Case 3:17-cv-00197-MPS Document 1 Filed 02/10/17 Page 1 of 12

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF CONNECTICUT

SUBWAY IP INC. )
)
Plaintiff, ) Civil Action No. 3:17-cv-197
)
v. )
)
MOBIQUEST MOBILE )
TECHNOLOGIES PVT LTD ) JURY TRIAL DEMANDED
)
Defendant. )

COMPLAINT

Plaintiff Subway IP Inc. (SIP or Plaintiff) for its Complaint against Defendant

MobiQuest Mobile Technologies Pvt Ltd, (MobiQuest or Defendant), alleges as follows:

Introduction

1. This is an action for trademark infringement, unfair competition, and dilution in

violation of the Federal Lanham Act, 15 U.S.C. 1051 et seq.; common law trademark; and state

unfair competition in violation of the Connecticut Unfair Trade Practices Act against Defendant

for its commercial use and exploitation of Plaintiffs family of trademarks, services marks, and

trade dress (individually and collectively Plaintiffs Mark) on or in connection with the offer

and provision of goods and/or services.

2. Plaintiff hereby seeks (1) injunctive relief against Defendants continued

unauthorized and improper commercial use and exploitation of any trademark confusingly

similar to any of Plaintiffs Mark; and (2) all damages arising from Defendants past and present

infringement, including all statutory damages, and Plaintiffs attorneys fees and costs for having

to bring this suit to enforce its trademark rights.

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Parties

3. Plaintiff SIP is a Delaware Corporation having a place of business at 325 Sub

Way, Milford, Connecticut 06461.

4. Upon information and belief, MobiQuest Mobile Technologies Private Limited is

a corporation having a place of business at B-27, Sector 63, Noida, 201301, India.

Jurisdiction and Venue

5. This Court has jurisdiction pursuant to 15 U.S.C. 1121, 28 U.S.C. 1331, and

1338(a) over the federal trademark infringement, trade dress infringement, unfair competition,

and dilution claims, which arise under the Federal Lanham Act, 15 U.S.C. 1051 et seq.

6. This Court has jurisdiction pursuant to 28 U.S.C. 1338(a) and 1367 over the

common law trademark infringement claim, common law trade dress infringement claim, and

state unfair competition claim.

7. Upon information and belief, this Court has jurisdiction over Defendant because it

does business in Connecticut.

8. Upon information and belief, this Court has jurisdiction over Defendant by virtue

of its systematic and continuous contacts with Connecticut, or because the Defendant has

transacted and done business in Connecticut, or because the Defendant has solicited consumers

in this District, or because the Defendant offered to sell or has sold mobile services in the

District.

Facts

A. Plaintiffs Mark and SUBWAY Restaurants.

9. Plaintiff is the owner of the proprietary system establishing and operating

restaurants featuring sandwiches and salads under the trademark SUBWAY. Plaintiff

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developed this system spending considerable time, money, and effort. The system includes the

trademark SUBWAY, other trademarks, slogans, and other related insignia. This system also

includes goodwill associated with the marks, copyright, trade dress, recipes, formulas, food

preparation procedures, business methods, forms, policies, and all other techniques.

10. Plaintiff licenses others to operate SUBWAY restaurants under the SUBWAY

system.

11. In the United States, there are approximately 29,000 licensed SUBWAY

restaurants (SUBWAY restaurants).

12. Plaintiff has continuously used SUBWAY as a trade name for its SUBWAY

restaurants since at least as early as August 21, 1967.

13. Plaintiff is the owner of the following U.S. Trademark Registrations for various

SUBWAY marks: 1,174,608; 1,307,341; 1,387,847; 1,514,071; 1,524,986; 1,630,440; 1,627,774;

1,737,353; 1,514,072, 1,883,799; 1,896,378; 1,909,034; 1,925,713; 2,057,615; 2,134,253;

2,162,105; 2,504,512; 2,591,069; 2,567,334; 2,732,170; 3,296,655; 3,445,885; 3,503,520;

3,503,521; 3,355,021; 3,310,928; 3,293,264; 3,693,027; 3,444,168; 3,536,637; 3,696,969;

3,643,521; 3,695,144; 3,679,096; 3,679,100; 3,746,362; 3,774,480; 3,869,196; 3,013,320;

4,280,329; and 4,622,844. These registrations are valid and subsisting. Printouts for each of

these registrations from the USPTO website establishing status and title are set out in Exhibit A.

The SUBWAY mark and SUBWAY logo trademark are famous trademarks.

14. SUBWAY restaurants have been and continue to offer to sell and sell sandwiches

under Plaintiffs Mark under authorization and license of Plaintiff.

15. SUBWAY restaurants have been and continue to offer and provide catering

services under Plaintiffs Mark under authorization and license of Plaintiff.

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B. Defendants Mobile Loyalty Platform and Unauthorized Trademark Use.

16. Upon information and belief, Defendant provides services related to marketing on

mobile device platforms and related applications.

17. Upon information and belief, Defendant operates a website at

http://mloyalweb.com (Defendants website), accessible to residents of Connecticut.

18. Upon information and belief, Defendant is the developer of mobile phone

software applications for use on the Android phone platform and that are available for download

through the Google Play store, including the following applications: Sub Fresh Rewards mLoyal

App (https://play.google.com/store/apps/details?id=com.mobiquest.subwayfresco&hl=en),

SUBLovers mLoyal App

(https://play.google.com/store/apps/details?id=com.mobiquest.subwaybahati&hl=en); My Star

Club mLoyal App

(https://play.google.com/store/apps/details?id=com.mobiquest.subwayinorbit&hl=en

(individually and collectively Defendants App).

C. Defendant Infringes Plaintiffs Mark.

19. Upon information and belief, the Defendants website prominently displays

Plaintiffs Mark and represents that Plaintiff is a client of Defendant.

20. Upon information and belief, the Defendants App prominently displays

Plaintiffs Mark.

21. Plaintiff is not a client of Defendant.

22. Plaintiff never authorized Defendant to display Plaintiffs Mark on its website or

elsewhere.

23. Plaintiff has never approved or authorized Defendant to use Plaintiffs Mark or

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any mark confusingly similar to Plaintiffs Mark.

24. Plaintiff has never sponsored or endorsed any good or service offered by

Defendant.

25. Upon information and belief, the Defendant is using Plaintiffs Mark to provide

the appearance of a partnership or association with Plaintiff when no such association exists.

26. Defendants unauthorized use of Plaintiffs Mark is likely to cause confusion and

mistake.

27. Defendants unauthorized use of Plaintiffs Mark is causing irreparable harm to

Plaintiff.

28. Defendants activities are harming Plaintiff and its associated brands and

intellectual property which the Plaintiff has spent substantial time and investment to develop.

29. On at least three separate occasions, Plaintiff sent written notices to Defendant

demanding that Defendant cease and desist infringing Plaintiffs Mark and falsely associating

itself with Plaintiff.

30. Upon information and belief, Defendant did not cease and desist from all further

infringements of Plaintiffs Mark and Defendant continues to willfully infringe Plaintiffs Mark.

COUNT I
Trademark Infringement Under
Section 32 of the Lanham Act, 15 U.S.C. 1114

31. Plaintiff repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

32. Plaintiffs Mark and the goodwill of the businesses associated therewith in the

United States and throughout the world are of great and significant value, and are highly

distinctive of the Plaintiffs goods and services.

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33. Defendants actions described above have caused and are likely to cause

confusion and mistake and to deceive potential customers and the general purchasing public as to

the source, origin, or sponsorship of Defendants goods and services, and are likely to deceive

the public into believing that the goods and services offered and sold by Defendant originate

from, are associated with, or are otherwise authorized by Plaintiff, all to the damage and

detriment, of Plaintiffs reputation, goodwill, and sales.

34. Defendants actions constitute trademark infringement of Plaintiffs federally-

registered trademarks, the full extent of which is presently unknown but is substantial. This has

caused damage to Plaintiff and the substantial business and goodwill symbolized by Plaintiffs

Mark in violation of Section 32 of the Lanham Act, 15 U.S.C. 1114.

35. Defendants actions described above, including the unauthorized use of marks

substantially similar to Plaintiffs marks in interstate commerce, have caused, and unless

restrained will continue to cause, great and irreparable injury to Plaintiff, to Plaintiffs Mark, and

to the business and goodwill represented thereby, leaving Plaintiff with no adequate remedy at

law.

COUNT II
Federal Trademark Infringement and Unfair Competition

36. Plaintiff repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

37. This claim is against Defendant for trademark infringement in violation of Section

43(a) of the Lanham Act, 15 U.S.C. 1125(a).

38. Upon information and belief, Defendant has used, is using, and intends to

continue using now and in the future in commerce Plaintiffs Mark for the offer and provision of

goods and services in such a way that has and will continue to cause confusion, mistake, or

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deception.

39. Upon information and belief, Defendants use of Plaintiffs Mark for the offer and

provision of goods and services has likely caused and will continue to cause confusion of the

relevant public and trade.

40. Plaintiff has been and will continue to be damaged by the confusion, mistake, and

deception caused by Defendants use of Plaintiffs Mark.

41. Any defect, objection to or fault found with Defendants goods and/or services

sold or provided under Plaintiffs Mark would necessarily reflect on and seriously injure the

reputation Plaintiff has established for its marks and business

42. Plaintiff does not and has never consented to or authorized Defendants adoption

or commercial use of Plaintiffs Mark for the aforementioned goods and/or services. Defendant

therefore has infringed and is infringing Plaintiffs Mark in violation of Section 43(a) of the

Lanham Act, 15 U.S.C. 1125(a).

43. Upon information and belief, at all times relevant to this action, including when

Defendant first adopted Plaintiffs Mark and commenced commercial use of Plaintiffs Mark on

the aforementioned goods and/or services, Defendant knew of the prior adoption and widespread

commercial use of Plaintiffs Mark, and Defendant knew of the valuable goodwill and reputation

acquired by Plaintiff in connection with Plaintiffs Mark. Defendants infringement of the

Plaintiffs Mark is therefore willful.

44. Upon information and belief, Defendants use of Plaintiffs Mark has caused

confusion and mistake and the deception of purchasers as to the source of origin of Defendants

infringing goods and/or services. Because of the confusion as to the source caused by

Defendants unauthorized use of Plaintiffs Mark, Plaintiffs valuable goodwill developed at

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great expense and effort by Plaintiff is being irreparably harmed and is at risk of further damage.

45. Defendants infringement will continue unless enjoined by the Court.

COUNT III
Federal Trademark Dilution

46. Plaintiff repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

47. As a result of the duration and extent of use of the Plaintiffs Mark by SIP, the

duration and extent of the advertising and publicity of the Plaintiffs Mark, the geographical

extent of the same, the superior quality of Plaintiffs goods and services, and the degree of

recognition of Plaintiffs Mark, Plaintiffs Mark have achieved an extensive degree of

distinctiveness and are famous trademarks.

48. As a result of Defendants use of Plaintiffs mark, Defendant is diluting the

distinctive quality of Plaintiffs Mark.

49. Plaintiff will suffer irreparable harm should Defendants infringing acts be

allowed to continue to the great detriment of Plaintiffs reputation and goodwill.

COUNT IV
Common Law Trademark Infringement

50. Plaintiff repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

51. This claim is against Defendant for common law trademark infringement.

52. In addition to the federal registrations owned by Plaintiff, as set forth above,

Plaintiffs Mark enjoys common law rights in Connecticut and throughout the United States.

These rights are senior and superior to any rights which Defendants may claim.

53. Defendants use of the Plaintiffs Mark is intentionally designed to mimic

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Plaintiffs Mark so as to cause confusion regarding the source of Defendants goods and services

in that purchasers thereof will be likely to associate or have associated such products with, as

with originating with, or as approved by Plaintiff, all to the detriment of Plaintiff.

54. Defendants infringement will continue unless enjoined by the Court.

COUNT V
Unfair Competition under Connecticut Law

55. Plaintiff repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

56. Defendants acts as described above constitute unfair competition under the

Connecticut Unfair Trade Practices Act.

PRAYERS FOR RELIEF

WHEREFORE, Plaintiff prays for judgment as follows:

A. An order immediately and permanently enjoining Defendant, its officers,

members, agents, servants, employees, attorneys, and all persons in active concert

or participating with any of them, from:

i. advertising, marketing, promoting, selling or otherwise offering for sale any

good of service that is confusingly similar to Plaintiffs because it uses

Plaintiffs Mark, any derivation or colorable imitation thereof, or any mark

confusingly similar thereto;

ii. making or employing any other commercial use of Plaintiffs mark, any

derivation or colorable imitation thereof, or any mark confusingly similar

thereto;

iii. using any other false designation of origin or false description or

representation or any other thing calculated or likely to cause confusion or

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mistake in the mind of the trade or public or to deceive the trade or public into

believing that Defendants services or activities are in any way sponsored,

licensed or authorized by or affiliated or connected with Plaintiff;

iv. doing any other acts or things calculated or likely to cause confusion or

mistake in the mind of the public or to lead purchasers or consumers or

investors into the belief that the products or services promoted, offered, or

sponsored by Defendant come from Plaintiff, or are somehow licensed,

sponsored, endorsed, or authorized by, or otherwise affiliated or connected

with Plaintiff;

v. otherwise competing unfairly with Plaintiff in any manner; and

vi. assisting, aiding, or abetting any other person or business entity in engaging in

or performing any of the activities referred to in the above subparagraphs (i)

through (v), or effecting any assignments or transfers, forming new entities or

associations, or utilizing any other device for the purpose of circumventing or

otherwise avoiding the prohibitions set forth in subparagraphs (i) through (v);

B. Direct Defendant to account to Plaintiff for Defendants profits and order that the

Plaintiffs recover its damages arising out of the acts of deception and

infringement described above, and a sum equal to three times such profits or

damages (whichever is greater), pursuant to 15 U.S.C. 1117(a) and (b);

C. Award Plaintiff statutory damages of $8,000,000 representing $2,000,000 per

counterfeit mark per type of goods or services sold, offered for sale, or

distributed, pursuant to 15 U.S.C. 1117(c);

D. Award Plaintiff punitive damages on account of Defendants gross, wanton,

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willful, and malicious conduct;

E. Award Plaintiff costs, attorneys fees, and collection costs pursuant to the

agreement executed by the Defendant.

F. Direct Defendant to deliver up for destruction any and all guarantees, circulars,

price lists, labels, brochures, business cards, signs, prints, packages, wrappers,

pouches, advertising matter, promotional, and other materials in the possession or

control of Defendant bearing Plaintiffs Mark, any derivation or colorable

imitation thereof, or any mark confusingly similar thereto or likely to dilute or

detract from the Plaintiffs Mark, in accordance with 15 U.S.C. 1118;

G. Direct Defendant to supply Plaintiff with a complete list of entities from whom

they have conducted business with under the Plaintiffs mark, any derivation or

colorable imitation thereof, or any mark confusingly similar thereto or likely to

dilute or detract from the Plaintiffs Mark;

H. Direct Defendant to file with the Court and serve on counsel for Plaintiff within

thirty (30) days after entry of any injunction issued by the Court in this action, a

sworn written statement pursuant to 15 U.S.C. 1116(a) setting forth in detail the

manner and form in which Defendant has complied with any injunction which the

Court may enter in this action;

I. Award Plaintiff its reasonable attorneys fees along with the costs and

disbursements incurred herein as a result of Defendants intentional and willful

infringement, pursuant to 15 U.S.C. 1117 and the CUTPA;

J. Order that any of Defendants assets that are held by or within the control of

entities that are subject to the jurisdiction of this Court, be restrained and frozen

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pending the outcome of this action so that Plaintiffs right to the damages set forth

in this Complaint is not later rendered meaningless.

K. In accordance with 15 U.S.C. 1116(a) and this Courts inherent equitable power,

directing that any parting hosting the Defendants website or the Defendants

Apps, including Google Play, shall, within three days after receipt of notice of,

disable the website or application or otherwise make it inactive and provide

certified written confirmation of the same.

L. Award Plaintiff such other and further relief as the Court deems just and proper.

JURY DEMAND

Plaintiff demands a trial by jury on all claims and issues so triable.

Respectfully Submitted,

Date: February 10, 2017 /s/ Walter B. Welsh______________________

Walter B. Welsh, ct27210
Whitmyer IP Group LLC
600 Summer Street
Stamford, CT 06901
Tel: 203-703-0800
Fax: 203-703-0801
Email: [email protected]
[email protected]

ATTORNEY FOR PLAINTIFF

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