New Balance Athletics v. Authentic Brands - Complaint

Case 1:19-cv-11792 Document 1 Filed 08/21/19 Page 1 of 29
UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS
NEW BALANCE ATHLETICS, INC.,
Plaintiff,
v. C.A. No. _____________
AUTHENTIC BRANDS GROUP, NAUTICA

APPAREL, INC., and NAUTICA OPCO LLC,
Defendants.
COMPLAINT
1. This is a design patent and trademark infringement case. Plaintiff New Balance
Athletics, Inc. (“New Balance”) is a market-leading footwear and apparel company. Defendant
Authentic Brands Group owns the NAUTICA footwear and apparel brand, which licenses the
brand to its subsidiaries Nautica Apparel, Inc. and Nautica OpCo LLC (collectively, “Nautica”).
Nautica recently adopted designs and trademarks that are virtually identical to those used by New
Balance.
2. As described more fully below, New Balance owns a design patent related to one
of its most popular shoe models, the “247.” See Exhibit A (U.S. Design Patent No. D838,464 (the
“‘464 Patent”)). Nautica recently began selling footwear that bears a design that an ordinary
observer would find to be substantially the same as the design covered by the ‘464 Patent:
NEW BALANCE NAUTICA

3. New Balance also owns federally-registered and incontestable trademark
registrations for a block capital letter “N” on footwear and apparel:
See Exhibit B (U.S. Reg. Nos. 3,282,106 and 1,308,133) (the “Block N Footwear Marks”); Exhibit
C (U.S. Reg. No. 4,477,442) (the “Block N Apparel Mark”) (together, the “Block N Mark” or
“Block N Marks”).
4. New Balance has exclusively used the Block N Footwear Marks in commerce since
the 1970s and the Block N Apparel Mark since at least as early as 1996. It has sold hundreds of
millions of pairs of shoes and pieces of apparel bearing the marks worldwide, which represent
many billions of dollars in sales. The Block N Marks are famous and embody an enormous amount
of goodwill. They are among the company’s most valuable assets.
5. Nautica recently began using a block letter “N” on footwear:
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6. Nautica also recently began using a block letter “N” on apparel:
7. Nautica’s use of a block letter “N” on footwear and apparel: (i) is likely to cause
confusion among consumers and/or suggest an affiliation, connection, or association between New
Balance and Nautica; (ii) dilutes the distinctive quality of New Balance’s famous Block N Marks;
and (iii) constitutes unfair competition.
8. The breadth of the infringement also evidences an intent to free ride on New
Balance’s famous brand.
9. Nautica’s conduct has and will irreparably harm New Balance and its substantial
goodwill. It also has and will cause monetary harm in an amount to be determined at trial.
PARTIES
10. New Balance Athletics, Inc. is a Massachusetts corporation with its principal place
of business at 100 Guest Street, Boston, Massachusetts 02135.
11. Upon information and belief, Authentic Brands Group is a Delaware Limited
Liability Company with its principal place of business at 1411 Broadway, New York, New York
10018.
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12. Upon information and belief, Nautica Apparel, Inc. is a corporation existing under
the laws of New York, and a wholly-owned subsidiary of Authentic Brands Group, with its
principal place of business at 40 W 57th Street, New York, New York 10019.
13. Upon information and belief, Nautica OpCo LLC is a corporation existing under
the laws of New York, and a wholly-owned subsidiary of Authentic Brands Group, with its
principal place of business at 40 W 57th Street, New York, New York 10019.
JURISDICTION AND VENUE
14. This Court has subject matter jurisdiction over these claims pursuant to 15 U.S.C.
§ 1121(a), 28 U.S.C. §§ 1331, 1332(a)(2), 1338(a) and (b), and this Court’s supplemental
jurisdiction under 28 U.S.C. § 1367. Plaintiff New Balance Athletics, Inc. is a citizen of
Massachusetts. Upon information and belief, Defendant Authentic Brands Group is a Delaware
Limited Liability Company and is a citizen of Delaware. Defendants Nautica Apparel, Inc. and
Nautica OpCo LLC are citizens of New York. As such, there is complete diversity of the parties.
The matter in controversy exceeds $75,000, exclusive of interests and costs.
15. Upon information and belief, venue is proper in this Court pursuant to 28 U.S.C.
§ 1391(b) and (c) because this is the judicial district where: (i) a substantial part of the events
giving rise to the claims occurred; and (ii) where Nautica is subject to personal jurisdiction.
16. Upon information and belief, Nautica regularly solicits and conducts business in
Massachusetts. Specifically, Nautica licenses, promotes, and sell its goods, including the goods at
issue here, within Massachusetts. In addition, upon information and belief, Nautica or its agents
maintain websites available in Massachusetts that facilitate and/or enable users to purchase the
infringing goods from Massachusetts.
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FACTS
New Balance
17. New Balance is a private company that was founded in 1906. Today, New Balance
is one of the largest athletic shoe companies in the world, with over 4,000 employees and
approximately $4.1 billion in annual sales worldwide in 2018. It is the only major company that
manufactures footwear in factories in the United States.
18. Since its earliest days, New Balance has focused on fit and authenticity as its core
brand message. New Balance is one of the few athletic footwear manufacturers to make shoes in
true width sizing, rather than the more common narrow and wide. Because of its brand qualities,
New Balance has some of the most brand-loyal customers in the marketplace.
New Balance’s “247”
19. In 2017, New Balance began selling a new shoe model named the “247” that uses
a unique design on the “upper” of the shoe:
20. The 247 was an instant success. Articles about its launch appeared widely in the
fashion and footwear press, with more than 200,000,000 impressions in a two-month period.
21. For example, widely-followed new-media brand Highsnobiety published several
articles about the 247 around the time of its release, with titles such as “The New Balance 247
Classic Is the Perfect Lifestyle Runner,” “New Balance Creates the Perfect 24/7 Companion with
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New 247 Luxe Model,” and “New Balance’s Latest 247 Travels From Day to Night in The City
That Never Sleeps.” See Exhibit D, last visited August 19, 2019.
22. Likewise, Footwear News and Runner’s World published articles featuring the 247,
including “The 5 Sneakers You Didn’t Know You Wanted for Christmas,” “The 5 Sneakers Every
Man in His 30s Should Own,” and “The 10 Hottest New Balance 247s for Wearing All Day, Every
Day.” See Exhibit E, last visited August 19, 2019.
23. New Balance has invested a significant amount of money to advertise the 247s. In
2017 alone, New Balance spent over $1,000,000 advertising the model in North America.
24. It is one of New Balance’s most popular products. In its first full year of sales, New
Balance sold more than 750,000 pairs of 247s in North America, and over the span of three years,
New Balance sold almost 2,000,000 pairs of 247s in North America.
New Balance’s Intellectual Property
The ‘464 Patent
25. New Balance owns the entire right, title, and interest in and to the ‘464 Patent
related to the 247 shoe model. The ‘464 Patent was issued by the U.S. Patent Office to New
Balance on January 22, 2019 as U.S. Design Patent No. D838,464, and is titled “Shoe Upper.” See
Exhibit A.
26. The ’464 Patent has one claim: “[t]he ornamental design for a shoe upper, as shown
and described.” FIG. 1 of the Patent is reproduced below, which depicts a lateral side view of the
claimed shoe upper in solid lines:
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FIG. 2 and FIG 3 of the patent show additional views. See id.
The Block N Marks
27. In the 1970s, New Balance released a new model (the 320) that was its first shoe to
feature a block N mark. The shoe was an enormous success. Its release benefitted from two
coinciding events: the rising popularity of running, and its selection by Runner’s World as the best
running shoe in the world:
28. Since that time, New Balance has exclusively used a distinctive Block N Mark to
identify its goods. A block N has appeared on the side of nearly all New Balance footwear sold
for more than forty years.
29. During that span, the Block N Mark also has appeared in virtually every New
Balance footwear advertisement. For example:
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30. Aside from its use of the Block N Mark on shoes in advertisements, New Balance
has featured the Block N in the “headline copy” of its advertisements. For example:
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31. The Block N Mark is featured in many of New Balance’s social media posts on
Instagram and Facebook, where New Balance has an audience of over 3,200,000 Instagram
followers and over 8,000,000 Facebook followers.
32. New Balance’s current annual global marketing budget is well over
$100,000,000—the vast majority of which is used toward marketing and advertising that
incorporates the Block N Mark.
33. Today, the Block N Mark is used on approximately 96,000,000 pairs of New
Balance shoes sold annually in over 68 countries worldwide.
34. In addition to its use on footwear, New Balance uses its Block N Mark on a variety
of related goods. Since at least as early as 1996, New Balance has used the mark on a wide range
of apparel. For example:
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35. New Balance has been diligent in protecting its rights in its trademarks. It owns
an incontestable federal registration for the block capital letter “N” for footwear as shown here:
See Exhibit B (U.S. Reg. Nos. 3,282,106 (block capital letter “N,” issued August 21, 2007 for
“athletic footwear” in class 25) and 1,308,133 (block capital letter “N” located at an angle on the
side of a shoe, issued December 4, 1984 for the same). It also owns an incontestable federal
registration for the same block letter “N” for apparel. See Exhibit C (U.S. Reg. No. 4477442
(issued February 4, 2014 for “[a]thletic apparel, namely, shirts, pants, jackets, footwear, hats and
caps, athletic uniforms; [s]weatshirts” in class 25)).
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36. In addition to its domestic registrations, New Balance owns trademark registrations
for its Block N Mark around the world, including in: Mexico, Japan, Australia, Canada, Chile,
China, Hong Kong, New Zealand, Russian Federation, Singapore, South Africa, Albania,
Armenia, Benelux, Bosnia-Herzegovina, Croatia, Czech Republic, Bulgaria, Estonia, India, South
Korea, Finland, Kosovo, Latvia, Lithuania, Austria, North Macedonia, Montenegro, Norway,
Poland, Serbia, Slovak Republic, Turkmenistan, Romania, Taiwan, Turkey, Vietnam, Argentina,
Cuba, Colombia, Guatemala, Nicaragua, Panama, Paraguay, Peru, Uruguay, United Kingdom,
Iceland, Ireland, France, Germany, Spain, Denmark, Ukraine, Portugal, Venezuela, Greece, Egypt,
Jordan, Lebanon, United Arab Emirates, Madagascar, Morocco, OAPI, Macao, Malaysia, Tunisia,
Zambia, Zimbabwe, Oman, Hungary, and Sweden.
37. New Balance’s longstanding exclusive use, widespread marketing, and worldwide
sales have made the Block N Mark famous. Indeed, numerous footwear and fashion commentators
have expressly identified the mark as “famous” or “iconic.” For example:
 “In 1976, New Balance launched the 320, the first New Balance sneaker to feature the now-
famous ‘N‘ logo.” See Exhibit F, last visited August 19, 2019.
 “Enter the 1970s and the running phenomenon explodes in the US. The famous letter ‘N’
was born on the New Balance shoe and the conscious decision to ‘name’ their shoes with
numbers over model names.” Id.
 “The famous “N” logo is stitched onto the lateral side of the sneaker while sitting atop an
ENCAP midsole for comfort and durability.” Id.
 “…the guy who first emblazoned the world famous ‘N’ on the lateral panels of their iconic
new balance mens trainers.” Id.
 “The iconic N logo, collar strap, and rubber tongue label are reflective and pay homage to
New Balance running models from the past.” Id.
 “In leading up to the release of the 990v4, press play below to hear Terry Heckler, the
designer of New Balance’s iconic “N” logo, speak on the inspiration behind his original
design, the 990 and the history of the brand.” Id.
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38. The Block N Mark is such a key element of the brand that the company recently
began selling shoe models with interchangeable “N” logos, which allow wearers to customize their
look while remaining on brand:
See Exhibit G, last visited August 19, 2019. Engaging the customer with the logo in this way
uniquely communicates and emphasizes its independent source identifying quality.
39. Like many successful footwear and apparel brands, New Balance collaborates with
third-party brands and fashion companies to develop “special edition” products.
40. For example, New Balance collaborated with Sesame Street to create a line of
children’s sneakers bearing the famous Block N Mark and the Sesame Street characters. The
models were nationally advertised on the children’s television network Nickelodeon, among other
media. Other collaborations with famous brands on shoes bearing the famous Block N Mark
include: Charles Schultz’s Peanuts characters, Marvel’s Spiderman and Black Panther characters,
Disney characters, Danner, Stance (including a collaboration involving the 247 model), and
Burton.
41. New Balance also collaborated with fashion company J. Crew to release several
“special editions” that all bore the famous Block N Mark. The collaborations were widely
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promoted through paid and organic advertising and publicity. For example, the shoes appeared on
the cover and inside several editions of the J. Crew catalog, which is delivered to millions of
customer homes monthly.
42. New Balance also collaborated with hat maker New Era on a limited-edition
shoe/hat combination package that is expressly focused on the “N” logo. The package includes a
pair of New Balance shoes with the interchangeable “N” logos described above. It also comes
with a “blank” New Era hat that also can attach the “N” logos:
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See Exhibit H, last visited August 19, 2019.
43. As a result of these successful collaborations, New Balance customers understand
that the company often uses its Block N Mark in collaboration with other companies.
Nautica And Its Infringing Conduct
44. Upon information and belief, Nautica is a nautical-influenced American sportswear
brand for men, women, and children that was founded in 1983. Among other goods, it sells
footwear and apparel.
45. Upon information and belief, Defendant Authentic Brands Group, owns the
NAUTICA brand, which it licenses to its subsidiaries, Defendants Nautica Apparel, Inc. and
defendant Nautica OpCo LLC.
46. Upon information and belief, Nautica recently began marketing a shoe named the
“Packer.” As shown below, the Nautica Packer uses an ornamental design on its upper:
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47. Upon information and belief, the Nautica Packer shoes are available for sale in
Massachusetts for approximately $30.00.
48. The design on the Nautica Packer is virtually identical to the ornamental design
covered by New Balance’s ‘464 Patent:
49. An ordinary observer of Nautica’s shoe upper and New Balance’s patented design,
giving such attention that a footwear purchaser usually gives, would find the two designs to be
substantially the same. The overall impression of the two designs is substantially the same. It is
axiomatic that the ’464 Patent is infringed by Nautica’s design because in the eye of an ordinary
observer they are substantially the same.
50. Upon information and belief, Nautica recently began using a block letter “N” on
various types of footwear:
NEW BALANCE NAUTICA
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51. Upon information and belief, Nautica recently began using a block letter “N” on
various types of apparel:
52. Nautica’s intentional adoption of a block letter “N” on footwear and apparel is
likely to cause confusion among consumers and/or suggest an affiliation, connection, or
association between New Balance and Nautica. Nautica’s use of a block letter “N” is likely to
dilute the distinctive source identifying quality of the famous Block N Marks. Nautica’s use of a
block letter “N” also constitutes unfair competition.
53. Upon information and belief, given the fame of New Balance’s Block N Marks,
Nautica must have known of New Balance’s rights in the marks. Also, given New Balance’s
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global registrations for the Block N Marks, Nautica had at least constructive notice of New
Balance’s rights in those marks. As a result, Nautica’s infringement is intentional. In addition,
Nautica intended to dilute the distinctive source identifying quality of the Block N Marks.
54. Nautica’s infringing goods and New Balance’s goods are marketed and sold to
overlapping classes of purchasers insofar as the Nautica products are a casual “lifestyle” or fashion
footwear and apparel and many of New Balance’s products using the marks are in the same
category.
55. Nautica and New Balance advertise through overlapping marketing channels
insofar as they use popular magazines and the Internet, including the same social media, to
advertise the relevant goods. In addition, the parties’ relevant goods are routinely the topic of
discussion in the same fashion magazines and on popular fashion websites, blogs, and social media
posts.
56. Nautica and New Balance sell the relevant goods through overlapping sales
channels insofar as they both sell their goods through brick and mortar stores (such as Nordstrom,
Kohl’s, and Macy’s) and through the Internet (such as Amazon).
57. Like New Balance, Nautica is known for its collaborations with others. Notably, it
collaborates with individuals and companies who also are associated with New Balance.
58. For example, in 2017 and 2018, Nautica partnered with rapper and designer Lil
Yachty. See Exhibit I, last visited August 19, 2019 (“And after much ado and anticipation, the
two entities launched their first collaboration—The Lil Yachty Collection by Nautica—this
week.”). Among relevant consumers, Lil Yachty is a well-known New Balance supporter, even
“name-dropping” the brand in his hit song “Minnesota.” See also id. (“Pausing briefly and staring
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into the camera, Lil Yachty professed on an episode of Complex’s Sneaker Shopping, “Oh my
god, I love New Balance.”).
59. Nautica also has collaborated with New Era, which collaborated with New Balance
on the block “N” focused special-edition package described above.
60. Nautica’s participation in collaborations increases the likelihood of consumer
confusion concerning an affiliation, connection, or association between New Balance and Nautica
because consumers are likely to believe that New Balance authorized or licensed Nautica to use
its famous Block N Mark on its goods. Had New Balance authorized Nautica to design special-
edition products, it might have been a highly successful collaboration—like New Balance’s
collaboration with J. Crew. New Balance, however, never authorized or licensed Nautica to use
its trademarks.
61. Nautica’s use of a block letter “N” is likely to cause point-of-sale, initial interest,
and post-sale confusion, to the irreparable harm and detriment of New Balance and the substantial
goodwill it has developed in Block N Marks.
62. As a result of the foregoing, New Balance has and will suffer irreparable harm and
monetary harm in an amount to be determined at trial.
COUNT I
(Patent Infringement - 35 U.S.C. § 271)
63. New Balance repeats and realleges the allegations contained in paragraphs
1 through 62 above as if fully set forth herein.
64. Nautica has infringed and continues to infringe all elements of the claim in New
Balance’s ‘464 Patent in violation of 35 U.S.C. § 271 by, among other things, making, selling, and
offering for sale the Packer shoe and other footwear embodying New Balance’s patented design
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for such shoes (the “ornamental design for a shoe upper”), and will continue to do so unless
enjoined by this Court.
65. Nautica’s infringing acts include making, using, selling, offering to sell, and
importing into the United States products covered by the ‘464 Patent including, but not limited to,
the Packer shoe and other footwear and/or actively inducing infringement by assisting, overseeing,
directing, and personally participating in the design, marketing, advertising, and sales of the Packer
shoe and other infringing footwear.
66. Upon information and belief, Nautica has sold, made offers to sell, continues to
sell, and/or offers to sell products infringing the ‘464 Patent throughout the United States and
elsewhere, and within Massachusetts.
67. Nautica’s acts of infringement have been without express or implied license by
New Balance, are in violation of New Balance’s rights, and will continue unless enjoined by this
Court.
68. Upon information and belief, Nautica has been made aware of and had knowledge
of the ‘464 Patent, and Nautica’s infringement of the ‘464 Patent has been, and continues to be,
with full knowledge of the ‘464 Patent and is a deliberate and willful infringement thereof.
69. This is an exceptional case in view of Nautica’s activities and blatant infringement.
70. New Balance has been, is being, and will continue to be injured and has suffered,
is suffering, and will continue to suffer injury and damages for which it is entitled to relief under
at least 35 U.S.C. §§ 281, 284, 285, and 289.
71. Nautica has caused, is causing, and will continue to cause irreparable harm to New
Balance for which there is no adequate remedy at law and for which New Balance is entitled to
injunctive relief under at least 35 U.S.C. § 283.
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COUNT II
(Trademark Infringement—15 U.S.C. § 1114)
(The Block N Marks)
73. As described above, New Balance owns the distinctive and federally registered
Block N Marks as depicted in U.S. Reg. Nos. 3,282,106 and 1,308,133 for footwear and U.S. Reg.
No. 4,477,442 for apparel.
74. New Balance’s ownership and exclusive use in commerce of the Block N Marks
predates the use by Nautica of the block letter “N” on footwear and apparel.
75. Upon information and belief, Nautica’s conduct is willful and intentional and
intended to free-ride off the goodwill associated with the Block N Marks. Nautica is and was at
all relevant times both actually and constructively aware of New Balance’s prior use, ownership,
and registration, and Nautica’s conduct is therefore also willful and intentional.
76. Nautica uses the block letter “N” mark in interstate commerce in connection with
the sale, offering for sale, distribution, and/or advertising of its footwear and apparel products.
77. Nautica’s use in commerce of the block letter “N” in connection with footwear and
apparel, as described above, constitutes infringement of the trademarks that are the subjects of U.S.
Reg. Nos. 3,282,106 and 1,308,133 (footwear) and U.S. Reg. No. 4,477,442 (apparel), in violation
of 15 U.S.C. § 1114, in that it is without New Balance’s consent and is likely to cause confusion,
mistake, and/or deception among consumers.
78. As a direct and proximate result of Nautica’s violations of 15 U.S.C. § 1114, New
Balance has been and will continue to be damaged.
79. Upon information and belief, Nautica has realized, and continues to realize,
substantial revenues, profits, and other benefits rightfully belonging to New Balance as a result of
its wrongful conduct.
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80. Nautica’s conduct is causing and will continue to cause New Balance to suffer
irreparable harm and, unless Nautica is restrained, New Balance will continue to be so damaged,
because it has no adequate remedy at law.
COUNT III
(False Designation of Origin—15 U.S.C. § 1125(a))
(The Block N Marks)
82. As described above, New Balance owns the distinctive Block N Marks in
connection with footwear and apparel.
83. New Balance’s ownership and exclusive use in commerce of the Block N Marks in
connection with footwear and apparel predates the use by Nautica of the block letter “N” in
85. Nautica uses the block letter “N” in interstate commerce in connection with the
sale, offering for sale, distribution, and/or advertising of its footwear and apparel products.
86. Nautica’s use in commerce of the block letter “N” in connection with footwear and
apparel, as described above, constitutes false designation of origin in violation of 15 U.S.C.
§ 1125(a)(1)(A) in that it is likely to cause confusion, to cause mistake, or to deceive as to the
affiliation, connection, or association of Nautica with New Balance and/or as to the origin,
sponsorship, or approval by New Balance of Nautica’s goods, services, or commercial activity.
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COUNT IV
(Dilution—15 U.S.C. § 1125(c))
(The Block N Marks)
91. As described above, New Balance owns the distinctive and federally registered
Block N Marks (U.S. Reg. Nos. 3,282,106 and 1,308,133 for footwear and U.S. Reg. No.
4,477,442 for apparel).
92. New Balance’s ownership and exclusive use in commerce of the Block N Marks in
93. Through consistent and continued use, product promotion, and consumer and
industry recognition, New Balance has developed the Block N Marks to the point that they are
famous. Nautica did not begin using the block letter “N” in commerce until after the Block N
Marks became famous.
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95. Nautica’s block letter “N” used in the context of the same goods is likely to cause
dilution of the distinctive qualities of the Block N Marks in violation of 15 U.S.C. § 1125(c).
COUNT V
(Trademark Infringement—Mass. Gen. L. C. 110H §§ 11-14, 16)
100. As described above, New Balance owns valid and protectable trademark rights in
the distinctive Block N Marks in connection with footwear and apparel.
101. New Balance’s ownership and exclusive use in commerce of its Block N Marks in
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intended to free-ride off of the goodwill associated with the Block N Marks. Nautica is and was
at all relevant times both actually and constructively aware of New Balance’s prior use, ownership,
103. Nautica’s adoption and use of a confusingly similar block letter “N” in
Massachusetts and elsewhere in connection with the sale, offering for sale, distribution, and/or
advertising of its footwear and apparel is likely to cause confusion among relevant consumers.
104. Nautica’s use of confusingly similar mark, as described above, constitutes
trademark infringement in violation of Mass. Gen. Laws ch. 110H §§ 12 and 14 in that it is without
New Balance’s consent and is likely to cause confusion, mistake, and/or deception among
consumers, all to the irreparable injury of New Balance and the goodwill it has developed in the
Block N Marks.
105. As a direct and proximate result of Nautica’s violations of Mass. Gen. Laws ch.
110H §§ 12 and 14, New Balance has been and will continue to be damaged.
COUNT VI
(Unfair Competition—Mass. Gen. L. C. 93A)
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109. New Balance and Nautica are persons engaged in the conduct of trade or commerce
within the meaning of Mass. Gen. Laws ch. 93A, § 11.
110. Nautica’s unlawful acts, conduct, and practices described above occurred and are
occurring primarily and substantially within the Commonwealth of Massachusetts.
111. Nautica’s acts, conduct, and practices described above, including without limitation
the confusingly similar use of the block letter “N” in connection with the promotion, sale, and/or
distribution of footwear and apparel products in Massachusetts, constitute unfair methods of
competition and/or unfair or deceptive acts or practices, which are unlawful under Mass. Gen.
Laws ch. 93A.
112. As a direct and proximate result of Nautica’s violations of Mass. Gen. Laws ch.
93A, New Balance has been damaged and will continue to be damaged.
COUNT VII
(Massachusetts Statutory Dilution—Mass. Gen. L. C. 110H § 16)
114. As described above, New Balance owns valid and protectable trademark rights in
the distinctive Block N Marks in connection with footwear and apparel.
115. New Balance’s ownership and exclusive use in commerce of its Block N Marks in
intended to free-ride off of the goodwill associated with the Block N Marks. Nautica is and was
at all relevant times both actually and constructively aware of New Balance’s prior use, ownership,
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117. Nautica’s adoption and use of a confusingly similar block letter “N” as described
above, constitutes statutory dilution in that it is without New Balance’s consent and create and will
continue to create a likelihood of injury to New Balance’s reputation and/or a likelihood of dilution
of the distinctive quality of the Block N Marks in violation of Mass. Gen. Laws ch. 11H § 13.
118. As a direct and proximate result of Nautica’s dilution of the Block N Marks, New
PRAYER FOR RELIEF
WHEREFORE, New Balance respectfully requests the following relief:
A. That this Court enter judgment that: (i) Nautica has infringed the ‘464 Patent in
violation of 35 U.S.C. § 271; (ii) Nautica has infringed the Block N Marks in violation of 15 U.S.C.
§ 1114; (iii) Nautica’s use of the block letter “N” constitutes false designation of origin in violation
of 15 U.S.C. § 1125; (iv) Nautica has diluted the Block N Marks in violation of 15 U.S.C.
§ 1125(c); (v) Nautica has infringed the Block N Marks in violation of Mass. Gen. L. C. 110H
§§ 11-14, 16; (vi) Nautica’s unlawful actions described herein constitute unfair competition and/or
unfair or deceptive acts or practices, in violation of Mass. Gen. L. C. 93A; (vii) Nautica has diluted
the Block N Marks in violation of Mass. Gen. L. C. 110H § 16; and that all of the foregoing
wrongful activities by Nautica were willful;
B. That this Court enjoin Nautica, its employees, agents, servants, and all in privity or
acting in concert with any of them, from using the Block N Marks, or any block letter “N” or any
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derivative(s) thereof or any design(s) confusingly similar thereto, in commerce on Nautica’s
footwear and apparel;
C. That this Court enter an injunction against further infringement of the ‘464 Patent,
further infringement and dilution of the Block N Marks, further false designation of origin
concerning the Block N Marks, and further unfair competition and unfair or deceptive acts or
practices related thereto, by Nautica and its employees, agents, servants, and all in privity or acting
in concert with any of them, including at least from selling, offering to sell, distributing, importing,
or advertising the infringing products, or any other footwear or apparel products that use a copy,
reproduction, or colorable imitation of the ‘464 Patent or the Block N Marks;
D. That this Court enter an order recalling all of Nautica’s footwear and apparel
products bearing the block letter “N” presently manufactured, sold, and/or distributed, and
providing for a full refund for all recalled infringing products;
E. That this Court enter an order directing the destruction of: (i) all infringing
products, including all recalled infringing products; (ii) any other footwear or apparel products that
use a copy, reproduction, or colorable imitation of the Block N Marks in Nautica’s possession or
control; (iii) all advertising materials related to the infringing products in Nautica’s possession,
custody, or control, including on the Internet, pursuant to at least 15 U.S.C. § 1118;
F. That this Court award New Balance damages adequate to compensate New Balance
for the patent infringement that has occurred pursuant to 35 U.S.C. § 284, or an award of Nautica’s
profits from its patent infringement pursuant to 35 U.S.C. § 289, together with prejudgment interest
and costs and reasonable attorneys’ fees, pursuant to 35 U.S.C. §§ 284 and 285;
G. That this Court require an accounting of profits by Nautica;
27
H. That this Court award New Balance Nautica’s profits, New Balance’s actual
damages, enhanced damages, exemplary damages, costs, prejudgment and post judgment interest,
and reasonable attorneys’ fees pursuant to at least 15 U.S.C. §§ 1114(1), 1125(a), 1125(c), 1116,
and/or 1117, and Mass. Gen. L. C. 93A and 110H §§ 11-14, 16; and
I. That this Court award New Balance such other and further relief that this Court
deems just and proper.
28
JURY DEMAND
New Balance demands a trial by jury of all claims so triable.
Respectfully submitted,
NEW BALANCE ATHLETICS, INC.

By its attorneys,
/s/ Mark S. Puzella

ORRICK, HERRINGTON & SUTCLIFFE LLP
Mark S. Puzella (BBO# 644850)
R. David Hosp (BBO# 634091)
Sheryl K. Garko (BBO# 657735)
500 Boylston Street, Suite 1850
Boston, MA, 02116-3740
Telephone: 617.880.1800
mpuzella@orrick.com
dhosp@orrick.com
sgarko@orrick.com
Elizabeth E. Brenckman (pro hac vice forthcoming)

51 W 52nd Street
New York, NY 10019-6142
Telephone: 212.506.3535
ebrenckman@orrick.com
Dated: August 21, 2019
29
Case 1:19-cv-11792 Document 1-1 Filed 08/21/19 Page 1 of 5
EXHIBIT A
EXHIBIT B
EXHIBIT C
EXHIBIT D
nimbus screenshot app print 8/19/2019, 5:57 PM
screenshot-www.highsnobiety.com-2019.08.19-17_57_16
https://www.highsnobiety.com/2017/02/21/new-balance-247-classic-pack/
19.08.2019
moz-extension://c321f26e-023d-47da-88e4-9dde5a27d883/print.html
https://www.highsnobiety.com/2016/12/19/new-balance-247-luxe-sneaker/
19.08.2019
https://www.highsnobiety.com/2016/12/19/new-balance-247-luxe-sneaker/
19.08.2019
https://www.highsnobiety.com/2017/02/07/new-balance-247-sport-lookbook/
19.08.2019
EXHIBIT E
screenshot-footwearnews.com-2019.08.19-18_51_28
https://footwearnews.com/2017/focus/athletic-outdoor/5-sneakers-you-didnt-know-you-wanted-for-christmas-466714/
19.08.2019
screenshot-footwearnews.com-2019.08.19-18_53_18
https://footwearnews.com/2018/shop/sneakers-deals/best-mens-sneakers-you-should-own-in-your-30s-517185/
19.08.2019
screenshot-www.runnersworld.com-2019.08.19-18_04_22
https://www.runnersworld.com/gear/a27275070/new-balance-247/
19.08.2019
EXHIBIT F
nimbus screenshot app print 8/20/2019, 8:07 AM
screenshot-www.heddels.com-2019.08.20-08_07_23
https://www.heddels.com/2019/07/new-balance-brand-history-philosophy-iconic-products/
20.08.2019
screenshot-www.jackrabbit.com-2019.08.19-19_01_50
https://www.jackrabbit.com/info/blog/new-balance-running-born-in-boston/
19.08.2019
screenshot-justfreshkicks.com-2019.08.19-19_07_39
https://justfreshkicks.com/new-balance-made-in-usa-grey-997/
19.08.2019
screenshot-www.soleheaven.com-2019.08.19-19_09_29
https://www.soleheaven.com/blogs/news/new-balance-mens-trainers
19.08.2019
screenshot-hypebeast.com-2019.08.19-19_18_37
https://hypebeast.com/2017/1/new-balance-247-sport-debut-collection
19.08.2019
https://www.highsnobiety.com/2016/03/16/new-balance-990v4/
19.08.2019
EXHIBIT G
https://www.highsnobiety.com/p/new-balance-997-interchangeable-logos-release-date-price/
19.08.2019
EXHIBIT H
screenshot-www.neweracap.com-2019.08.19-19_25_07
https://www.neweracap.com/LIFESTYLE/NEW-BALANCE-997H-%26-RETRO-CROWN-9FIFTY-SNAPBACK/p/12175047
19.08.2019
screenshot-tsdr.uspto.gov-2019.08.19-19_27_03
https://tsdr.uspto.gov/#caseNumber=4,477,442&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
19.08.2019
EXHIBIT I
screenshot-www.esquire.com-2019.08.20-08_12_13
https://www.esquire.com/style/mens-fashion/g13530673/nautica-lil-yachty-collaboration/
20.08.2019
screenshot-www.complex.com-2019.08.19-19_30_11
https://www.complex.com/sneakers/2018/02/how-the-new-balance-990-went-from-hustlers-sneaker-to-the-coolest-dad-shoe
19.08.2019
JS 44 (Rev. 0 ) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS

ÒÛÉ ÞßÔßÒÝÛ ßÌØÔÛÌ×ÝÍô ×ÒÝò ßËÌØÛÒÌ×Ý ÞÎßÒÜÍ ÙÎÑËÐô ÒßËÌ×Ýß ßÐÐßÎÛÔô ×ÒÝòô ¿²¼
ÒßËÌ×Ýß ÑÐÝÑ ÔÔÝ
(b) County of Residence of First Listed Plaintiff Í«ºº±´µ County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
ÑÎÎ×ÝÕô ØÛÎÎ×ÒÙÌÑÒ ú ÍËÌÝÔ×ÚÚÛ ÔÔÐ
ëðð Þ±§´-¬±² Í¬®»»¬ô Í«·¬» ïèëð
Þ±-¬±²ô Óß ðîïïê 617-880-1800
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
1 U.S. Government 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place 4 4
of Business In This State
2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
Citizen or Subject of a 3 3 Foreign Nation 6 6

Foreign Country
IV. NATURE OF SUIT (Place an “X” in One Box Only) Click here for: Nature of Suit Code Descriptions.
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure 422 Appeal 28 USC 158 375 False Claims Act
120 Marine 310 Airplane 365 Personal Injury - of Property 21 USC 881 423 Withdrawal 376 Qui Tam (31 USC
130 Miller Act 315 Airplane Product Product Liability 690 Other 28 USC 157 3729(a))
140 Negotiable Instrument Liability 367 Health Care/ 400 State Reapportionment
150 Recovery of Overpayment 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS 410 Antitrust
& Enforcement of Judgment Slander Personal Injury 820 Copyrights 430 Banks and Banking
151 Medicare Act 330 Federal Employers’ Product Liability 830 Patent 450 Commerce
152 Recovery of Defaulted Liability 368 Asbestos Personal 835 Patent - Abbreviated 460 Deportation
Student Loans 340 Marine Injury Product New Drug Application 470 Racketeer Influenced and
(Excludes Veterans) 345 Marine Product Liability 840 Trademark Corrupt Organizations
153 Recovery of Overpayment Liability PERSONAL PROPERTY LABOR SOCIAL SECURITY 480 Consumer Credit
of Veteran’s Benefits 350 Motor Vehicle 370 Other Fraud 710 Fair Labor Standards 861 HIA (1395ff) 485 Telephone Consumer
160 Stockholders’ Suits 355 Motor Vehicle 371 Truth in Lending Act 862 Black Lung (923) Protection Act
190 Other Contract Product Liability 380 Other Personal 720 Labor/Management 863 DIWC/DIWW (405(g)) 490 Cable/Sat TV
195 Contract Product Liability 360 Other Personal Property Damage Relations 864 SSID Title XVI 850 Securities/Commodities/
196 Franchise Injury 385 Property Damage 740 Railway Labor Act 865 RSI (405(g)) Exchange
362 Personal Injury - Product Liability 751 Family and Medical 890 Other Statutory Actions
Medical Malpractice Leave Act 891 Agricultural Acts
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 790 Other Labor Litigation FEDERAL TAX SUITS 893 Environmental Matters
210 Land Condemnation 440 Other Civil Rights Habeas Corpus: 791 Employee Retirement 870 Taxes (U.S. Plaintiff 895 Freedom of Information
220 Foreclosure 441 Voting 463 Alien Detainee Income Security Act or Defendant) Act
230 Rent Lease & Ejectment 442 Employment 510 Motions to Vacate 871 IRS—Third Party 896 Arbitration
240 Torts to Land 443 Housing/ Sentence 26 USC 7609 899 Administrative Procedure
245 Tort Product Liability Accommodations 530 General Act/Review or Appeal of
290 All Other Real Property 445 Amer. w/Disabilities - 535 Death Penalty IMMIGRATION Agency Decision
Employment Other: 462 Naturalization Application 950 Constitutionality of
446 Amer. w/Disabilities - 540 Mandamus & Other 465 Other Immigration State Statutes
Other 550 Civil Rights Actions
448 Education 555 Prison Condition
560 Civil Detainee -
Conditions of
Confinement
V. ORIGIN (Place an “X” in One Box Only)
1 Original 2 Removed from 3 Remanded from 4 Reinstated or 5 Transferred from 6 Multidistrict 8 Multidistrict
Proceeding State Court Appellate Court Reopened Another District Litigation - Litigation -
(specify) Transfer Direct File
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
ïë ËòÍòÝò y ïïîïø¿÷ô 1114, 1125, îè ËòÍòÝò y ïííïô ïííîø¿÷øî÷ô ïííèø¿÷ ¿²¼ ø¾÷ô îè ËòÍòÝò y ïíêé, 35 U.S.C. § 271
VI. CAUSE OF ACTION Brief description of cause:
Ü»-·¹² Ð¿¬»²¬ ¿²¼ Ì®¿¼»³¿®µ ×²º®·²¹»³»²¬
VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. Over $75,000 JURY DEMAND: Yes No
VIII. RELATED CASE(S)
(See instructions):
IF ANY JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
ðèñî1ñîðïç /-ñ Ó¿®µ Íò Ð«¦»´´¿ (BBO# 644850)
FOR OFFICE USE ONLY
RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
1. Title of case (name of first party on each side only) ÒÛÉ ÞßÔßÒÝÛ ßÌØÔÛÌ×ÝÍô ×ÒÝò ª ßËÌØÛÒÌ×Ý ÞÎßÒÜÍ ÙÎÑËÐ
2. Category in which the case belongs based upon the numbered nature of suit code listed on the civil cover sheet. (See local
rule 40.1(a)(1)).
I. 4 0, 41 , 4 , 535, 830*, 8 , 893, R.23, REGARDLESS OF NATURE OF SUIT.
II. 110, 130, 190, 196, 370, 37 , 440, 442, 443, 445, 446, 448, 820*, 840*, 8 .
120, 150, 151, 152, 153, 195, 210, 220, 24 , 310, 315, 330, 340, 345, 350, 355, 360, 36 ,
ì III. 367, 368, 37 , 38 , 422, 423, 4 0, 460, 462, 463, 465, 510, 530, 540, 550, 555, 625,
690, 7 , 791, 861-865, 8 0, 8 , 950.
*Also complete AO 120 or AO 121. for patent, trademark or copyright cases.
3. Title and number, if any, of related cases. (See local rule 40.1(g)). If more than one prior related case has been filed in this
district please indicate the title and number of the first filed case in this court.
Ò±²»
4. Has a prior action between the same parties and based on the same claim ever been filed in this court?
YES NO ì
5. Does the complaint in this case question the constitutionality of an act of congress affecting the public interest? (See 28 USC
§2403)
YES NO ì
If so, is the U.S.A. or an officer, agent or employee of the U.S. a party?
YES NO ì
6. Is this case required to be heard and determined by a district court of three judges pursuant to title 28 USC §2284?
YES NO ì
7. Do all of the parties in this action, excluding governmental agencies of the United States and the Commonwealth of
Massachusetts (“governmental agencies”), residing in Massachusetts reside in the same division? - (See Local Rule 40.1(d)).
YES ì NO
A. If yes, in which division do all of the non-governmental parties reside?
Eastern Division ì Central Division Western Division
B. If no, in which division do the majority of the plaintiffs or the only parties, excluding governmental agencies,
residing in Massachusetts reside?
Eastern Division Central Division Western Division
8. If filing a Notice of Removal - are there any motions pending in the state court requiring the attention of this Court? (If yes,
submit a separate sheet identifying the motions)
YES NO
(PLEASE TYPE OR PRINT)

ATTORNEY'S NAME Ó¿®µ Íò Ð«¦»´´¿ (BBO# 644850)
ADDRESS ëðð Þ±§´-¬±² Í¬®»»¬ô Í«·¬» ïèëð Þ±-¬±²ô Óßô ðîïïê

TELEPHONE NO. 617-880-1896
(CategoryForm -201 .wpd )

New Balance Athletics v. Authentic Brands - Complaint

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Case 1:19-cv-11792 Document 1 Filed 08/21/19 Page 1 of 29

UNITED STATES DISTRICT COURT

NEW BALANCE ATHLETICS, INC.,

v. C.A. No. _____________

AUTHENTIC BRANDS GROUP, NAUTICA

NEW BALANCE NAUTICA

3. New Balance also owns federally-registered and incontestable trademark

registrations for a block capital letter “N” on footwear and apparel:

of goodwill. They are among the company’s most valuable assets.

5. Nautica recently began using a block letter “N” on footwear:

6. Nautica also recently began using a block letter “N” on apparel:

and (iii) constitutes unfair competition.

Balance’s famous brand.

of business at 100 Guest Street, Boston, Massachusetts 02135.

JURISDICTION AND VENUE

The matter in controversy exceeds $75,000, exclusive of interests and costs.

infringing goods from Massachusetts.

manufactures footwear in factories in the United States.

New Balance’s “247”

a unique design on the “upper” of the shoe:

21. For example, widely-followed new-media brand Highsnobiety published several

Day.” See Exhibit E, last visited August 19, 2019.

New Balance sold almost 2,000,000 pairs of 247s in North America.

New Balance’s Intellectual Property

The ‘464 Patent

claimed shoe upper in solid lines:

The Block N Marks

running shoe in the world:

for more than forty years.

Balance footwear advertisement. For example:

followers and over 8,000,000 Facebook followers.

incorporates the Block N Mark.

Balance shoes sold annually in over 68 countries worldwide.

of apparel. For example:

caps, athletic uniforms; [s]weatshirts” in class 25)).

Zambia, Zimbabwe, Oman, Hungary, and Sweden.

have expressly identified the mark as “famous” or “iconic.” For example:

look while remaining on brand:

uniquely communicates and emphasizes its independent source identifying quality.

third-party brands and fashion companies to develop “special edition” products.

customer homes monthly.

See Exhibit H, last visited August 19, 2019.

43. As a result of these successful collaborations, New Balance customers understand

Nautica And Its Infringing Conduct

44. Upon information and belief, Nautica is a nautical-influenced American sportswear

footwear and apparel.

defendant Nautica OpCo LLC.

Massachusetts for approximately $30.00.

covered by New Balance’s ‘464 Patent:

observer they are substantially the same.

various types of footwear:

NEW BALANCE NAUTICA

various types of apparel:

likely to cause confusion among consumers and/or suggest an affiliation, connection, or

block letter “N” also constitutes unfair competition.

Balance’s rights in those marks. As a result, Nautica’s infringement is intentional. In addition,

Kohl’s, and Macy’s) and through the Internet (such as Amazon).

god, I love New Balance.”).

on the block “N” focused special-edition package described above.

60. Nautica’s participation in collaborations increases the likelihood of consumer

goodwill it has developed in Block N Marks.

monetary harm in an amount to be determined at trial.

1 through 62 above as if fully set forth herein.

enjoined by this Court.