I JS 44C/SDNY REV. 4/2014 CIVIL COVER SHEET snJP&upptaBent therlHffg wid serviCM = 1 JS ~ \ I 1 The JS-44 civil cover sheet and the information contained herein neither replace i of court. pleadings or other papers as required by law, except as provided by local rules of court. This This form, form, approved approved by by the the "*" Judicial Conference of the United States in September 1974, is required for use of the the Clerkof Clerk of Court Court forthe for the ourc-ose purpose of V^ v^ \_^JJ <^ W initiating the civil docket sheet. PLAINTIFFS DOV SEIDMAN and LRN CORPORATION DEFENDANTS jimnvfihTmnrftit " rt CHOBANI, LLC and DROGA5, LLQ . o mu ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER ATTORNEYS (IF KNOWN) RICHARD D. ROCHFORD JULIA HUSTON HAYNES and BOONE, LLP FOLEY HOAG 30 ROCKEFELLER PLAZA NEW YORK. NY 10112 SEAPORT WEST 155 SEAPORT BLVD. MAURA WOGAN FRANKFURT KURNIT KLEIN 488 MADISON AVENUE ROSTON NFWYDRK NY 100?? MAO??10-?ROO CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEFSTATEMENT OF CAUSE) (DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY) This is a civil action for trademark and service mark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051, et seq. Has this action, case, or proceeding, or one essentially the same been previously filed in SDNY at any time? NcB'esQjudge Previously Assigned Ifyes, was this case Vol. [ Invol. Dismissed. No [~J Yes [~J If yes, givedate IS THISANINTERNATIONAL ARBITRATION CASE? No [5] &Case No. Yes • NATURE OF SUIT (PLACE AN [x] IN ONE BOXONLY) TORTS ACTIONS UNDER STATUTES PERSONAL INJURY PERSONAL INJURY FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES [ ] 422 APPEAL [ 1 375 FALSE CLAIMS [ J 400 STATE [ ] 367 HEALTHCARE/ I ]110 []120 []130 [ ]140 []150 INSURANCE MARINE MILLER ACT NEGOTIABLE INSTRUMENT RECOVERY OF OVERPAYMENT & ENFORCEMENT OF JUDGMENT [ ] 151 []152 MEDICARE ACT RECOVERY OF DEFAULTED STUDENT LOANS [ ] 310 AIRPLANE [ ] 315 AIRPLANE PRODUCT LIABILITY [ ] 320 ASSAULT, LIBEL & SLANDER [ ] 330 FEDERAL EMPLOYERS' LIABILITY [ ] 340 MARINE [ ] 345 MARINE PRODUCT LIABILITY [ ] 350 MOTOR VEHICLE [ ] 355 MOTOR VEHICLE (EXCL VETERANS) RECOVERY OF OVERPAYMENT OF VETERAN'S []190 INJURY [ ] 362 PERSONAL INJURY MED MALPRACTICE STOCKHOLDERS SUITS OTHER REAL PROPERTY FORECLOSURE []240 I I 245 [ ]290 PROPERTY RIGHTS [ ] 820 COPYRIGHTS [ ] 830 PATENT M 840 TRADEMARK [ ] 370 OTHER FRAUD [ ] 371 TRUTH IN LENDING SOCIAL SECURITY [ ] 380 OTHER PERSONAL LABOR PROPERTY DAMAGE [ ) 385 PROPERTY DAMAGE [ I 463 ALIEN DETAINEE [ ] 510 MOTIONS TO ACTIONS UNDER STATUTES CIVIL RIGHTS [ ] 440 OTHER CIVIL RIGHTS (Non-Prisoner) CONDEMNATION RENT LEASE & EJECTMENT TORTS TO LAND [ ] 690 OTHER PERSONAL PROPERTY VACATE SENTENCE 28 USC 2255 [ ] 530 HABEAS CORPUS [ ] 535 DEATH PENALTY [ ] 540 MANDAMUS & OTHER [ ] 710 FAIR LABOR STANDARDS ACT [ [ [ [ [ ] 410 ] 430 ] 450 ] 460 ] 470 TORT PRODUCT LIABILITY ALL OTHER REAL PROPERTY 442 EMPLOYMENT 443 HOUSING/ ACCOMMODATIONS 445 AMERICANS WITH DISABILITIES - EMPLOYMENT [] 446 AMERICANS WITH DISABILITIES -OTHER ]861 ] 862 ] 863 ] 864 ] 865 HIA(1395ff) BLACK LUNG (923) DIWC/DIWW (405(g)) SSID TITLE XVI RSI (405(g)) (RICO) [ ] 480 CONSUMER CREDIT [ ] 490 CABLE/SATELLITE TV [ ] 850 SECURITIES/ COMMODITIES/ EXCHANGE [ ] 890 OTHER STATUTORY ACTIONS ; ] 891 AGRICULTURAL ACTS [ ] 740 RAILWAY LABOR ACT FEDERAL TAX SUITS [ ] 751 FAMILY MEDICAL LEAVE ACT (FMLA) [ ] 870 TAXES (U.S. Plaintiff or Defendant) [ ] 871 IRS-THIRD PARTY [ ] 790 OTHER LABOR LITIGATION [ ] 791 EMPL RET INC MATTERS INFORMATION ACT ; ] 896 ARBITRATION ; ] 899 ADMINISTRATIVE IMMIGRATION PROCEDURE ACT/REVIEW APPEAL OF AGENCY DECIS [ ] 462 NATURALIZATION APPLICATION ' J 893 ENVIRONMENTAL • ] 895 FREEDOM OF 26 USC 7609 PRISONER CIVIL RIGHTS [ ] 550 CIVIL RIGHTS [ ] 555 PRISON CONDITION ] 560 CIVIL DETAINEE [ [ [ [ [ ANTITRUST BANKS & BANKING COMMERCE DEPORTATION RACKETEER INFLU ENCED & CORRUPT ORGANIZATION ACT RELATIONS SECURITY ACT 441 VOTING 230 28 USC 157 INJURY PRODUCT LIABILITY PRISONER PETITIONS LAND 220 [ ] 423 WITHDRAWAL [ ] 720 LABOR/MGMT LIABILITY []196 FRANCHISE [ l 368 ASBESTOS PERSONAL REAPPORTIONMENT 28 USC 158 SEIZURE OF PROPERTY 21 USC 881 PRODUCT LIABILITY CONTRACT PRODUCT PRODUCT LIABILITY PRODUCT LIABILITY CONTRACT []195 INJURY/PRODUCT LIABILITY [ ] 365 PERSONAL INJURY [ ] 360 OTHER PERSONAL BENEFITS []160 PHARMACEUTICAL PERSONAL , , 625 DRUG RELATED . [ ] 465 OTHER IMMIGRATION [ ] 950 CONSTITUTIONALITY STATE STATUTES ACTIONS CONDITIONS OF CONFINEMENT ] 448 EDUCATION Checkif demanded in complaint: • CHECK IF THIS IS A CLASS ACTION UNDER F.R.C.P. 23 DEMAND $_ OTHER DOYOU CLAJM THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.' JUDGE DOCKET NUMBER Check YES onlyifdemandedincomplaint JURY DEMAND: E YES Q\IO NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH- ♦ (PLACE AN x INONEBOXONLY) S 1 Original ORIGIN • 2 Removed from Proceeding I 5 Transferred from [~J 6 Multidistrict LZI 3 Remanded • 4 Reinstated or StateCourt from a. all parties represented (Specify District) Reopened I I 7 Appeal to District Judge from Magistrate Judge Judgment Litigation Appellate I b. At leastone party is pro se. (PLACEAN x INONEBOXONLY) • 1 U.S. PLAINTIFF BASIS OF JURISDICTION • 2 U.S. DEFENDANT 0 3 FEDERAL QUESTION IFDIVERSITY, INDICATE CITIZENSHIP BELOW. Q4 DIVERSITY (U.S. NOT A PARTY) CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY) (Place an [X] in one box for Plaintiff and one box for Defendant) PTF DEF PTF DEF CITIZEN OF THIS STATE [ ]1 [ ]1 CITIZEN OR SUBJECT OF A FOREIGN COUNTRY [ ]3[ ]3 INCORPORATED and PRINCIPAL PLACE OF BUSINESS IN ANOTHER STATE t ]5 [ ]5 CITIZEN OF ANOTHER STATE [ ]2 [ ]2 INCORPORATED or PRINCIPAL PLACE [ ]4 [ ]4 FOREIGN NATION [ ]6 [ ]6 PTF DEF OF BUSINESS IN THIS STATE PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES) DOV SEIDMAN LRN CORPORATION 745 FIFTH AVENUE NEW YORK, NY 10151 (NEW YORK COUNTY) DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES) CHOBANI LLC 601 LEXINGTON AVE LOWR LL1 DROGA5 120 WALL STREET NEW YORK, NY 10005 NEW YORK, NY 10022-4655 DEFENDANT(S) ADDRESS UNKNOWN REPRESENTATION IS HEREBY MADETHAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE,TO ASCERTAIN RE9IBINCE ADDRESSES OF THE FOLLOWING DEFENDANTS: Checkone: THIS ACTION SHOULD BE ASSIGNED TO: • WHITE PLAINS 0 MANHATTAN (DO NOT check either box if this a PRISONER PETITION/PRISONER CIVIL RIGHTS COMPLAINT.) . H DATE JUNE 420143IGNATURE OF ATTORNEY OF RECORD RyKplYVwA/ ADMITTED TO PRACTICE IN THIS DISTRICT RECEIPTS Attorney Bar Code # £•) _ ULOif [X] YES (DATE ADMITTED Mo. Magistrate Judge is to be designated by the C is so Designated. Magistrate Judge Deputy Clerk, DATED Ruby J. Krajick, Clerk of Court by UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN) ^^l^**!" ETs%B 0**ws% Drint Yr. 1996__j Richard D. Rochford Joseph Lawlor HAYNES AND BOONE, LLP 30 Rockefeller Plaza, 26th Floor New York, New York 10112 (T) 212-659-4984 (F) 212-884-9572 14 CV richard.rochford@haynesboone.com LI 050 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK DOV SEIDMAN and LRN CORPORATION, CIV NO. CO CO c_ c;: Plaintiffs, Jury Trial Requested o i o j.- -8"! bn V. -HO o CHOBANI, LLC and DROGA5, LLC, COMPLAINT FOR ro INJUNCTIVE AND OTHERH? Defendants. o —( RELIEF Plaintiffs Dov Seidman ("Seidman") and LRN Corporation ("LRN") (collectively "Plaintiffs") allege as follows against Defendants Chobani LLC ("Chobani") and Droga5 LLC ("Droga5"), upon actual knowledge with respect to themselves and their own acts, and upon information and belief as to all other matters: Nature of the Action 1. This is a civil action for trademark and service mark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051, et seq. and/or New York statutory and common law. 2. Plaintiffs, whose business is based on promoting ethical corporate behavior, own federal trademark registrations for the word and mark HOW and have also developed common law rights in HOW and other HOW-based marks over a period of years. Plaintiffs' HOW marks convey a clear and consistent meaning: that how an organization behaves matters. 3. Defendants were fully aware of Plaintiffs' HOW marks and their connotation prior to launching their infringing brand platform. In late 2013, Droga5- the advertising agency hired by Chobani to prepare and launch a new corporate identity and branding campaign for Chobani - discussed Plaintiffs' marks and message during a meeting. 4. Then, on January 29, 2014, Chobani sent this Twitter message to Mr. Seidman: Chobani (©Chobani) 1/29/14.4:36 PM @DovSeidman Thanks for inspiring the world to care about "how." Can you help inspire the food industry, too? thunderclap.it/howmatters 5. The very next day, Defendants launched Chobani's new branding platform - which employs "HOW" in precisely the same manner as Plaintiffs employ their HOW marks: as a noun connoting responsible and ethical corporate behaviors. The new branding campaign launched by Chobani, and developed by Droga5, "focus[es]" on Chobani's socially and environmentally responsible practices, in the hope that shining a light on those aspects of Chobani's operations would appeal to consumers and also inspire other food manufacturers to improve their practices." Letter of Chobani's counsel, Julia Huston, Esq., dated May 13, 2014. "Chobani's campaign was designed to encourage people to think about how food manufacturerstreat their people and support the community at large." Id. 6. Chobani's January 30, 2014 launch featured extensive social media and other branding and promotional activityattempting to promote ethicalcorporate behaviorthrough heavy emphasis on the word and mark "HOW" and the HOW-derivative "How Matters", culminating in television ads first aired during the Super Bowl on February 2, 2014, and during the 2014 Winter Olympics and 2014 Academy Awards. 7. With full knowledge of Plaintiffs' HOW marks, and Plaintiffs' established rights in these marks, Defendants willfully have infringed these marks, as detailed below. Further, Defendants' infringing branding platform intentionally copies the precise meaning and message Plaintiffs' HOW marks convey to the public: that "how matters." The Parties 8. Mr. Seidman is an individual residing and working in New York, New York, and is the Chief Executive Officer of LRN Corporation. 9. LRN is a Delaware corporation with a principal place of business at 745 Fifth Avenue, Suite 800, New York, New York 10151. 10. Chobani is a Delaware corporation with "hometowns of South Edmeston, Twin Falls and New York City." (See http://www.chobani.com/foundation, last visited April 30, 2014.) 11. Droga5, LLC is a Delaware corporation with a principal place of business at 120 Wall Street, New York, New York 10005. Jurisdiction and Venue 12. This Court has jurisdiction over the subject matter of this action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338 (a) and (b). The Court has supplemental jurisdiction over Plaintiffs' state-law claims pursuant to 28 U.S.C. § 1367(a) because they are substantially related to their federal claims and arise out of the same case or controversy. 13. Venue lies in this District pursuant to 28 U.S.C. § 1391 (b) and (c) because the Defendants reside and regularly conduct business in this District, a substantial part of the events giving rise to Plaintiffs' claims have occurred and are continuing to occur in this District, and Plaintiffs' trademarks at issue are located in this District. Facts Relevant to the Claims for Relief 14. Dov Seidman has been recognized by Time as a "Game Changer," one of the "innovators and problem-solvers that are inspiring change in America." http://content.time.com/time/specials/packages/article/0,28804,2091589 2092033 2101686,00.h tml. Mr. Seidman holds bachelor's and master's degrees in moral philosophy from UCLA, and a BA with honors in philosophy, politics and economics from Oxford University. He is also a graduate of Harvard Law School. 15. Mr. Seidman is the author of the acclaimed book HOW: Why How We Do Anything Means Everything. First published in 2007, HOW is a New York Times and Wall Street Journal Bestseller. The following print advertisement was used to promote and advertise HOW: 11 Hows" matter. „Mamr-'«Vf~* From Thomas L Friedman's June 27,2007 New York Times OP-ED "The Whole WorldIs Watching:" AMP Why HOW We Do A»y.h"-i M..". Ev.rything.-- "Whether you're selling cars or newspapers(or just buying one at the news stand), get your hows right—howyou build trust, how you collaborate, how you leadand how you say you're sorry. More people than ever will know about it when you do—ordon't." DOV SEIDMAN 1 B07 ®W1LEY 16. Get your "hows" right. Pick up a copy of Dov Seidman's HOW today. Available in bookstores everywhere. The expanded edition of How was published in 2011, and features a foreword by President Bill Clinton: I-.„,.«,.I,1 I.. PKILSIOI NT BIU, CLINTON A&cp Why HOW We Do Anything Means Everything EXPAND*II 11)11 ION DOV SEIDMAN "My friend Dov Seidman has dedicated his life's work to studying how people conduct their businesses and lives" writes President Clinton. Referring to Mr. Seidman's "complete philosophy of the how," President Clinton states: "[t]he individuals, organizations, and businesses that understand that how we choose to do things matters more than ever before will flourish." While Mr. Seidman's influential book has also been published in many countries and languages, the English language HOW mark is employed globally, as these examples demonstrate: 17. Mr. Seidman founded LRN in 1994. Over the past twenty years, LRN has helped more than 700 companies around the globe - and millions of their employees - translate their corporate values into concrete behaviors and practices that create advantage and economic value. LRN is the exclusive corporate sponsor of the Elie Wiesel Foundation for Humanity's Prize in Ethics. 18. As Fortune Magazine observes about LRN, "Dov Seidman has built a highly successful business" based on advising companies to "'outbehave' their competitors ethically," through always behaving in a way that demonstrates that how matters. Richard McGill Murphy, Why doing good is goodfor business, Fortune, February 8, 2010. 19. Mr. Seidman and his licensee LRN hold federal trademark registrations 4,210,276 and 4,388,331 for HOW. Those registrations cover, among other things, "business and professional conduct by business organizations," "corporate and social values," "institutional behavior and culture," "corporate culture and business, cultural, social and environmental responsibility," "values-driven business and values-based business leadership," and "the management and operation of business in an environmentally responsible and environmentally sustainable manner." Copies of those registrations are attached hereto as Exhibit A. 20. Mr. Seidman and LRN also hold six pending trademark applications for HOW- based marks, including HOW IS THE ANSWER, THE HOW REPORT, HOW METRICS and additional HOW marks. A chart describing those applications is attached hereto as Exhibit B. 21. The HOW marks, and their message that ethical and sustainable organizational behavior matters, incorporate the Plaintiffs' comprehensive, public emphasis on using "HOW" as a noun rather than the typical use of that word as an adverb. Plaintiffs' HOW marks are integral to LRN's business and marketing, and to how LRN connects and engages with its customers, prospects, and other stakeholders, in the United States and globally. 22. Mr. Seidman and LRN use the HOW marks in a wide array of business activities, in the U.S. and internationally, including: speeches, articles, newsletters, training programs, educational courses, workshops, website materials, and consulting services; as well as in promotional articles such as pins, T-shirts, bags, and bookmarks, which are widely disseminated at conferences and speaking engagements. 23. Consumers of those products and services, here and abroad, include corporate leaders and company employees in many diverse industries; government leaders and employees; military leaders, and servicemen and women; leaders and executives in entertainment, sports, marketing, and advertising; students, faculty and administrators in educational institutions; philanthropic and other nonprofit organizations; NGOs; and the general consuming public. 24. Plaintiffs' global publication, THE HOW REPORT, organizes more than two million individual observations of behavior using Plaintiffs' analytical assessment tool, HOW METRICS. The Report HOW Metrics™ measures your organization's corporate character — how decisions are made, how people are treated, how things really work — and how Governance, Culture, and Leadership behaviors can create real advantage in the marketplace. Download the report 25. Howistheanswer.com, Plaintiffs' primary online resource, features extensive uses of Plaintiffs' HOW marks. i d 'Hew' it notjut a question. Amp ISTHE ANSWER. "Our world Is being dnirmuscaily reshaped. The rules of the past no longer apply, in the 21st century, it's no longer what vou do that matters most but how you do it." a » * a 26. Plaintiffs maintain a strong and continuous social media presence through the use of the HOW marks, including a Facebook community. HOW ll thfl anSWar upSetePigelnlb j i .. iked - . I .. roftMrino « . i 9,256 27. Mr. Seidman and LRN regularly use the HOW marks and, explicitly, "How Matters," in their publications, presentations, website materials, training and educational courses (including lessons, titled "Why HOW Matters," incorporated within widely-viewed LRN courses), consulting services, and workshops. Here are some examples: LRN V HOW"-A New lent TtoJamaylBTOW" Whst do you stand for? is minutes The New NDirtul-iht World has Changed y minutes B#b„ivior Innovations 15 minutes New Leaders Development Program HOW Matters: The Key to Unleashing Competitive Advantage and Differentiation September 27,2012 * 5:00 pm to 7:00 pm =f * Forbes HOW Matters More Than Ever Dov Seidman. Contributor 10/10/2011 Dov SekJmtn ^ bing howistheanswer.com 1B1.0S0.000 RESULTS Why HOW matters more than ever and in ways it never has before: fnj-Ume - How Is the Answer v.-ww bowisttieanswet coin - The materials presented on this wabsite we provided by howlttheaniwef.com (*we"or forbes.com/sites/dovseidm... *tisr)lot informational purposes only... How do I know? The Answer +> Ra&f £» RMwMt * F*»oi4e «* M#g www thea newer « * NEWSLETTER For all updates and exclusives about !he upcoming album click the signup button below and enter your email address into the box P The Answer to Classic Rock theanswerloclH as (crock com ' We are The Answer To Classic Rock, Southern CaHomia's most request Classic Rock Band We willcome to youf party or event and play all ihe Classic Rock you have HOWis not just a question. HOW Is the answer. Because... Nog howlMheanswar corn » NOW is not just a question HOW It the answer Because HOW matters ij How matters! with Dov Seidman youtube.com/watch?v=mBKkat... QvouTub* MACanv*rsal*an wtth Dov S*Mmt»s F*WOOtrKM.SiKC«S.OlOW3C because it didn't know you, butIt knewit was lucrativetobundle yourmortgage with others. And the credit-rating Chief Learning SfiHHBHI^BW-WMHHI *UMntmm • * rUt ft>m Officer w. p,carey wpc 'How' Mattvra Mora than What' In Bu»in«f.,. and in 'How* Matters Tuwiw .%. 3«I MMf«MIMMHM«ni<»M« ia>l,»i.iHMI tllllM«lMWIM>IMWMM»l HMM <*» * M kana m ** «r*V :9**M"<* '*.jUJt« ;w«in y • m W 4NNMWMI I1ftt *Xr%»H(#C* $01 .jfua««in » m»mtw» ..WW*'M8WMW* ""••fcifflsaMSm^^ -, How' Matters Morethan 'What' in Business...and in Life 32. In his October 15, 2008 New York Times column "Why How Matters", Thomas L. Friedman captures the message conveyed to consumers through use of the HOW marks on all of Seidman's and LRN's products and services: for businesses, institutions, and individuals, "Seidman basically argues.. .how you do things matters more than ever." 12 33. Mr. Friedman has featured Seidman's and LRN's HOW marks and message in numerous New York Times columns, and as Rule #8 in his seminal book The World is Flat. "Seidman's essential argument [states that] [y]ou will differentiate your company from the others by how you do business." The Worldis Flat, at 467-68. 34. Seidman and LRN regularly and consistently repeat the meaning conveyed by the HOW marks to the consuming public, as well as the encompassing ethos of organizational and individual behavior those marks represent. For example, see Dov Seidman, How Matters More Than Ever, Forbes, October 10, 2011: "the leaders, organizations and individuals best equipped to navigate today's new conditions consistently get one key idea right: it is no longer what we do that matters most. It is HOW we do it." 35. As illustrated by the foregoing examples, and as Defendants are fully aware, Mr. Seidman and LRN have created and developed very substantial goodwill and reputation - and built a significant and growing business - based on the HOW marks and the message conveyed to consumers through Plaintiffs' use of those marks. 36. The HOW marks have become succinct symbols of LRN's and Seidman's products, services, values and philosophy. Indeed, the HOW marks and message are integral to Plaintiffs' business activities and embody the ethos at the center of Mr. Seidman's life's work. 37. Defendants knew of Plaintiffs' HOW marks and message months before they introduced their infringing advertising campaign and brand platform. Defendants had actual or constructive knowledge of Plaintiffs' federal trademark registrations, as well as Plaintiffs' six additional federal trademark applications relating to Plaintiffs' HOW marks. 38. Also, Mr. Seidman and the HOW marks and message were discussed at a Droga5 meeting held in late 2013. At that meeting, the Droga5 attendees discussed whether or not 13 Droga5 and Chobani should reach out to Mr. Seidman. Neither Defendant contacted Mr. Seidman at that time. 39. Instead, on January 29, 2014, on the eve of launching its infringing brand platform through a widely-televised Super Bowl ad, social media messages, and other branding and promotional activity, Chobani sent the following message to Mr. Seidman via Twitter: Chobani (©Chobani) 1/29/14.4:36 PM @DovSeidmanThanks for inspiring the world to care about "how." Can you help inspire the food industry, too? thunderclap.it/howmatters 40. Chobani's message to Mr. Seidman confirms Chobani's prior knowledge of Plaintiffs' HOW marks, and its recognition that the HOW marks and message have been uniquely associated with Mr. Seidman. 41. Within a day of sending its message to Mr. Seidman, Chobani proceeded with the introduction of its infringing branding campaign and platform, focusing on HOW: We believe How Matters. Do you? — v,;th Joe InEarrn Like Comnent 5hare %h 377 Q 33 Q 3 14 https://www.facebook.com/Chobani, last visited April 30, 2014. Since that date, Chobani has pursued an aggressive, continuous multimedia campaign infringing Plaintiffs' HOW marks. 42. Indeed, as Chobani's Chief Marketing Officer has publicly stated, the purpose of Chobani's infringing brand platform is to "celebrate, lean in, leverage, our 'how.'" (Peter McGuiness, The Economist's Big Rethink, 2014). "There are very few 'how' brands out there," adds Mr. McGuiness, "because the how isn't always pretty. And in our case, we could celebrate it and leverage it against our competitors." Id. 43. Droga5 - as a means of attracting more marketing and advertising business - is aggressively touting the infringing "How Matters" campaign it sold to Chobani: "Chobani Gets Real on Hollywood's Biggest Night: Taking 'How Matters' to the Oscars," https://www.droga5.com/news (last visited June 1, 2014). 44. Defendants' infringing branding platform extends its unlawful use of the HOW marks far beyond selling yogurt products. Chobani concedes that its brand campaign "focuses on Chobani's socially and environmentally responsible practices, in the hope that shining a light on those aspects of Chobani's operations would appeal to consumers and also inspire other food manufacturers to improve their practices." Letter of Chobani's counsel, Julia Huston, Esq., dated May 13, 2014. 45. Thus, just as Plaintiffs' HOW marks promote ethical corporate practices and convey the value and importance of ethical and socially responsible behavior, Chobani's infringing brand platform uses HOW to convey the identical points: HOW WE MAKE OUR PRODUCT MATTERS Acupof yogurt won't change theworld, but how wemake it might. fi§ 15 ~h HOW WE DO BUSINESS MATTERS Business cmbeatransformative fbrcfcfor good in theworld, and at Chobani weaim for nothing less. CHOBANI FOUNDATION Ww ma* spMoe «>sh»10%ofour prote to cha%Arxi sinesChooen's eaMdeys, veto supported grassroots OQ&RJzalions siwar diewoildid drMno, positive, sustsnabtochange,ToQeK 8* Chobani FnndaBonteactively focused onmatinggoodfood moraaccessible to as, especiatVa* youti andmost 46. As used by both Plaintiffs and Defendants, the word "matters" serves simply to emphasize, or highlight, the dominant word and concept, "How." 47. And just as Plaintiffs have done, Chobani seeks public endorsement of, and involvement in, its purported HOW corporate philosophy, as the following representative examples demonstrate: 16 How Matters 7 betivve HOW food is made mutters. Ifyou do ton. share the tthowmatters message: htlp:'/thndr.it ,'ldGVh2J" Chobani February 2 tate* patent anrj tErabemarfe Office *-Cf HOW Reg. No. 4,388,331 seidman. dov (united states individual) 1100 GLENDON AVENUE, SUITE 700 Registered Aug. 20,2013 i.osangeles, ca 90024 Int. CIs.: 16, 35, 41, and for: publications, namely, hand-outs, charts, articles and newsletters 45 IN THE FIELDS OF BUSINESS COMMUNICATIONS, BUSINESS AND PROFESSIONAL TRADEMARK CONDUCT BY BUSINESSES, INSTITUTIONS, AND GOVERNMENT AGENCIES, LEADER SHIP, CORPORATE AND SOCIAL VALUES, INSTITUTIONAL BEHAVIOR AND CULTURE, CORPORATE GOVERNANCE, VALUES-DRIVEN AND VALUES-BASED BUSINESS LEADERSHIP, INSPIRATIONAL I.EADERSI IIP, ETHICAL LEADERSHIP, ENVIRONMENTAL INNOVATION, ORGANIZATIONAL DEVELOPMENT, CORPORATE CULTURE AND SERVICE MARK BUSINESS, CULTURAL, SOCIAL AND ENVIRONMENTAL RESPONSIBILITY, ENTERPRISE PRINCIPAL REGISTER AND ENVIRONMENTAL SUSTAINABIEITY; ALL OF THE AFOREMENTIONED GOODS FOR USE BY BUSINESS EXECUTIVES, GOVERNMENT OFFICIALS, AND ORGANIZATION LEADERS INTERESTED IN ETHICS AND CORPORATE RESPONSIBILITY, IN CLASS 16 (U.S. CLS. 2, 5, 22, 23, 29, 37, 38 AND 50). FIRST USE 9-29-2011; IN COMMERCE 9-29-2011. FOR: COMMUNICATIONS, BUSINESS AND PROFESSIONAL CONDUCT BY BUSINESSES, INSTITUTIONS, AND GOVERNMENT AGENCIES, GOVERNANCE AND LEADERSHIP, CORPORATE AND SOCIAL VALLFES, INSTITUTIONAL BEHAVIOR AND CULTURE, CORPORATE GOVERNANCE, VALUES-DRIVEN BUSINESS AND VALUES-BASED BUSINESS LEADERSHIP, INSPIRATIONAL LEADERSHIP, ETHICAL LEADERSHIP, OR GANIZATIONAL DEVELOPMENT, CORPORATE CULTURE, BUSINESS CULTURAL AND SOCIAL RESPONSIBILITY, AND THE MANAGEMENT AND OPERATION OF BUSINESS IN AN ENVIRONMENTALLY RESPONSIBLE AND ENVIRONMENTALLY SUSTAINABLE MANNER; PROVIDING A WEBSITE FEATURING NEWS THAT RELATES TO AND IMPACTS *k*J ^jd. 535^ ArlltiK Dlirri llnllril SIhIkk Palenl mid Traditnuiifc OITli-i BUSINESS IN THE FIELDS OF BUSINESS ETHICS, BUSINESS AND PROFESSIONAL CONDUCT BY BUSINESSES, INSTITUTIONS, AND GOVERNMENT AGENCIES, LEADER SHIP, CORPORATE AND SOCIAL VALUES, INSTITUTIONAL BEHAVIOR AND CULTURE, CORPORATE GOVERNANCE, VALUES-DRIVEN AND VALUES-BASED BUSINESS LEADERSHIP, INSPIRATIONAL LEADERSHIP, ETHICAL LEADERSHIP, ORGANIZATIONAL DEVELOPMENT, CORPORATE CULTURE AND BUSINESS CULTURAL AND SOCIAL RESPONSIBILITY, AND THE MANAGEMENT AND OPERATION OF BUSINESS IN AN ENVIRONMENTALLY RESPONSIBLE AND ENVIRONMENTALLY SUSTAINABLE MAN NER; ALL OF THE AFOREMENTIONED SERVICES FOR USE BY BUSINESS EXECUTIVES, Reg. No. 4,388,331 government officials, and organization leaders interested in ethics AND CORPORATE RESPONSIBILITY, IN CLASS 35 (U.S. CLS. 100, 101 AND 102). FIRST USE 9-29-2011; IN COMMERCE 9-29-2011. FOR: EDUCATIONAL SERVICES, NAMELY, PROVIDING ONLINE CLASSES AND PRESENTATIONS IN THE FIELDS OF BUSINESS COMMUNICATIONS, BUSINESS AND PROFESSIONAL CONDUCT BY BUSINESSES, INSTITUTIONS, AND GOVERNMENT AGENCIES, LEADERSHIP, CORPORATE AND SOCIAL VALUES, INSTITUTIONAL BEHA VIOR AND CULTURE, CORPORATE GOVERNANCE, VALUES-DRIVEN AND VALUESBASED BUSINESS LEADERSHIP, INSPIRATIONAL LEADERSHIP, ETHICAL LEADERSHIP, ENVIRONMENTAL INNOVATION, ORGANIZATIONAL DEVELOPMENT, CORPORATE CULTURE AND BUSINESS, CULTURAL, SOCIAL AND ENVIRONMENTAL RESPONSIB ILITY, ENTERPRISE AND ENVIRONMENTAL SUSTAINABILITY; EDUCATIONAL SER VICES, NAMELY, CLASSES AND PRESENTATIONS IN THE FIELDS OF LAW, ETHICS, BUSINESS COMMUNICATIONS, BUSINESS AND PROFESSIONAL CONDUCT BY BUSI NESSES, INSTITUTIONS, AND GOVERNMENT AGENCIES, LEADERSHIP, CORPORATE AND SOCIAL VALUES, INSTITUTIONAL BEHAVIOR AND CULTURE, CORPORATE GOVERNANCE, VALUES-DRIVEN AND VALUES-BASED BUSINESS LEADERSHIP, IN SPIRATIONAL LEADERSHIP, ETHICAL LEADERSHIP, ENVIRONMENTAL INNOVATION, ORGANIZATIONAL DEVELOPMENT, CORPORATE CULTURE AND BUSINESS, CULTUR AL, SOCIAL AND ENVIRONMENTAL RESPONSIBILITY, ENTERPRISE AND ENVIRON MENTAL SUSTAINABILITY; PROVIDING LEARNING FORUMS IN THE FIELDS OF LAW, ETHICS, BUSINESS COMMUNICATIONS, BUSINESS AND PROFESSIONAL CONDUCT BY BUSINESSES, INSTITUTIONS, AND GOVERNMENT AGENCIES, LEADERSHIP, COR PORATE AND SOCIAL VALUES, INSTITUTIONAL BEHAVIOR AND CULTURE, CORPOR ATE GOVERNANCE, VALUES-DRIVEN AND VALUES-BASED BUSINESS LEADERSHIP, INSPIRATIONAL LEADERSHIP, ETHICAL LEADERSHIP, ENVIRONMENTAL INNOVATION, ORGANIZATIONAL DEVELOPMENT, CORPORATE CULTURE AND BUSINESS, CULTUR AL, SOCIAL AND ENVIRONMENTAL RESPONSIBILITY, ENTERPRISE AND ENVIRON MENTAL SUSTAINABILITY; PROVIDING AN ONLINE MONTHLY NEWSLETTER IN THE FIELDS OF LAW, ETHICS, BUSINESS COMMUNICATIONS, BUSINESSANDPROFESSION AL CONDUCT BY BUSINESSES, INSTITUTIONS, AND GOVERNMENT AGENCIES, LEADERSHIP, CORPORATE AND SOCIAL VALUES, INSTITUTIONAL BEHAVIOR AND CULTURE, CORPORATE GOVERNANCE, VALUES-DRIVEN AND VALUES-BASED BUSINESS LEADERSHIP, INSPIRATIONAL LEADERSHIP. ETHICAL LEADERSHIP, EN VIRONMENTAL INNOVATION, ORGANIZATIONAL DEVELOPMENT, CORPORATE CULTURE AND BUSINESS, CULTURAL, SOCIAL AND ENVIRONMENTAL RESPONSIB ILITY, ENTERPRISE AND ENVIRONMENTAL SUSTAINABILITY; ALL OF THE AFORE MENTIONED SERVICES FOR USE BY BUSINESS EXECUTIVES, GOVERNMENT OFFI CIALS, AND ORGANIZATION LEADERS INTERESTED IN ETHICS AND CORPORATE RESPONSIBILITY, IN CLASS 41 (U.S. CLS. 100, 101 AND 107). FIRST USE 9-29-2011; IN COMMERCE 9-29-2011. FOR: PROVIDING ONLINE INFORMATION IN THE FIELDS OF LAW, LEGAL ETHICS, BUSINESS REGULATORY COMPLIANCE, AND LEGAL COMPLIANCE, IN CLASS 45 (U.S. CLS. 100 AND 101). FIRST USE 9-29-2011; IN COMMERCE 9-29-2011. THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR TICULAR FONT, STYLE, SI7E, OR COLOR SN 77-705,755, FILED 4-2-2009. LINDA POWELL, EXAMINING ATTORNEY Page: 2/RN# 4,388,331 REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS. Requirements in the First Ten Years* What and When to File: First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted,the registrationwill continue in force for the remainderof the ten-year period, calculated from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a federal court. Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059. Requirements in Successive Ten-Year Periods* What and When to File: You must rile a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between every 9th and lOth-year period, calculated from the registration date.* Grace Period Filings* The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee. The United Suites Patent and Trademark Office (USPTO) will NOT send you any future notice or reminder of these filing requirements. ♦ATTENTIONMADRID PROTOCOL REGISTRANTS: The holder of an international registration with an extension of protection to the United States under the Madrid Protocol must timely tile the Declarations of Use (or Excusable Nonuse) referenced above directly with the USPTO. The time periods for filing are based on the U.S. registrationdate (not the internationalregistrationdate). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for nationally issued registrations. See 15U.S.C. §§1058,114 Ik. However, owners of international registrations do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying international registration at the International Bureau of the World Intellectual Property Organization, under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the date of the international registration. See 15 U.S.C. §1141j. For more informationand renewal forms for the international registration, see http://www.wipo.int/madrid/eiv. NOTE: Fees and requirements for maintaining registrations arc subject to change. Please check the USPTO website for further information. With the exception of renewal applications for registered extensions of protection, you can file the registration maintenance documents referenced above online at http://www.uspto.gov. Page: 3/RN# 4,388,331 EXHIBIT B Plaintiffs' Pending Federal Trademark Applications Mark App. No. HOW IS 85558020 THE ANSWER App. Date 3/1/2012 Products/Services Electronic downloadable publications, namely, books, newsletters hand-outs, workbooks, legal memoranda, executive training manuals, charts, research papers, white papers, articles, best practice guides, and handbooks in the fields of business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability. (Class 9) Publications, namely, books, newsletters, hand-outs, workbooks, legal memoranda, executive training manuals, charts, research papers, white papers, articles, best practice guides, and handbooks in the fields of business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability; Printed matter, namely, a periodical focusing on the fields of law, ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability. (Class 16) Consulting and advisory services in the fields of business ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, business administration and management, business leadership development, corporate and social values, institutional behavior and culture, corporate governance, environmental innovation, organizational development, corporate culture and business cultural and social responsibility; Business N-280180 2 consulting services, namely, providing advice and assistance in the management and operation of business in an environmentally responsible and environmentally sustainable manner; Business consulting services, namely, providing assistance in development of business strategies and creative ideation; Providing online information in the fields of business ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, governance and leadership, corporate and social values, institutional behavior and culture, corporate governance, organizational development, corporate culture, business cultural and social responsibility, and the management and operation of business in an environmentally responsible and environmentally sustainable manner; Providing a website featuring news that relates to and impacts business in the fields of business ethics, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, organizational development, corporate culture and business cultural and social responsibility, and the management and operation of business in an environmentally responsible and environmentally sustainable manner. (Class 35) Educational services, namely, providing online information, classes, tutorials and presentations in the fields of business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability; Educational services, namely, classes, tutorials and presentations in the fields of law, ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability; Providing group coaching and learning forums in the fields of law, ethics, business N-280180 2 communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability; Educational and entertainment services, namely, providing speaking services in the fields of business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability. Providing an online newsletter in the fields of law, ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability. (Class 41) THE 85587158 4/2/2012 HOW REPORT Publications, namely, white papers in the field of business, namely, business ethics, corporate culture and organizational behavior, and their impact on business performance, namely, innovation, resiliency, efficiency, employee loyalty, customer satisfaction, misconduct, and financial performance. (Class 16) HOW 85587159 4/2/2012 METRICS Business analysis, assessment and review of business data, business information, organizational behavior, corporate culture and business leadership as they relate to business performance, namely, innovation, resiliency, efficiency, employee loyalty, customer satisfaction, misconduct, and financial performance. (Class 35) HOW 85949621 6/3/2013 Board games, card games and role-playing games in the fields of business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate N-280180 2 governance, values-driven and values-based business leadership, inspirational leadership, ethical leadership, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability. (Class 28) HOW 85950205 6/4/2013 Publications, namely, books, journals, reports, workbooks, training manuals, research papers, guides, and handbooks in the field of law, ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, valuesdriven and values-based business leadership, inspirational leadership, ethical leadership, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability; all of the aforementioned goods for use by business executives, employees, government officials, and organization leaders interested in ethics and corporate responsibility. (Class 16) Consulting and advisory services in the fields of business ethics, business oral and written communications, business and professional conduct by businesses, institutions, and government agencies, business administration and management, business leadership development, corporate and social values, institutional behavior and culture, corporate governance, valuesdriven and values-based business leadership, inspirational leadership, ethical leadership, organizational development, corporate culture and business cultural and social responsibility; Business consulting services, namely, providing advice and assistance in the management and operation of business in an environmentally responsible and environmentally sustainable manner; Business consulting services, namely, providing assistance in development of business strategies and creative ideation; all of the aforementioned services for use by business executives, employees, government officials, and organization leaders interested in ethics and corporate responsibility. (Class 35) Educational and entertainment services, namely, N-280180 2 providing tutorials, group coaching and speaking services in the fields of business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, values-driven and values-based business leadership, inspirational leadership, ethical leadership, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability; Online board games, computer games, card games, role-playing games and non-dowloadable interactive games in the fields of law, ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, business leadership, corporate and social values, institutional behavior and culture, corporate governance, values-driven and values-based business leadership, inspirational leadership, ethical leadership, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability; Entertainment services, namely, providing temporary use of non-downloadable interactive games; all of the aforementioned goods for use by business executives, employees, government officials, and organization leaders interested in ethics and corporate responsibility. (Class 41) HOW 85969205 6/25/2013 Computer game software, interactive computer game programs and downloadable computer game programs; Educational and training software featuring instruction and information in the fields of law, ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, leadership, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability; Prerecorded DVDs featuring educational information in the fields of law, ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate N-280180 2 governance, leadership, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability; Downloadable webinars and publications, namely, books, presentation outlines, journals, charts, research papers, case studies, white papers, articles, newsletters, and handbooks in the fields of law, ethics, business communications, business and professional conduct by businesses, institutions, and government agencies, leadership, corporate and social values, institutional behavior and culture, corporate governance, leadership, environmental innovation, organizational development, corporate culture and business, cultural, social and environmental responsibility, enterprise and environmental sustainability. (Class 9) N-280180 2 Dov Seidman v. Chobani, LLC, et al., Docket No. 1:14-cv-04050 (S.D.N.Y. Jun 04, 2014), Court Docket General Information Court United States District Court for the Southern District of New York Nature of Suit Property Rights: Trademark Docket Number 1:14-cv-04050 Status Open © 2014 The Bureau of National Affairs, Inc. All Rights Reserved. Terms of Service View at Bloomberg Law // PAGE 41