Martelli v Perio Filed Declaratory Judgment Complaint for Trademark and Trade Dress Invalidity and...

Case 1:14-cv-05622-VSB Document 1 Filed 07/23/14 of 6

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detailed Coexistence Agreement, under which Martelli would transition to new packaging. The

design of new packaging involved substantial expense on Martelli’s part.

4. In November 2013, Perio’s counsel represented in writing that “it appears that we

have reached mutually satisfactory terms” and circulated the agreement for signature. However,

upon viewing the new packaging, Perio nonetheless reversed course and refused to sign the

agreement, issuing more threats of baseless litigation.

5. It is clear from its conduct that Perio is employing aggressive and sophisticated

but unlawful tactics to try to commercially monopolize the generic diagonal stripes of the classic

“barber pole.”

6. Perio is claiming that such a pattern constitutes a legally recognized trademark

when used in connection with shaving-related products and threatening its competitors with

litigation.

7. However, such a design cannot – and should not – be commercially monopolized

under United States trademark law, and is currently used by numerous third parties.

8. Perio did not volunteer this information to the United States Patent and

Trademark Office when filing its trademark applications.

9. Therefore, Martelli seeks a Declaratory Judgment that any alleged trademark and

trade dresses asserted by Perio are invalid and unenforceable.

10. Perio’s unlawful threats and conduct have been directed toward Martelli and

would interfere with and harm its contractual relationship with its exclusive American

distributor, located in this Judicial District.

11. The unreasonable and baseless demands of Perio are and were intended to disrupt

Martelli’s lawful business, thereby requiring an adjudication of the rights of the parties in the


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dispute identified herein, before Martelli suffers further damage.

12. Therefore, Martelli respectfully seeks a Declaratory Judgment that Martelli’s past,

current and new trade dresses and trademarks do not violate alleged trademark and trade dress

rights asserted against it by Defendant Perio, create no likelihood of consumer confusion, do not

constitute unfair competition and do not constitute actionable dilution of any claimed trademark

or claimed trade dress of Perio.

PARTIES AND JURISDICTION

13. PLAINTIFF MARTELLI E FIGLI, S.R.L. is a privately held Italian company,

with a principal place of business at Via Faentina 169/12, Località Caldine 50010 Fiesole,

Florence, Italy.

14. PLAINTIFF LUDOVICO MARTELLI, S.R.L. is a privately held Italian

company, with a principal place of business at Via Faentina 169/12, Località Caldine 50010

Fiesole, Florence, Italy. Ludovico Martelli, S.r.l. is the licensee of Martelli e Figli, S.r.l.’s

trademarks. Further, Ludovico Martelli entered into an exclusive United States distribution

agreement with third party Bigelow in 2002.

15. The Plaintiffs are small, family-owned companies that are engaged in the business

of manufacturing, selling, marketing and distributing shaving-related cosmetics and accessories,

such as shaving creams and gels, under the brand name PRORASO® in the United States, in New

York and this Judicial District.

16. DEFENDANT PERIO, INC. is a privately held Ohio corporation with a

principal place of business at 6156 Wilcox Road, Dublin, Ohio 43016. Upon information and

belief, Perio is engaged in the business of manufacturing, selling, marketing and distributing


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shaving-related cosmetics and accessories, such as shaving creams and gels, under the brand

name BARBASOL® in the United States, in New York and this Judicial District.

17. This is an action for Declaratory Judgment arising under (i) the Trademark Laws

of the United States, namely, 15 U.S.C. § 1051 et seq., and 15 U.S.C. § 1121 et seq.; (ii) the

Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202; and (3) Rule 57 of the Federal Rules of

Civil Procedure. Thus, this Court has original jurisdiction over the subject matter of this dispute

pursuant to 28 U.S.C. §§ 1331 and 1338.

18. This Court has personal jurisdiction over the Defendant as it has regularly

transacted business in New York, regularly done or solicited business in New York, and supplied

products at issue to New York consumers. Further, the Defendant’s threatened conduct will

cause injury to the Plaintiffs in New York and this Judicial District. Venue in this District is,

therefore, proper under 28 U.S.C. § 1391 et seq.

FACTUAL BACKGROUND

The Barber Pole

19. The “barber pole” is a generic design that has become widely associated with the

act of shaving since medieval times. See National Barber Museum and Hall of Fame website,

located at http://www.NationalBarberMuseum.org (visited July 21, 2014), printouts and

photographs attached as Exhibits 1 and 2; see also William Andrews, AT THE SIGN OF THE

BARBER’S POLE: STUDIES IN HIRSUTE HISTORY (J.R. Turtin 1904).

20. “Barber-surgeons” were medical practitioners who provided a wide-range of

services during the medieval and early modern periods of history. See id. and Roderick McGrew,

ENCYCLOPEDIA OF MEDICAL HISTORY 30-31 (McGraw Hill 1985).

21. Traditionally, they were trained through apprenticeships, which could last as long


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as seven years.

22. Many barber-surgeons had no formal education, and some were even illiterate.

23. Barber-surgeons provided a variety of medical services for their communities.

24. Moreover, because of their varying social backgrounds and relatively cheap prices,

they also appealed to a greater number of people in medieval and early modern England.

25. As a result, a person was more likely to visit a barber-surgeon than a physician

during his or her lifetime.

26. The barber-surgeon’s tasks ranged from trimming and shaving beards to cutting

hair to bloodletting.

27. Shaving and bloodletting are the origins of the elements contained within the

generic barber’s pole.

28. The original barber’s pole had a brass ball at its top, representing the vessel in

which leeches were kept and/or the basin that received the patient’s blood.

29. The pole itself represents the rod that the patient held tightly during the

bloodletting procedure to show the barber where the veins were located.

30. The red and white stripes represents the bloodied and clean bandages used during

the procedure.

31. Afterwards, these bandages were washed and hung to dry on the rod outside the

shop.

32. The blowing wind would twist the bandages together, forming the familiar spiral

pattern we see on barber poles today.

33. Barber-surgeons and medical surgeons existed separately in England until 1540,

when King Henry VIII integrated the two through the establishment of the Barber-Surgeons


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Company. See Charles E. Bagwell, M.D., Respectful Image: Revenge of the Barber Surgeon,

ANNALS OF SURGERY 876 (June 2005).

34. After the establishment of the Barber-Surgeons Company in 1540, a statute was

passed that required barbers and surgeons to distinguish their services by the colors of their pole.

35. From that point forward, barbers used blue and white poles, while surgeons used

red and white poles.

36. Although united as a profession, tensions between the barber-surgeons and

surgeons persisted until the two professions eventually split in 1745.

37. Today, red, white and blue barber poles are often found in the United States,

although this may have to do with the colors of the nation’s flag.

38. The traditional interpretation posits that the color red represents arterial blood, the

blue represents venous blood and the white represents the bandages. See, e.g., Brian Bakst,

Barbers, Stylists Disagree on Who Can Display a Barber Pole, USA TODAY, March 14, 2012

(Exhibit 3); see also History of the Barber Pole, Tennessee State Board of Barber Examiners,

http://www.tn.gov/regboards/barber/bpolehis.shtml (website printout attached as Exhibit 4); 3

ENCYCLOPEDIA AMERICANA (Scholastic 2006) (attached as Exhibit 5) (“The traditional barber’s

pole of red and white stripes symbolizes the bloodletting and bandages formerly associated with

barbers.”).

39. Spinning barber poles are intended to move in a downward angled, diagonal

direction that makes the red (arterial blood) appear as if it were flowing downwards, as it does in

the body.

40. There are tens of thousands of examples of such barber poles widely in use today,

in connection with barbershops, many of which offer premium shaving services.


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41. The symbol has become a generic business sign for barbershops and the related

act of shaving. See DK ILLUSTRATED DICTIONARY (Dorling Kindersley/Oxford 1998) (Exhibit

6)(“barber pole n., a spirally painted striped red and white pole hung outside barbers’ shops as a

business sign”); WEBSTER’S NEW WORLD COLLEGE DICTIONARY (Wiley 2010) (Exhibit 7)

(“barber pole a pole with spiral stripes of red and white, used as a symbol of the barber’s

trade”).

42. Just a few examples of photographs of generic barber pole stripes are included

below and attached at Exhibits 1 and 2:

FIG. 1

Case 1:14-cv-05622-VSB Document 1-1 Filed 07/23/14 Page 1 of 1

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FIG. 2

FIG. 3


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FIG. 4

FIG. 5


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Third Party Uses of the Generic Barber Pole Theme

43. Many third parties sell shaving products and related accessories utilizing this

generic “barber pole” theme (see Exhibit 8). Just a few examples include:

FIG. 6 FIG. 7

FIG. 8 FIG. 9


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FIG. 10 FIG. 11

Martelli and Its High-End PRORASO® Shaving Products

44. Martelli sells high-end shaving supplies, including shaving creams and shaving

foam, under the brand name PRORASO® throughout the world, including to consumers in New

York and this Judicial District.

45. In 1948, Piero Martelli invented the PRORASO Pre-Shave Cream.

46. Since then, PRORASO products have been a staple of high-end barbershops

throughout the world, including in the United States, New York and this Judicial District.

47. Third party C.O. Bigelow Chemists, Inc., with a principal place of business

located at 414 Sixth Avenue, New York, NY 10011, in this Judicial District, is the exclusive

distributor of Martelli’s PRORASO products in the United States.

48. Many barber shops and shaving centers display and offer Martelli’s PRORASO

products for sale in New York and this Judicial District.

49. Furthermore, many online stores sell PRORASO products directly to consumers.


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50. Retail prices for PRORASO’s shaving products vary, but can reach prices up to

$16.00 for aftershave lotion and $10.00 for shaving foam and cream.

51. For years, Martelli’s PRORASO products have made use a diagonal design and

color scheme that incorporates elements of the generic “barber pole” stripe.

Defendant Perio’s Conduct

BARBASOL® Products

52. Upon information and belief, third party Pfizer Inc., primarily a pharmaceutical

company that had owned the BARBASOL brand since the 1960’s, sought to sell the brand by the

late 1990’s.

53. Upon information and belief, in the 1990s, BARBASOL products’ brand equity

had diminished and sales had slowed.

54. Upon information and belief, Perio acquired the BARBASOL® brand from third

party Pfizer Inc. in or about 2001.

55. The Defendant’s BARBASOL products make use of a diagonal striped design,

importing elements of the barber pole, which it calls the “barber pole trade dress”:


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FIG. 12

56. Ten ounce BARBASOL cans of shaving cream sell for as little as ninety-nine

cents ($0.99) in retail stores, a fraction of the retail price of PRORASO’s products.

57. Unlike PRORASO products, BARBASOL products are typically sold through

mass-market retailers, such as Wal-Mart, as well as most major drug store chains and

supermarkets.

58. Upon information and belief, Perio has been attempting to “revitalize” its brand

image and expand BARBASOL’s market share using a variety of means.

59. Upon information and belief, beginning in approximately 2010, Perio began a

campaign to dramatically try to further expand its commercial footprint and intellectual property


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rights in the United States, using several different sophisticated law firms and marketing

agencies.

60. For example, according to The New York Times: “Perio spent $3.7 million to

advertise Barbasol in major media in 2011, according to the Kantar Media unit of WPP,

compared with $2.7 million in 2010 and $2.9 million in 2009. The total for the first nine months

of last year was $2 million.” See Stuart Elliot, Across the Generations: A Proper Shave, THE

NEW YORK TIMES, January 27, 2013, at B5.

61. Since that time, Perio has also filed for (and in some cases received) U.S.

trademark registrations claiming rights to the generic “barber pole” elements in the class of

shaving-related accouterments, using several different law firms. Collectively, Perio’s issued

and pending U.S. Trademark Registration rights shall be referred to as “Perio’s Trademarks”.

62. For example, in 2008, Perio had sought and received U.S. Trademark Reg. No.

3,505,879 (Exhibit 9) for the following design used in connection with shaving cream, shaving

gel and after shave balms:

FIG. 13

63. Apparently not satisfied with this scope of trademark protection, thereafter, in

2013, Perio filed U.S. Trademark Application Serial No. 85,173,104, which matured into U.S.

Trademark Reg. No. 4,277,946 (Exhibit 10) for the following design for “aftershave”:


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FIG. 14

64. Subsequently, Perio also filed U.S. Trademark Application Serial No. 86,152,402

(Exhibit 11) for the following design used in connection with shaving preparations, shaving

cream, shaving gel, shaving foam and razors:

FIG. 15

65. In late 2013, Perio further filed U.S. Trademark Application Serial No.

86,152,418 (Exhibit 12) for the following design used in connection with shaving preparations,

shaving cream, shaving gel, shaving foam, aftershave, aftershave balm and pre-shave wash:

FIG. 16


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66. In late 2013, Perio further filed U.S. Trademark Application Serial No.

86,152,397 (Exhibit 13) for the following design used in connection with shaving preparations,

shaving cream, shaving gel, and shaving foam:

FIG. 17

67. In late 2013, Perio also filed U.S. Trademark Application Serial No. 86,152,389

(Exhibit 14) for the following design used in connection with shaving preparations, shaving

cream, shaving gel, shaving foam, aftershave, and aftershave balm:

FIG. 18

68. As demonstrated by this recent flurry of Perio’s trademark applications, Perio has

embarked on the task of monopolizing the generic diagonally striped barber pole element.

69. The method it is using is to systematically and incrementally file trademark

application after trademark application. This approach seeks to own each and every aspect of the

diagonal stripe barber pole theme, without disclosing the generic nature of this trade dress to the

United States Patent and Trademark Office.

70. In many of these applications, Perio has claimed that it has a bona fide intent to

use these trademarks in commerce, but has not yet demonstrated that it has actually done so.


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71. The cumulative effect of this strategy is that Perio would monopolize generic

barber pole elements that have been used in connection with shaving-related products for over

500 years, and unlawfully use baseless threats of litigation to stifle legitimate competition so that

it could expand its market footprint and “revitalize” its flagging brand.

72. There is a significant cost and competitive harm to companies such as the

Plaintiffs from this strategy, which simply cannot afford to perpetually battle with the Defendant

over generic elements.

73. Perio has unabashedly stated its broad legal goal (see Exhibit 17):

Perio claims rights in stripes on shaving-related goods that create a barber pole impression. 74. However, when seeking to register its various trademarks, Perio’s attorneys did

not disclose the generic nature of the barber pole design to the United States Patent and

Trademark Office.

75. The Defendant’s strategy to aggressively enforce its claimed rights against

“infringers” to advance its own commercial interests was not an idle threat.

76. In 2010, the Defendant sued a chain of “99 Cent” retail stores in Los Angeles,

California for infringing upon its claimed trade dress, by its sale of cans of shaving cream that

contained these generic elements. See Perio, Inc. v. 99 Cent Only Stores, 2:10-cv-680-ODW-

RC (C.D. Cal. 2010).

77. In that case, the U.S. District Court Judge entered an Order to Show Cause sua

sponte against Perio, demanding to know why the U.S. Patent and Trademark Office was not

given notice of the suit. Id. at Docket 5.

78. Perio responded, circumventing the requirement, by informing the Court that “this

litigation does not involve a registered trademark.” Id. at Docket 6.


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79. Perio later dismissed all of its claims against the defendant with prejudice after

reaching a settlement with the defendant. Id. at Docket 12.

80. Thus, by doing so, Perio was able to avoid judicial scrutiny of its claimed “trade

dress” rights, was not required to demonstrate that its unregistered trade dress was distinctive,

nor prove how that defendant’s use of striped would likely cause consumer confusion, as it had

claimed.

Perio’s Relentless and Baseless Threats Against Martelli

81. On January 10, 2013, Perio’s counsel sent a formal cease and desist letter to

Plaintiff Martelli e Figli, S.r.l, in Italy. See attached Exhibit 15.

82. Perio accused Martelli of using a trade dress that is likely to cause confusion

among consumers. Id.

83. Perio demanded that Martelli “modify its packaging” and “remove any prominent

stripes.” Id.

84. However, Martelli reasonably believed that consumers would not be confused

into believing that its high-end shaving products originated from or were sponsored by Perio,

simply because they use stripes.

85. In fact, Martelli has been using a diagonal striped theme for many years. See,

e.g., Exhibit 16.

86. Martelli’s shaving products are not typically available through the same channels

of trade as Perio’s shaving products.

87. Further, Martelli’s products are typically sold at retail prices that are much higher

than Perio’s products.

88. Perio has not identified any instances of actual consumer confusion occurring


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between the two brands.

89. Furthermore, Martelli is unaware of any instances of actual consumer confusion

occurring between the two brands.

90. Martelli respectfully articulated its position to Perio through its Italian counsel on

February 11, 2013, and pointed out that Perio’s claimed “barber pole” trade dress was based on

generic elements that have been used in connection with shaving for centuries, and actually,

incorporated elements that were used first in Italy by Martelli. See attached Exhibit 16.

91. Further, Martelli explained that it simply did not believe that consumer confusion

was likely. Id.

92. But Perio simply would not relent.

93. Over the course of a year, Perio continued to insist that Martelli must cease

selling and distributing products prominently displaying stripes in the United States, or else

Martelli would be liable for past damages and an injunction against further use in the United

States, based on alleged trademark and trade dress infringement, as well as unfair competition.

See attached Exhibits 15-22.

94. As Perio would receive another trademark registration on the barber pole stripe

theme, it would renew and amplify its threats.

95. Ultimately, in a good faith effort and solely to avoid the time and expense of

defending against the never-ending torrent of threats of litigation, Martelli sought to enter into a

formal arrangement by which it could transition to new packaging by July 30, 2014.

96. At great expense, between the end of 2013 and the beginning of 2014, Martelli

invested in designing new packaging solely to avoid a costly dispute with Perio.


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97. Perio’s counsel represented in writing that “it appears that we have reached

mutually satisfactory terms” and circulated the agreement for signature. However, upon viewing

the new packaging, Perio nonetheless reversed course and refused to sign the agreement, issuing

more threats of litigation.

98. Ultimately, at the eleventh hour, Perio refused to sign the coexistence agreement,

and continued to threaten Martelli with legal action by frivolously not approving the Redesigned

Trade Dress, which is depicted below:

FIG. 19


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99. It is obvious to any casual observer that Martelli’s Redesigned Trade Dress

simply will not likely cause consumer confusion with Perio or its BARBASOL products.

100. Perio also threatened Martelli with litigation in the United States over its

website’s use of barber pole stripes. See Exhibit 22.

101. The Redesigned Trade Dress utilizes a theme that could not possibly be viewed as

likely to confuse consumers with Perio or BARBASOL products.

102. Further, Martelli’s original trade dresses and website design did not cause, and

will not cause consumer confusion with Perio or its BARBASOL products.

103. Nonetheless, Perio has still refused to sign a coexistence agreement, and

continues to refuse to permit Perio to use its existing or the Redesigned Trade Dress without

constant threats of litigation.

104. Furthermore, Martelli was unaware that Perio was filing the aforementioned

trademark applications in the United States, and did not formally oppose them.

105. Ultimately, Martelli has been left with no choice but to commence this lawsuit, to

bring a halt to Perio’s ongoing baseless threats and threatened tortious interference, and to seek

to cancel its trademark registrations and pending applications.

106. Finally, Martelli has also been forced to commence litigation against Perio in Italy

under that nation’s laws, to seek damages and to protect its rights there.


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FIRST CAUSE OF ACTION

DECLARATORY JUDGMENT OF NON-INFRINGEMENT AND UNENFORCEABILITY

107. Martelli reinstates and realleges paragraphs 1 through 106 inclusive, as if fully set

forth herein.

108. Defendant Perio has clearly and repeatedly alleged that the use and sale by

Martelli of its past, current and proposed trade dresses and trademarks on its products and in its

advertising, would be and is an infringement of Perio’s claimed trademark and trade dress rights.

109. Infringement of a registered trademark is actionable under the Lanham Act, 15

U.S.C. § 1114(1), which permits a registrant to commence a civil action in U.S. District Court to

obtain, inter alia, injunctive relief to prevent violation of any such rights, 15 U.S.C. § 1116; and

monetary relief including profits attributable to the infringement, Id. at § 1117. Allegations of

unregistered trade dress infringement and unfair competition are actionable under the Lanham

Act, with the same relief available. Id.

110. The demand letters from Perio’s counsel constitute a clear, unambiguous claim

that Martelli’s sale of its past, current and proposed trade dress is an infringement of Perio’s

claimed trade dress, trademark and common law rights, and that Martelli must meet Perio’s

demands immediately or be faced with litigation against it and its distributors.

111. Martelli has denied that its good faith sale of items incorporating its trade dresses

and trademarks does, or will create any likelihood of confusion with Perio or its products.

112. Perio’s counsel represented in writing that “it appears that we have reached

mutually satisfactory terms” and circulated the agreement for signature. However, upon viewing

the new packaging, Perio nonetheless reversed course and refused to sign the agreement, issuing

more threats of litigation.


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113. The unreasonable demands of Perio are intended to disrupt Martelli’s lawful

business, thereby requiring an adjudication of the rights of the parties in the dispute identified

herein, before Martelli suffers further damage.

114. An actual case or controversy therefore exists within the Court’s jurisdiction,

concerning the validity of Perio’s claimed trademark and trade dress rights, and the respective

rights of the parties. See 28 U.S.C. §§ 2201, 2202; FED. R. CIV. P. 57.

115. Martelli’s past, current and proposed trademarks and trade dresses will not cause

consumer confusion, do not infringe upon any registered trademark or unregistered claimed trade

dress rights owned by Perio, do not constitute unfair competition and do not dilute any famous

trademarks or trade dresses owned by Perio.

116. Plaintiffs have no adequate remedy at law and therefore seek declaratory relief as

set forth herein.

SECOND CAUSE OF ACTION

DECLARATORY JUDGMENT OF TRADEMARK AND TRADE DRESS INVALIDITY

AND CANCELLATION OF TRADEMARKS PURSUANT TO 15 U.S.C. § 1064 and § 1119

117. Martelli reinstates and realleges paragraphs 1 through 116 inclusive, as if fully set

forth herein.

118. Perio’s Trademarks and unregistered claimed trade dresses are generic, and/or

lack necessary distinctiveness to legally function as source identifiers under applicable United

States law.

119. Perio’s conduct and threats as complained of herein have caused, and will

continue to cause, injury to Martelli.

120. Pursuant to 15 U.S.C. § 1064 and § 1119, Perio’s Trademarks should therefore be


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declared invalid and ordered cancelled, as they are generic, and/or lack necessary distinctiveness

to legally function as trademarks under applicable United States law.

121. Perio’s unregistered claimed trade dress(es) should also be declared invalid as

they are generic and/or lack necessary distinctiveness to legally function as trademarks under

applicable United States law.

122. An actual case or controversy therefore exists within the Court’s jurisdiction,

concerning the validity of Perio’s claimed trademark and trade dress rights, and the respective

rights of the parties. See 28 U.S.C. §§ 2201, 2202; FED. R. CIV. P. 57.

123. Plaintiffs have no adequate remedy at law and therefore seek declaratory relief

against the Defendant Perio as set forth herein.

PRAYER FOR RELIEF

WHEREFORE, the Plaintiffs request relief as follows:

A. A Declaration of Martelli’s lawful rights to sell its existing and proposed products

without complaint or further interference from Perio;

B. A Declaration that Martelli’s past, current and proposed trademarks and trade dresses

do not infringe upon Perio’s Trademarks or claimed unregistered trade dress rights of

Perio;

C. A Declaration that Martelli’s sale of its current and proposed products does not create

a likelihood of consumer confusion with Perio’s Trademarks or with any common law

rights of Perio in the unregistered trade dress of its products;

D. An Order pursuant to 15 U.S.C. § 1119 to rectify the Principal Register of the United

States Patent and Trademark Office canceling each of Perio’s Trademarks, and such

order shall be certified to the Director, who shall make appropriate entry upon the


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