Case 1:15-cv-01352 Document 1 Filed 03/16/15 Page 1 of 8 PageID #: 1

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

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AMERICAN BOMBSHELLS PATRIOT SERVICES, INC.,:
Plaintiff,

CIVIL ACTION NO.

v.
AERO MARKETING GROUP, INC.,

JURY TRIAL DEMANDED

Defendant.

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COMPLAINT FOR DECLARATORY JUDGMENT
Plaintiff, American Bombshells Patriot Services, Inc. ("Plaintiff') by and through its
attorneys, brings this action for declaratory judgment and alleges against Defendant, Aero
Marketing Group, Inc. ("Defendant"), the following:
NATURE OF THE ACTION
1.

Plaintiff seeks declaratory relief from this Court in order to prevent Defendant

from monopolizing the commonly used term "BOMBSHELLS" to refer to "very attractive
women" for its own exclusive use. Specifically, Defendant claims that Plaintiffs use of its
trademark and trade name AMERICAN BOMBSHELLS, which is registered for charitable
fundraising services and a wide variety of apparel (U.S. Registration Nos. 3,997,625 and
4,466,933), use on calendars in connection with its charitable fundraising services infringes and
dilutes Defendant's trademark rights in its Registration No. 3,434,220 for the mark
BOMBSHELLS and Airplane Design for printed matter, including calendars. Plaintiff brings
this action to clarify the rights of the parties. Plaintiff thus seeks a declaratory judgment that the
use of its name and mark AMERICAN BOMBSHELLS for its fundraising calendars does not

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infringe upon or dilute any trademark rights that Defendant may hold with respect to the mark
BOMBSHELLS and Design.

v.

AMERICAN BOMBSHELLS

THE PARTIES
2.

Plaintiff, American Bombshells Patriot Services, Inc. is a 501(c) 3 non-profit

organization with the mission to serve and honor our nation's defenders, veterans and their
families, qualified to do business and is doing business in the State of New York and in this
judicial district.
3.

Upon information and belief, Defendant, Aero Marketing Group, Inc., is a Texas

corporation, with offices at 2716 Ranchview Drive, Richardson, Texas 75082, and is transacting
business in the State of New York and in this judicial district.
JURISDICTION AND VENUE
4.

The Court has jurisdiction over this declaratory judgment action pursuant to the

Federal Declaratory Judgments Act, 28 U.S.C. 2201(a) and 2202, as well as under 28 U.S.C.
1331and1338(a) and 15 U.S.C. 1121.
5.

The Court has personal jurisdiction over Defendant because, upon information

and belief, Defendant transacts and solicits business in the State of New York and within this
judicial district.
6.

Venue is proper in this judicial district under 28 U.S.C. 1391(b) and (c) and

1400(a),
2

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FACTS

Defendant's Allegations of Infringement

7.

On December 8, 2014, Defendant, through its counsel, sent a letter to Plaintiff.

The letter demanded that Plaintiff"promptly cease and desist its use of the 'BOMBSHELLS'
designation in connection with the sale of any of Plaintiffs printed materials, including, but not
limited to, its annual calendars, and remove all such infringing articles and products from the
marketplace".
8.

The letter concluded with the following threat: "I trust that this letter makes

Defendant's position clear and that no further action by Defendant will be necessary to remedy
this infringement".
9.

On January 9, 2015, the undersigned counsel for Plaintiff in a telephone

conversation with Defendant's counsel followed by a written response set forth Plaintiffs
position disagreeing with Defendant's claims of infringement. Specifically, Plaintiff does not
believe that its use of AMERICAN BOMBSHELLS on its fundraising calendars is likely to
cause confusion with Defendant's use of its BOMBSHELLS and Airplane Design or dilute
Defendant's said trademark, or that Defendant can monopolize the common term
BOMBSHELLS. Plaintiffs counsel also included in his response six copies of calendars that
use the BOMBSHELLS name: Bombshells Galore Calendar; Girls of Sport Bombshells
Calendar; Bianca Bombshell Pinup Calendar; The Atomic Bombshells Calendar; Pinup
Bombshells Calendar; and 2012 American Bombshells Modem Pinup Wall Calendar.
10.

Defendant's counsel did not respond to Plaintiffs counsel's response until March

6, 2015. However, this time counsel not only continued to claim exclusive trademark rights in
the word BOMBSHELLS for calendars, but also alleged that Plaintiffs use and registrations of

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AMERICAN BOMBSHELLS for clothing (Registration No. 4,466,933) also infringes

Defendant's alleged prior use of BOMBSHELLS for apparel.
11.

Despite further communications between counsel, it does not appear that this

matter can be resolved without resorting to litigation. As a result, Plaintiff has a real and
reasonable apprehension oflitigation based on Defendant's statements and conduct. Moreover,
Defendant's allegations that Plaintiff is manufacturing, marketing and selling goods that
infringe its intellectual property have created an actual, substantial and justiciable controversy
between Plaintiff and Defendant concerning the right of Plaintiff to continue to use its
AMERICAN BOMBSHELLS mark not only in connection with its fundraising services in the
form of an annual calendar, but also its use and registration of its mark for clothing.
The Use of AMERICAN BOMBSHELLS Does
Not Infringe Any of Defendant's Claimed Rights
in the BOMBSHELLS Name Alone
12.

First, Defendant's mark uses an airplane design in a distinctly different style

along with the BOMBSHELLS name together forming a completely different look and feel.
13.

In Plaintiffs mark, the words AMERICAN BOMBSHELLS is taken directly

from the name of its organization and to the women who run the organization and are
affectionately referred to as "BOMBSHELLS".
14.

As a result, the parties' respective uses of the word BOMBSHELLS are plainly

different, and not likely to cause confusion.

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COUNT 1
DECLARATORY JUDGMENT FOR
NON-INFRINGEMENT OF TRADEMARK
15 U.S.C. 1114(a)

15.

Plaintiff repeats and incorporates herein by reference each and every one of the

allegations contained in paragraphs 1 through 14, inclusive, of this complaint with the same
force and effect as if hereinagain set forth in full.
16.

The use of AMERICAN BOMBSHELLS in connection with the manufacture,

marketing and sale of fundraising calendars and/or clothing through Plaintiff's own distinct
channels of trade, is not likely to cause confusion of sponsorship or affiliation with Defendant's
BOMBSHELLS and Airplane Design.
17.

Plaintiff seeks a declaratory judgment from this Court that its manufacture,

marketing, sale and use of AMERICAN BOMBSHELLS on calendars for its fundraising
activities and/or clothing does not infringe Defendant's claimed BOMBSHELLS and Airplane
Design mark.
COUNT II
DECLARATORY JUDGMENT - NO UNFAIR COMPETITION
15 U.S.C. 1125(a)
18.

Plaintiff repeats and incorporates herein by reference each and every one of the

allegations contained in paragraphs 1through14, inclusive, of this complaint with the same
force and effect as if hereinagain set forth in full.
19.

Plaintiff seeks a declaratory judgment from this Court that the use of

AMERICAN BOMBSHELLS for its fundraising calendars and/or clothing does not unfairly
compete with Defendant's claimed BOMBSHELLS and Airplane Design mark.

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COUNT III
DECLARATORY JUDGMENT FOR DETERMINATION
OF NO FALSE DESIGNATION OF ORIGIN
15 U.S.C. 1125(a)
20.

Plaintiff repeats and incorporates herein by reference each and every one of the

allegations contained in paragraphs 1 through 14, inclusive, of this complaint with the same force
and effect as if hereinagain set forth in full.
21.

Plaintiffs AMERICAN BOMBSHELL calendars and/or clothing clearly

originate from Plaintiff and do not promote any connection or association with Defendant.
22.

Plaintiff seeks a declaratory judgment from this Court that the use of

AMERICAN BOMBSHELLS on Plaintiffs annual calendars and/or clothing does not constitute
false designations of origin.
COUNT IV
DECLARATORY JUDGMENT FOR DETERMINATION
OF NON-DILUTION OF TRADEMARK
15 U.S.C. 1125(c) AND NEW YORK LAW
23.

Plaintiff repeats and incorporates herein by reference each and every one of the

allegations contained in paragraphs 1 through 14, inclusive, of this complaint with the same force
and effect as if hereinagain set forth in full.
24.

Defendant's BOMBSHELLS mark is not famous as defined by 15 U.S.C.

1125(c), i.e., it is not widely recognized by the general consuming public as a designation of
source of the goods or services of the mark's owner.
25.

Plaintiffs AMERICAN BOMBSHELLS mark is not substantially similar to any

claimed mark of Defendant that includes the word "BOMBSHELLS".

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26.

Plaintiffs use of the AMERICAN BOMBSHELLS mark for fundraising

calendars and/or clothing is not likely to dilute the distinctive quality or harm the reputation of
Defendant's claimed BOMBSHELLS and Airplane Design.
27.

Plaintiff seeks a declaratory judgment from this Court that the use of

AMERICAN BOMBSHELLS on its fundraising calendars and/or clothing does not constitute
trademark dilution under the Lanham Act or under New York law.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for a declaratory judgment that:
A.

The past, present and continued manufacture, marketing and sale by Plaintiff of

its AMERICAN BOMBSHELLS fundraising calendars and/or clothing do not infringe, unfairly
compete with, or dilute Defendant's BOMBSHELLS and Airplane Design mark or falsely
designate the origin of Plaintiffs calendars and/or clothing or otherwise constitute a violation of
any of Defendant's rights.
B.

Defendant, its officers, agents, servants, employees and attorneys, and those

persons in active concert or participation or otherwise in privity with it, be permanently enjoined
and restrained from instituting, prosecuting or threatening any action against Plaintiff, or any of
its affiliates, or anyone in privity with them with respect to the manufacture, marketing and sale
of Plaintiffs AMERICAN BOMBSHELLS calendars and/or clothing.
C.

Plaintiff have and recover from Defendant its reasonable attorneys' fees, costs and

disbursements of this civil action, pursuant to Section 35 of the Lanham Act, 15 U.S.C. 1117;
and

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D.

Plaintiff have such other and further relief as the Court may deem just and proper.

Dated: New York, New York

March 16, 2015
Respectfully submitted
COLUCCI & UMANS

By:.i~J-~
FrankJ: ~cci (8441)
Attorneys for Plaintiff
218 East 501h Street
New York, New York 10022
212-935-5700
fcolucci@colucci-umans.com