Case 1:12-cv-11006-GAO Document 1 Filed 06/06/12 Page 1 of 13

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS TRUE FIT CORPORATION Plaintiff, v. TRUE & CO. Defendant. Civil Action No. ________________

COMPLAINT AND JURY DEMAND True Fit Corporation (True Fit or Plaintiff) brings this civil action against Defendant True & Co. (Defendant) and alleges as follows: NATURE OF THE ACTION 1. This is an action for trademark infringement, unfair competition, and false

designation of origin under both the common law and the Lanham Act. This action arises out of Defendants creation and launch of an online shopping website featuring a personalized fit matching service under the TRUE & CO mark, which directly overlaps with services offered by True Fit under its family of TRUE marks. Defendants activities compete unfairly and create a likelihood of and actual confusion with True Fits TRUE family of marks. 2. True Fits claims against Defendant are for trademark infringement in violation of

15 U.S.C. 1114 et seq., false designation of origin, and unfair competition arising under the Lanham Act, 15 U.S.C. 1125(a), and rights under the common law.

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THE PARTIES 3. Plaintiff, True Fit Corporation, is a corporation duly organized and existing under

the laws of Delaware, having its principal place of business at 800 West Cummings Park, Woburn, Massachusetts, 01801. 4. Upon information and belief, Defendant is a corporation duly organized and

existing under the laws of Delaware, having its principal place of business at 855 Folsom Street, Suite 916, San Francisco, California, 94107. JURISDICTION AND VENUE 5. This is a civil action for injunctive relief and damages for violations of the

Lanham Act under 15 U.S.C. 1114 et seq., false designation of origin, and unfair competition arising under the Lanham Act, 15 U.S.C. 1125(a). 6. 1331, 1338. 7. This Court has personal jurisdiction over the Defendant. The Defendant has This court has jurisdiction pursuant to 15 U.S.C. 1119, 1125 and 28 U.S.C.

created a substantial presence on the Internet that is accessible in Massachusetts and throughout the country at https://trueandco.com/. This website is interactive in that it provides forms which a buyer can use to have Defendant identify certain bra fits and styles that are matched by the Defendant for the prospective buyer based on certain criteria, or through which a buyer can purchase bras from Defendant. 8. Defendant is also aware of True Fits expansive use of its TRUE family of marks

for personalized apparel matching services, and that True Fit is headquartered in Massachusetts. Therefore, Defendant is further aware that the harm it is inflicting through its infringement is directed at residents of the Commonwealth of Massachusetts.

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9.

Venue is proper in this judicial district under 28 U.S.C. 1391. TRUE FIT AND ITS TRADEMARKS

10.

True Fit is a global leader in fit personalization services for matching buyers to

apparel and footwear. True Fits sophisticated machine learning software deploys a variety of patented and proprietary algorithms to analyze massive amounts of data from the users profile, shopping behavior, catalog of products, and a variety of other robust data inputs to deliver highly personalized fit and size recommendations in real time. True Fit has used the term TRUE as a component of various trademarks in connection with its fit personalization services continuously since at least as early as 2005 throughout the United States. 11. apparel. 12. Plaintiff is also the owner of various trademarks relating to this technology and Plaintiff developed a software for personalized fit matching for all categories of

related services, including U.S. Trademark Registration No. 3892043 for FIND YOUR TRUE FIT for personalized matching services related to apparel, which it has used since at least as early as 2006 (attached hereto as Exhibit A). 13. Additionally, True Fit owns a number of pending trademark applications, many of

which are protected under common law, for a variety of other trademarks containing the term TRUE for related services, including at least the following (collectively with U.S. Trademark Registration No. 3892043, True Marks):
Serial No. 85192176 Filing Date 7-Dec-10 Mark BROWSE AND BUY. TRUE TO YOU. Goods/ Services Retail store services and online retail store services featuring apparel; providing online nondownloadable software for matching users to apparel based on body measurements and heuristics; providing personal services in the nature of matching users to apparel based on body measurements and heuristics, provided via retail and online retail store services Exhibit B

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85192156

7-Dec-10

SHOP TRUE TO YOU

85192116

7-Dec-10

TRUE TO YOU

85192084

7-Dec-10

TRUED

85192060

7-Dec-10

TRUING UP

85192193

7-Dec-10

BE TRUE. SHARE TRUE.

85192040

7-Dec-10

TRUE UP

85412802

1-Sep-11

TRUE FIT BRAND ACCELERATOR TRUE FIT RECOMMENDATION ENGINE

85412776

1-Sep-11

Retail store services and online retail store services featuring women and men's apparel; providing online non-downloadable software for matching users to apparel based on body measurements and heuristics; providing personal services in the nature of matching users to apparel based on body measurements and heuristics Retail store services and online retail store services featuring women and men's apparel; providing online non-downloadable software for matching users to apparel based on body measurements and heuristics; providing personal services in the nature of matching users to apparel based on body measurements and heuristics Retail store services and online retail store services featuring women and men's apparel; providing online non-downloadable software for matching users to apparel based on body measurements and heuristics; providing personal services in the nature of matching users to apparel based on body measurements and heuristics Retail store services and online retail store services featuring women and men's apparel; providing online non-downloadable software for matching users to apparel based on body measurements and heuristics; providing personal services in the nature of matching users to apparel based on body measurements and heuristics Retail store services and online retail store services featuring women and men's apparel; providing online non-downloadable software for matching users to apparel based on body measurements and heuristics; providing personal services in the nature of matching users to apparel based on body measurements and heuristics Retail store services and online retail store services featuring women and men's apparel; providing online non-downloadable software for matching users to apparel based on body measurements and heuristics; providing personal services in the nature of matching users to apparel based on body measurements and heuristics Non-downloadable software for providing access to apparel to be matched with users based on body measurements and heuristics Retail store services and online retail store services featuring apparel; providing online non-downloadable software for matching users to apparel based on body measurements and heuristics; providing personal services in the nature of matching users to apparel based on body measurements and heuristics, provided via retail and online retail store services

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85412739

1-Sep-11

TRUE FIT SIZE

85412706

1-Sep-11

TRUE FIT SCORE

77983198

23-Oct09

TRUE FIT

77856276

23-Oct09 23-Oct09

TRUE FIT

Retail store services and online retail store services featuring apparel; providing online nondownloadable software for matching users to apparel based on body measurements; providing personal services in the nature of matching users to apparel based on body measurements and heuristics, provided via retail and online retail store services Retail store services and online retail store services featuring apparel; providing online nondownloadable software for matching users to apparel based on body measurements; providing personal services in the nature of matching users to apparel based on body measurements and heuristics, provided via retail and online retail store services Online retail store services featuring apparel; providing online non-downloadable software for matching users to apparel based on body measurements and heuristics. Retail store services featuring apparel

N MY TRUE FIT Online retail store services featuring women and men's apparel; providing online non-downloadable software for matching users to apparel based on body measurements and heuristics; providing personal services in the nature of matching users to apparel based on body measurements and heuristics, provided via retail and online retail store services

77856317

14.

Plaintiff has provided its fit and size recommendations to hundreds of thousands

of users via its own former direct-to-consumer site MyTrueFit.com (formerly TrueJeans.com and True Apparel Company) and now currently provides its services to several leading retailers, where the True Marks are prominently displayed. 15. As a result of its extensive use and promotion of the True Marks, and other related

marks, Plaintiff has acquired valuable common law rights to the name and mark TRUE, and related marks. 16. Plaintiff has used the term TRUE in connection with personalized matching

services prior to any use of TRUE by Defendant.

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DEFENDANT 17. Upon information and belief, Defendant True & Co. is a corporation duly

organized and existing under the laws of Delaware, having its principal place of business at 855 Folsom Street, Suite 916, San Francisco, California, 94107. 18. Defendant uses True & Co. as its trade name and offers personalized matching

services for bras and related products under the mark TRUE & CO. 19. On January 12, 2012, Defendants CEO and founder, Michelle Lam, filed an

intent-to-use trademark application with the U.S. Patent and Trademark Office for the following mark:

20.

The word portion of the mark reads TRUE TRUE & CO and the logo mark was

described by Applicant Lam as consist[ing] of the letters T-R-U-E in a circle filled rectangle with the words TRUE & CO underneath. 21. The recited goods and services included the following:

the bringing together, for the benefit of others, of a variety of goods and services, enabling customers to conveniently view and purchase those goods and services from an Internet web site particularly specializing in the marketing of the sale of goods and services of others; [and] providing personal shopping services for others over the Internet 22. The intent-to-use application was assigned U.S. Serial No. 85530144.

23. 24.

Defendant has used the mark

on its website https://trueandco.com/.

Defendant has used the slogan YOUR TRUE FIT on its website

https://trueandco.com/.

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25.

Defendant has used the slogans FIND THE BRA THAT IS TRUE TO YOU,

YOUR TRUE BRA STYLE, FIND YOUR TRUE BRA STYLE, OUR TRUE PROMISE, TRULY INTIMATE, and TRUE INSPIRATION on its website https://trueandco.com/. 26. of True Fit. 27. Defendant also uses the marks TRUE FIT and YOUR TRUE FIT on various The services offered by Defendant on its website are directly competitive to those

social media platforms, including its Twitter account and its Tumblr account. 28. Upon information and belief, Defendant publicly launched its website

https://trueandco.com/ on May 30, 2012. 29. The Defendant uses its website to promote the offering of its personalized fit and

matching services and the sale of related products. 30. Defendant redirects the alias URL yourtruefit.com to its current site,

https://trueandco.com/. 31. Internet searches for Your True Fit produce search results for both Defendant

and Plaintiff True Fit. 32. Defendants use of a trademark with the word TRUE has led to actual confusion

between Defendant and True Fit; True Fit has already received inquiries regarding the relationship between Defendant True & Co. and Plaintiff True Fit Corporation. 33. On May 18, 2012, prior to the launch of Defendants website, True Fits counsel

sent Defendant a cease and desist letter demanding that Defendant: Immediately cease using the mark TRUE alone or as a formative in connection with services and products related to those of Plaintiff; Immediately abandon its attempt to register the mark , designated U.S. Application No. 85530144, and provide Plaintiff with evidence of the express withdrawal;

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34.

Immediately terminate use of the URL trueandco.com and the URL yourtruefit.com and effectuate the transfer of these domain names to Plaintiff; and, Agree to refrain from any future attempts to use and/or register a trademark containing the term TRUE for services related to those of Plaintiff. Defendants attorney contacted Plaintiffs counsel on May 22, 2012, indicating

that she would respond very shortly. She never did. Rather, Defendant proceeded by launching its website on May 30, 2012, only days after receiving True Fits letter, evidencing the willfulness of Defendants actions. 35. Defendants conduct affects intrastate and interstate commerce. COUNT I TRADEMARK INFRINGEMENT LANHAM ACT, 15 U.S.C. 1114 36. The allegations of Paragraphs 1 through 35 are hereby realleged and

reincorporated by this reference as if fully set forth herein. 37. True Fit is the rightful owner of U.S. Trademark Registration No. 3892043 for

FIND YOUR TRUE FIT (043 Mark). 38. Without authorization from True Fit, Defendant has used and continues to use

TRUE & CO, YOUR TRUE FIT, and related marks containing the word true (Infringing Marks), which are substantially similar to the 043 Mark, in connection with personalized fit services. 39. The services offered by Defendant in connection with the Infringing Marks are

identical or substantially similar to those services offered and sold by True Fit under the 043 Mark. 40. Defendants use of the Infringing Marks has already and, if not enjoined, will

continue to lead consumers and others in the relevant markets to believe that Defendants business is related to or associated with activities of the True Fit, when it is not. In fact, since

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Defendants launch earlier this week, there is already evidence of actual confusion, specifically consumer inquiries directed to True Fit regarding the relationship between True & Co. and True Fit Corporation. 41. Defendants use of the Infringing Marks constitutes a reproduction, copying,

counterfeiting, and colorable imitation of the 043 Mark in a manner that is likely to cause confusion, mistake, or is likely to deceive consumers. 42. By using marks that are likely to cause confusion, mistake and/or deception as to

source, sponsorship or affiliation, Defendants past, present and ongoing actions constitute trademark infringement of True Fits rights, subjecting Defendant to liability under 15 U.S.C. 1114. 43. Defendant knew, or in the exercise of reasonable care, should have known that its

conduct was likely to mislead the public. 44. Such use by Defendant is willful and with the intent to trade off the goodwill

established by True Fit in its 043 Mark. 45. Unless stopped by an injunction, Defendants behavior will continue and will

cause True Fit to suffer irreparable harm for which there is no adequate remedy at law. Therefore, True Fit is entitled to injunctive relief. 46. Defendants infringing actions have damaged True Fit. Therefore, Plaintiff is

entitled to damages for the infringement in an amount to be determined at trial. COUNT II UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN LANHAM ACT, 15 U.S.C. 1125(a) AND COMMON LAW 47. The allegations of Paragraphs 1 through 46 are hereby realleged and

reincorporated by this reference as if fully set forth herein.

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48.

True Fit is the rightful owner of each of the marks comprising the True Marks and

any rights related to the ownership of those marks. 49. Many of True Fits True Marks, as used in connection with personalized matching

services, are distinctive, known for their quality, and have become associated with True Fit through its continuous, extensive and widespread use of these marks. As a result, True Fits True Marks identify True Fit and its services and associated products. 50. Defendant provides products and services to the same or similar classes of

customers as True Fit. 51. Defendants use of the Infringing Marks has the effect of associating Defendant

with True Fit in the minds of the purchasing public, and constitutes unfair competition in violation of the Lanham Act, 15 U.S.C. 1125(a) and the common law. 52. Defendants actions are likely to cause confusion, mistake, or to deceive

consumers as to the affiliation, connection, or association of Defendant with True Fit, or to cause confusion, mistake, or to deceive consumers as to the origin, sponsorship or approval of Defendants services by True Fit, entitling True Fit to relief under the Lanham Act, specifically 15 U.S.C. 1125(a). 53. Defendants use in commerce of the Infringing Marks as a trade name or a

trademark for personalized matching services further constitutes a false designation of origin and false designation of sponsorship, each in violation of 15 U.S.C. 1125(a), by creating the appearance that Defendants services are those of True Fit when in fact, they are not. 54. Defendants actions have been knowing, deliberate, willful, and intended to cause

mistake or deceive, and in disregard of True Fits rights.

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55.

Unless stopped by an injunction, Defendants behavior will continue and will

cause True Fit to suffer irreparable harm for which there is no adequate remedy at law. Therefore, True Fit is entitled to injunctive relief. 56. True Fit is also entitled to damages for such false designation of origin by

Defendant in an amount to be determined at trial. RELIEF REQUESTED WHEREFORE, True Fit prays that the Court declare and a judgment be entered that: A. B. Defendant; C. Defendant, as well as all its agents, representatives, employees, assigns and all The Court has jurisdiction over the parties and subject matter of this action; True Fits marks asserted herein are valid and subsisting and are infringed by

persons acting in concert or privity with them, is preliminarily and permanently enjoined from maintaining, using, disseminating, reproducing, promoting, distributing or otherwise using the mark TRUE & CO, YOUR TRUE FIT, or any marks confusingly similar thereto, as all or part of any mark, design, or trade name; D. Defendant, as well as all its agents, representatives, employees, assigns and all

persons acting in concert or privity with them, is permanently enjoined from filing a state or federal trademark application for TRUE & CO, or any of the Infringing Marks confusingly similar thereto, as all or part of any mark, design, or trade name; E. Defendant, as well as all its agents, representatives, employees, assigns and all

persons acting in concert or privity with them, is permanently enjoined from using the Infringing Marks in association with personalized fit matching services and services and products related thereto;

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F.

Defendant shall pay to True Fit an award of damages, including interest, sustained

by True Fit as a result of the wrongful acts of Defendant; G. Defendants actions have been knowing, deliberate, willful, and intended to cause

mistake or deceive, and in disregard of True Fits rights; H. Defendant shall pay to True Fit any damages attributable to its infringement of

Plaintiffs True Marks, and Defendant shall account for all gains, profits, and advantages derived through said infringement, and such damages authorized by law, under 15 U.S.C. 1117, including an accounting for any period not directly covered by a verdict in Plaintiffs favor; I. The Court order a trebling of damages pursuant to 15 U.S.C. 1117(a), or any

other applicable or statutory or common law basis; J. The Court order an award of reasonable costs and attorneys fees pursuant to 15

U.S.C. 1117, or any other applicable or statutory or common law basis; K. Defendant shall deliver to True Fit or to the Court for destruction, all materials

bearing an Infringing Marks; L. M. N. O. Defendant shall cease all use of the Infringing Marks on its website; Defendant shall cease all use of the Infringing Marks; The Court order that the Defendant withdraw of U.S. Serial No. 85530144. Defendant shall assign to True Fit its domain name <trueandco.com> and any

other domain names containing the word true; P. Defendant shall file and serve a report in writing, and under oath, setting forth the

manner and form in which it has complied with the Courts order and injunction; and, Q. Such other and further relief as the Court may deem proper and just.

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JURY DEMAND Plaintiff demands a trial by jury of all issues so triable. Respectfully submitted, TRUE FIT CORPORATION By its attorneys, Dated: June 6, 2012 s/ Michael N. Rader Michael N. Rader (BBO # 646990) mrader@wolfgreenfield.com John L. Strand (BBO #654985) john.strand@wolfgreenfield.com Christina M. Licursi (BBO #671737) christina.licursi@wolfgreenfield.com WOLF, GREENFIELD & SACKS, P.C. 600 Atlantic Avenue Boston, MA 02210 Tel. 617.646.8000 Fax 617.646.8646

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