Case 1:12-cv-10688-NMG Document 1 Filed 04/18/12 Page 1 of 13

UNITED STATE DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS

NOBELCOM, LLC, Plaintiff, v. MILLENNIUM TELE CARD, LLC, Defendant. COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES Nature of Action 1. This is an action for trademark infringement, unfair competition, and Civil Action No.

related Massachusetts statutory and common law claims. Plaintiff NobelCom, LLC (Nobel) issues and sells prepaid phone cards in Massachusetts and across the United States. One of Nobels most successful products is a prepaid phone card utilizing the trademark Xcelente and unique graphics that make the card distinguishable from prepaid cards sold by other carriers. It has recently come to Nobels attention that Defendant Millennium Tele Card, LLC (Defendant) has been selling prepaid phone cards using the name Excellent with similar graphics intended to deceive consumers as to the affiliation of the cards issuer and to cause customers to believe that they are purchasing one of Nobels Xcelente cards. Nobel seeks preliminary and permanent injunctive relief and damages for Defendants unlawful conduct. The Parties 2. Nobel is a limited liability company organized under the laws of

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Delaware and having a principal place of business in Carlsbad, California. 3. Millennium is a limited liability company organized under the laws of

New Jersey with a principal place of business in Clifton, New Jersey. Jurisdiction and Venue 4. The action arises under the United States Trademark (Lanham) Act of

1946, as amended, 15 U.S.C. 1051-1127. This Court has subject matter jurisdiction over that cause of action pursuant 15 U.S.C. 1121. Pursuant to 28 U.S.C. 1367(a), this court has supplemental jurisdiction over the state law claims related to the federal trademark claims. This Court also has diversity jurisdiction over this matter pursuant to 28 U.S.C. 1332, as the parties are citizens of different states and the amount in controversy exceeds $75,000, exclusive of interest and costs. 5. This Court has personal jurisdiction over Defendant by virtue of its

advertising, promotions, sales, and solicitations in this District. 6. Venue is proper in this District under 28 U.S.C. 1391 because a

substantial part of the events and omissions giving rise to the claims occurred in this District and because Millennium is subject to personal jurisdiction in this District. Facts Common to All Counts 7. Nobel creates, markets, and sells prepaid phone cards for sale to

consumers in Massachusetts, New York, and elsewhere throughout the United States. A prepaid calling card is a retail product for which the purchaser prepays a specified dollar amount and which enables the purchaser to make domestic or international telephone calls. 2

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8.

A wide variety of consumers purchase prepaid calling cards. They are,

however, predominantly used by members of immigrant communities, many of whom depend on prepaid calling cards to stay in touch with family and friends outside the United States. Although the cards currently being marketed all generally come in denominations between $2.00 and $5.00, different cards from different companies vary in terms of how the prepaid amounts are applied to calls, whether service charges are added to calling charges, where and when they can be used, and for how long they are valid. Some cards have excessive, undisclosed charges, provide poor quality calls and related service, or have otherwise come to be known in the marketplace as unreliable, deceptive, or too costly. 9. Since 2010, Nobel has been marketing and selling, in Massachusetts, New

York, and elsewhere, prepaid phone cards under the trademark XCELENTE. Both the card and promotional materials used to sell cards under the XCELENTE mark contain the word Xcelente as the most prominent feature of the card. In addition, all Nobel cards bearing the XCELENTE mark have a graphic of a smiling cartoon character (the Xcelente Graphic). A copy of Nobels card bearing the XCELENTE mark is attached hereto as Exhibit 1. 10. Nobel has used the mark XCELENTE continuously since 2010. On

August 8, 2011, Nobel filed for registration of the mark with the U.S. Patent and Trademark Office (PTO), which published the mark for opposition on January 31, 2012. No oppositions were filed. Accordingly, the PTO registered the mark on April

17, 2012. A copy of Nobels certificate of registration is attached hereto as Exhibit 2. 3

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11.

Nobel has spent over $500,000 advertising, marketing, and promoting its

XCELENTE mark in interstate commerce and throughout the United States. Since its introduction in 2010, there have been over 14 million activations of cards bearing the XCELENTE mark, which have resulted in over $25 million in revenues. As a result of the reliability, value, and quality of service provided by Nobel to purchasers of phone cards bearing the XCELENTE mark, as well as the care and skill Nobel has exercised in promoting, advertising, and marketing the XCELENTE mark, which is inherently distinctive, the XCELENTE mark has become well and favorably known in the marketplace and symbolizes the goodwill that Nobel has created in Massachusetts, New York, and throughout the United States. 12. The Xcelente cards currently generate $40,000-$50,000 per week in

revenue for Nobel. 13. Defendant also sells prepaid phone cards in this District and elsewhere in

the United States. Its phone cards are generally sold in the same stores as Nobels cards bearing the XCELENTE mark and, like Nobels cards, are appealing to immigrants who often do not speak English. On April 6, 2012, it came to the attention of Nobels distributors that Millennium is marketing and selling phone cards using the mark EXCELLENT that, like Nobels cards bearing the XCELENTE mark, also contain a smiling cartoon character remarkably similar to the Xcelente Graphic. A copy of Defendants phone card depicting the EXCELLENT mark is attached hereto as Exhibit 3. On information and belief, Defendant is using the EXCELLENT mark to cause confusion in the marketplace, to palm off its cards as being issued by Nobel, and/or to 4

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deceive customers as to the affiliation, connection, and association of the issuer of its cards. 14. Nobels phone cards sold under the XCELENTE mark have had an

unusually long and successful presence in the market. Most prepaid phone card programs have a short lifecycle of between three to six months, but the lifecycle for Nobels XCELENTE mark is different than a typical card. Nobel became aware that Millenniums XCELENTE brand cards were being distributed when retailers began calling Nobels distributor to ask why he and Nobel were distributing the yellow Nobel Xcelente card when there was a newer card from same company. Because the name and graphics on the Millennium cards are so similar to Nobels XCELENTE mark, retailers and consumers have become confused about the origin of Millenniums card and have concluded wrongly that the Millennium cards are issued by Nobel, too. They have even complained that Nobel is distributing old and outdated cards. 15. Besides causing confusion about the origin of its cards, Millenniums

distribution of lookalike cards is threatening to damage the reputation of Nobel, because Nobels customers are now accusing Nobel of distributing old and outdated cards, which is not the case. 16. On information and belief, Defendants wrongful use in its business of a

mark that is confusingly similar to Nobels XCELENTE mark is being undertaken deliberately, blatantly and willfully, with the knowledge that the use of the EXCELLENT mark is likely to cause confusion , to cause mistake, and/or to deceive consumers as to the existence of the cards relationship with Nobel, especially when 5

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coupled with a smiling cartoon character similar to the Xcelente Graphic, and/or with utter indifference to the likely occurrence of such confusion, mistake, or deceptions, thereby injuring Nobels mark. Defendant profits from such deception. 17. In light of the importance of Nobels mark, Defendants unauthorized use

of marks and promotional materials confusingly similar to Nobels mark and related marketing represents a serious threat to Nobels proprietary trademark and to its business. On information and belief, Defendants unauthorized use of designations confusingly similar to Nobels mark is willful, in bad faith, and in utter disregard for Nobels trademark rights. 18. Defendants actions as described above: (1) are likely to cause confusion,

mistake or otherwise deceive the relevant consumers and the public; (2) constitute a false designation of the origin for Defendants services or products; (3) suggest the existence of a connection between Defendant and Nobel that in fact does not exist; and (4) falsely suggest that Nobel has sponsored, licensed or approved of Defendants EXCELLENT brand phone cards. Such confusion, infringement and misappropriation of Nobels mark will irreparably harm Nobel, its goodwill, its business reputation and trademark. COUNT I [Trademark Infringement Under Section 32(1) of the Lanham Act, 15 U.S.C. 1114(1)] 19. 20. Nobel incorporates by references its allegations in Paragraphs 1-18. Defendant has engaged in the unauthorized use in commerce of the mark

EXCELLENT, which is nearly identical to Nobels registered XCELENTE mark. 6

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Defendants use of the EXCELLENT mark in commerce constitutes infringement of Nobels registered XCELENTE trademark. Defendants conduct is likely to cause confusion, mistake, and deception among consumers as to the source of the pre-paid telephone calling cards, in violation of Section 32 of the Lanham Act, 15 U.S.C. 1114(1). 21. Defendants unauthorized use of Plaintiffs XCELENTE mark in

interstate commerce in connection with Defendants commercial advertising or promotion further deceives consumers into the mistaken belief that the goods of Defendant are the goods of Plaintiff, and/or that Plaintiff and Defendant are in some way associated or affiliated with each other, all to Plaintiffs substantial damage. 22. The conduct of Defendant alleged herein was and is intentionally and

willfully done. Defendant had constructive knowledge of Nobels prior use and registration of the XCELENTE mark. On information and belief, Defendant also had actual knowledge of such prior use and registration. 23. Plaintiff has been damaged by Defendants improper activities. Further,

Defendants unlawful acts have caused, and will continue to cause, irreparable harm to Plaintiff unless Defendant is enjoined by the Court. COUNT II [Trademark Infringement and Unfair Competition Under Section 43(a) of The Lanham Act, 15 U.S.C. 1125(a)] 24. 25. Nobel incorporates by references its allegations in Paragraphs 1-23. Nobel owns and enjoys common law rights to its marks throughout

Massachusetts and the United States. Nobel has continuously used its XCELENTE 7

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trademark in interstate commerce since 2010. Nobels common law rights to the XCELENTE mark are superior to any rights that Defendant may claim to any substantially equivalent mark. Nobels rights are protected under 15 U.S.C. 1125(a). 26. Defendants unauthorized use of the XCELENT mark for its cards,

especially when coupled with the smiling cartoon character so remarkably similar to the Xcelente Graphic, is likely to cause confusion, mistake or deception among consumers and constitutes trademark infringement in violation of Nobels rights at common law and in violation of 15 U.S.C. 1125(a). 27. The wrongful acts of Defendant have caused and continue to cause harm

to Nobel, including confusion of potential customers, loss of current and future customers, and injury to its reputation and good will. These actions are causing imminent irreparable harm and injury to Nobel, and Nobel is without an adequate remedy at law. 28. Pursuant to 15 U.S.C. 1117, Nobel is entitled to injunctive relief,

damages, lost profits, attorneys fees and other redress. COUNT III [False Designations Of Origin and False Representations] 29. 30. Nobel incorporates by references the allegations in Paragraphs 1-28. Defendants acts constitute false designation of the origin and false

representations that are likely to cause confusion, to cause mistake, or to deceive consumers as to the affiliation, connection, or association of Defendants phone cards with Nobels cards sold under the XCELENTE mark. Nobel has no control over the 8

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quality and value of Defendants cards and the services that consumers who buy its cards receive from Defendant. Any failure by Defendant to provide quality services, value, and accurate information about its services will reflect adversely on Nobel and will harm efforts by Nobel to continue to protect its goodwill and reputation with consumers. 31. Pursuant to 15 U.S.C. 1116, 1117, and 1125, Nobel is entitled to

injunctive relief, damages, lost profits, attorneys fees and other redress. COUNT IV [Trademark Infringement and Unfair Competition Under Mass. Common Law] 32. 33. Nobel incorporates by references the allegations in Paragraphs 1-31. Nobels XCELENTE mark is inherently distinctive when used in

connection with prepaid phone cards and has become well and favorably known as a result of Nobels prominence in the marketplace and extensive advertising, promotion, and sale of phone cards and related services under its mark. 34. Nobel has used its XCELENTE mark for a number of years. Its mark has

become extensively known and associated in the minds of the public exclusively with Nobels business, services, and products. 35. mark. 36. Defendants wrongful use of trademarks and service marks which Nobel owns valid common law trademark rights in and to its XCELENTE

appropriate and infringe on Nobels mark constitutes a false designation of origin, false

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or misleading description of fact, and is likely to cause consumer confusion, deception and/or mistake. 37. Defendants actions constitute unfair competition and trademark

infringement in violation of Massachusetts common law. 38. As a proximate result of Defendants conduct, Nobel has suffered damage

to its intellectual property, business, goodwill, reputation, and profits. 39. Nobel has no adequate remedy at law for such infringement of its

trademarks and unfair competition. Unless Defendant is permanently enjoined, Nobel will continue to suffer irreparable harm. COUNT V [Violation of M.G.L. c. 93A] 40. 41. Nobel incorporates by reference its allegations in Paragraphs 1-39. At all times relevant to this matter, Nobel and Defendant have been

engaged in trade or commerce within the meaning of M.G.L. c. 93A, 11. 42. Defendant has engaged in unfair methods or competition and unfair or

deceptive acts and practices within the meaning of M.G.L. c. 93A, 2 by making false representations and false designations of origin as a result of using the confusingly similar mark EXCELLENT coupled with a smiling cartoon character remarkably similar to the Xcelente Graphic in direct competition with Nobel. 43. 44. Defendant willfully and knowingly violated M.G.L. 93A, 2. Nobel has sustained harm as a result of Defendants willful and knowing

unfair methods of competition and unfair acts and practices, including without 10

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limitation, loss of customers, dilution of its goodwill, confusion of potential customers, harm to its reputation, and attorneys fees incurred to prosecute this matter. 45. Pursuant to M.G.L. c. 93A, 11, Nobel is entitled to recover all damages

arising from Defendants unlawful acts, treble damages, and attorneys fees. Prayers For Relief WHEREFORE, Nobel requests that the Court grant relief as follows: A. Grant a temporary restraining order restraining Defendant, its officers,

directors, principals, agents, employees, successors and assigns, and all persons acting in concert with them, from the selling and distributing to retailers any and all prepaid phone cards utilizing the EXCELLENT trademark (plus design), and any other marks confusingly similar to Nobels XCELENTE marks until the Court, on notice, can hear Nobels request for preliminary injunction. B. Grant a preliminary and permanent injunction restraining Defendant, its

officers, directors, principals, agents, employees, successors and assigns, and all persons acting in concert with them, from: (i) infringing on Nobels trademark rights by Defendants use of the Excellent name and from unfairly competing with Nobel; (ii) using Nobels XCELENTE mark, or any other name or mark owned by Nobel, in a manner which is likely to cause confusion as to the source or sponsorship of Defendants business, services, and products; and (iii) in any manner promoting, marketing, advertising, or selling prepaid phone cards that utilize the Nobel mark or related trade dress like the EXCELLENT mark and/or a smiling character like the Xcelente Graphic. 11

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C.

Ordering Defendant to account for and pay to Nobel all profits received

from and damages caused by reason of its infringement on Nobels trademark; D. Ordering Defendant, pursuant to 15 U.S.C. 1118, to deliver up for

destruction all prepaid phone cards, materials, labels, signs, prints, advertisements, and promotional or marketing material in its possession or control bearing the Excellent name; E. Order Defendant, pursuant to 15 U.S.C. 1116(a), to file with the Court

and serve upon Nobel within thirty-days after entry of the injunction a report in writing, under oath, setting forth in detail the manner and form by which it has complied with the injunction; F. Awarding damages to Nobel arising from Defendants unfair competition

and infringement on Nobels mark, plus treble damages, attorneys fees, and costs pursuant to 15 U.S.C. 1117(b) and M.G.L. c. 93A; G. Grant such other relief as is just.

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NOBEL DEMANDS A TRIAL BY JURY. April 18, 2012 NOBELCOM, LLC By its attorneys, CRAIG AND MACAULEY PROFESSIONAL CORPORATION /s/Stephen Wald Stephen Wald (BBO#512350) William R. Moorman (BBO# 548593) Craig and Macauley Professional Corporation Federal Reserve Plaza 600 Atlantic Avenue Boston, MA 02210 (617) 367-9500 wald@craigmacauley.com moorman@craigmacauley.com

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