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Robert E. Heslin Jeff Rothenberg Kevin P. Radigan Susan E. Farley Nicholas Mesiti Philip E. Hansen* Bianche E.

Schiller Wayne F. Reinke David P. Miranda Victor A. Cardona

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RoTHBNBERG

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INTELLECTUAL PROPERTY LAW


PATtrNTS . TRADEMARKS . COP\T,IGHTS

Attorneys at Law
5 Columbia Circle

Kathy Smith Dias David A. Pascarella Alana M. Fuierer Shanna K. Sanders Caroline B. Ahn Kellie S. Fredericks* Andrew K. Gonsalves Erica M. Hines
Shabrokh Falati

Brett M. Hutton
John W. Boger
George S. Blasiak * Patent Agent t HK and UK Patent Attorney

Albany, New York 12203


Telephone: (f f s) +sz-seoo

Matthew M. Hulihan Melvin Li*f


Teige P. Sheehan Rachel Leah Pearlman Kristian E. Ziegler Jacquelyn A. Graff
Of Counsel

Facsimile: (5l8) 452-5579

www.hrfmlaw.com

Jill M. Breedlove
Annette I. Kahler

July 26,2013

Via Federal Express 2-Day

Mr. Andy Edleman. VP of Marketing MTH Electric Trains 7020 Columbia Gateway Drive Columbia, Maryland 21046-1532

RE:

New York State Department of Economic Development v. MTH Electric Trains Trademark Infringement Our File No.: 3106.GEN

Dear Mr. Edleman:

NY

IT

We are intellectual property and litigation counsel to New York State Department of Economic Development (State of New York), owner of federal trademark and service mark registrations for the I v NY@ marks. The State of New York has multiple registrations for its family of I ? NY marks for a broad spectrum of goods and services, including, but not limited to USPTO Registration Nos.: 1555836; 1558319;2431105;3091182;3944680;3818931; 4002144, 4,267 ,3OJ , as well as common law trademark rights. The State of New York's federal registrations include many classifications, including Class 28, which as yoll know, covers model trains. Furthermore, the State of New York has entered into many authorized licenses in which it permits and controls the use of its mark, including licenses for toys and model trains.

MTH Electric Trains ("MTH") has been advised on multiple occasions, at least as early as May 30,2013, that its use of the I ? NY mark in its MTH O Gauge Model Train is unauthorized and infringing of the State of New York's registered trademarks. By correspondence dated May 3I,2OI3 you confirmed MTH engaged in unauthorized use of the I NY mark in relation to the sale of 99 model trains, receiving revenues of approximately $6,000." The State of New York prohibits use of the I NY mark in this manner and prohibits any other " confirms your representation that MTH is no use of the I ? NY marks without a license. This longer using the I V NY mark, and provides notice to you that any further use of the I ? NY mark or any similar variation is unauthortzed and infringing.

Rochester Office

100 Meridian Centre, Suite 250, Rochester, New York 14618

Telephone: (585) 288-4832

Facsimile: (585) 288-2010

Mr. Andy Edleman, VP of Marketing MTH Electric Trains Jtly 26,2013

2lP age
As you know, the general public and legal precedent recognizes the I ? NY mark as "one of the best known logos in the United States, if not the world". New York State Dep't of Econ. Dev. v. Ramapo Valley Brewery, lnc.,2010WL985321 (T.T.A.B. 2010). The use of this famous mark to advertise and market MTH products, without authorization violates the trademark rights of the State of New York, constitutes an unauthorized infringement upon the State of New York's statutory and common law rights, is a misappropriation of its property, and is likely to cause confusion to the general public as to an affiliation and sponsorship with the State of New York. Such conduct constitutes trademark infringement pursuant to 15 U.S.C. $1114, etseq., andtrademarkdilutionunder 15U.S.C. $1125(c),aswellasaviolationof other federal, state and common law rights of the State of New York.
For over 30 years the State of New York has invested substantial time, effort and resources in creating the respect and goodwill associated with its I ? NY marks. The State of New York cannot and will not permit use of its mark to promote and advertise MTH's commercial products. Your misguided threats of bringing a proceeding to cancel one or more of the I NY marks provides further evidence of not only your bad faith misuse of our client's mark," but a lack of understanding of trademark law as our client's registrations have repeatedly been recognized and approved by the USPTO and others, and are considered among the most valuable in the world.

In light of the multiple federal trademark registrations for the I NY marks, the " any use of the I v NY undisputed fame of the marks, the State of New York's clear prohibition, mark by MTH is considered a deliberate, willful and knowing act of infringement for which the State of New York will be entitled to seek all appropriate damages and relief, including treble damages and attorney's fees under the Lanham Act. We require a full accounting of all uses, revenues and profits resulting from the unauthorized use of the I ? NY logo, so that proper damages can be assessed.
Please be advised that this letter is provided without prejudice to all of the rights, remedies and causes of action that the State of New York has, including the recovery of damages, injunctive relief and attorney's fees. Thank you for your prompt attention.

Very truly yours,

HESLIN ROTHENBERG

Y & MESITI P.C.

vid P. Miranda

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phone:

Dear David:

4'lO.1Bl.2rB0 [nx: 4l O.r81.6122

This letter responds to your July 26, 20'13 letter. Your letter is ridiculous, and if New York paid you to write it, then it is no wonder Weiner may be its next Mayor. Your letter itself is a violation of the Lanham Act - chalked full of lies and half truths, calculated to deceive. For example, you state NY's trademark registrations "have repeatedly been recognized and approved by the USPTO and others, and are considered among the most valuable in the world." You know full well that no one thinks NY's trademark is "among the most valuable in the world." But you put the acronym "USPTO" next to "among the most valuable in the world" to create the false impression that the USPTO believes that. You also state New York's registrations "include many classifications, including Class 28, which as you know, covers model trains." But NY does not own a trademark registration in Class 28 for model trains - it owns a trademark registration in Class 28 for "plush toys." You attempted to deceive us into believing that New York's Class 28 registration actually covers model trains as opposed to the truth, that Class 28 in general includes "model trains." David, this is why people despise lawyers. Does New York know you behave like this on its behalf? I'm guessing so if they read the NY Times:
http://www. nytimes.com/2013l05l30lnyregioninew-york-challenges-a-coffee-shop-

logo.html?hp&_r=1&

http.//abovethelaw.com/2013i0Sinew-york-hearts-iptrolling/#more-247659 We are no longer using the I LOVE NEW YORK phrase. We sold 99 units of the item in question (M.T.H. model number 30-73334) for total revenue of $2,916.33 two and a half years ago. Our train car's deco was based on a real train that had been around since the 1970's. lf you make the mistake of suing MTH for this, we will defend ourselves and publicize this on all of the various web sites that take great interest in cases like this. l'm sure the people of New York will be thrilled to know that tens of thousands of dollars in taxpayer funds are being spent to chase a model railroad manufacturer for a couple hundred bucks in licensing fees, while the New York public school system continues to collapse based on a lack of resources.
lf you have any doubt about MTH's willingness to litigate, please search Pacer courts for the federal actions in which we have been involved. lf you continue to have doubt after looking at the lengthy dockets in these cases, please feel free to contact any of our adversaries in the cases to ask them about MTH's willingness to defend itself. Unless you are contacting me about accepting service of process of the complaint - something you and I both know will never happen - then kindly stop wasting our time with your quibbling over this trivial matter.

Mike Wolf President - M.T.H. Electric Trains

M.T.H. Elecrnic Tnnins 7O2O Colunbin Gnrewny Dnive Columbin, Mnnylnnd 210+6.1r72