark.
34.

As a direct result of Defendants wrongful conduct, as aforesaid, Smith & Jones

has suffered, and will continue to suffer, actual monetary damages in an amount to be established
at trial.
35.

As a direct result of Defendants violations, as aforesaid, Smith & Jones has

suffered and will continue to suffer irreparable harm, including but not limited to, irreparable
harm to Smith & Jones goodwill associated with its trademark and reputation, for which there is
no adequate remedy at law.

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36.

Defendant is liable for false designation pursuant to Sec. 43 of the Lanham Act,

15 U.S.C. 1125.
Count III
(Unfair Competition -- Lanham Trademark Act, 15 U.S.C. 1125(a))
37.

Plaintiff Smith & Jones repeats and realleges all paragraphs of this Complaint as

though fully set forth herein.

38.

Smith & Jones is the owner of the trademark IDEA AGENCY, Trademark

Registration No. 3,636,937 which is valid and subsisting.

39.

Defendant Idea Agency has, on or in connection with Defendants Services used

in commerce and continues to use in commerce, Plaintiffs IDEA AGENCY mark.

40.

Such use is without permission or authority of Smith & Jones and is likely to

cause confusion, to cause mistake, and to deceive as to the affiliation, connection, or association
of Defendant with Plaintiff, and as to the origin, sponsorship, or approval of Defendants Goods,
by Smith & Jones.
41.

Defendants violation of Smith & Jones rights in the IDEA AGENCY mark is

knowing, willful, deliberate, fraudulent, and intentional, and was made with the knowledge that
such violation would damage Smith & Jones and its trademark.
42.

As a direct result of Defendants wrongful conduct, as aforesaid, Smith & Jones

has suffered, and will continue to suffer, actual monetary damages in an amount to be established
at trial.

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43.

As a direct result of Defendants violations, as aforesaid, Smith & Jones has

suffered and will continue to suffer irreparable harm, including but not limited to, irreparable
harm to Smith & Jones goodwill associated with its trademark and reputation, for which there is
no adequate remedy at law.
44.

Defendant is liable for unfair competition pursuant to Sec. 43 of the Lanham Act,

15 U.S.C. 1125.
Count IV
(Common Law Unfair Competition)
45.

Plaintiff Smith & Jones repeats and realleges all paragraphs of this Complaint as

though fully set forth herein.

46.

Defendant Idea Agency, by means of its activities in promoting and offering for

sale Defendants Services in the United States, has knowingly, willfully and/or intentionally
violated Smith & Jones Massachusetts common law unfair competition rights by creating a
likelihood of confusion on the part of customers as to the origin of its services.
47.

Defendant has intentionally copied Smith & Jones IDEA AGENCY mark in an

effort to deceive the consuming public and to benefit from the goodwill associated with Smith &
Jones services and has, as a result, unfairly reaped a substantial commercial advantage to Smith
& Jones detriment.
48.

As a direct result of Defendants wrongful conduct, as aforesaid, Smith & Jones

has suffered, and will continue to suffer, actual monetary damages in an amount to be established
at trial.

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49.

As a direct result of Defendant violating Smith & Jones Massachusetts common

law unfair competition rights, as aforesaid, Smith & Jones has suffered and will continue to
suffer irreparable harm, including but not limited to, irreparable harm to Endurance Nations
goodwill associated with its trademark and reputation, for which there is no adequate remedy at
law.
WHEREFORE, Plaintiff, Smith & Jones respectfully demands judgment as follows:
A.

Preliminarily and permanently enjoining Defendant, Idea Agency, including its

officers, directors, employees, agents, servants, successors and assigns, as well as those in active
concert in participation with it, from further infringement of Smith & Jones IDEA AGENCY
trademark;
B.

Order that all infringing articles in Defendant, Idea Agencys possession,

including but not limited to labels, signs, prints, packaging and advertisements bearing the
infringing mark, as well as plates, molds, and other means of making the infringing marks, be
delivered to an officer of the Court to be destroyed;
C.

Assess against Defendant, Idea Agency and award to Plaintiff, Smith & Jones, all

monetary damages caused by Defendant, Idea Agencys wrongful conduct, including lost profits,
post-judgment and pre-judgment interest, costs, attorneys fees, punitive damages and/or treble
damages; and
D.

That the Court grants such other and further relief as the Court deems just and

proper.

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Demand for Jury Trial

Plaintiff, Smith & Jones, hereby demands a jury trial on all issues so triable.
Respectfully submitted,
SMITH & JONES ADVERTISING, INC.,
By its attorneys,
Date: January 20, 2015

/s/ Jodi-Ann McLane

Jodi-Ann McLane, Esq. (#635567)
John T. McInnes, Esq. (#657488)
DINGMAN, MCINNES & MCLANE, LLP
114 Turnpike Road, Suite 108
Westborough, MA 01581
Email: jodi@dmmiplaw.com
Email: john@dmmiplaw.com
Telephone:
508-938-6357 (Jodi)
Telephone:
508-938-1567 (John)
Facsimile:
508-898-9498

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