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Case 1:15-cv-08700-JGK Document 8 Filed 11/06/15 Page 1 of 15

FRANKFURT KURNIT KLEIN & SELZ, P.C.


Edward H. Rosenthal
Beth I. Goldman
488 Madison Avenue, 10th Floor
New York, New York 10022
Phone: (212) 980-0120
Fax: (212) 593-9175
Attorneys for Plaintiff
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------------------------------------- X
Makeable, LLC,
:
:
Plaintiffs,
:
: COMPLAINT AND DEMAND
-against: FOR JURY TRIAL
:
Breakout Commerce Inc., Austen Bernstein,
:
Micah Smith,
:
:
Defendants.
---------------------------------------------------------------------- X
Plaintiff Makeable, LLC (Makeable), by its undersigned attorneys, pursuant to the
applicable Federal Rules of Civil Procedure and the Local Rules of this Court, hereby demands a
trial by jury of all claims and issues so triable, and submits this Complaint against defendants
Breakout Commerce Inc. (Breakout), Austen Bernstein, and Micah Smith (together,
Defendants).
NATURE OF THE ACTION
1.

This is an action for trademark infringement, cybersquatting, unfair competition

and related claims. Defendants, without authorization, have willfully adopted and exploited the
Makeable name (the Infringing Mark) in connection with their new operation, which purports
to offer digital product manufacture and fulfillment services for ecommerce consumers.
Defendants also have launched a new website using the MAKEABLE trademark at the domain

Case 1:15-cv-08700-JGK Document 8 Filed 11/06/15 Page 2 of 15

www.makeable.com (the Infringing Domain Name) and are using Makeables signature social
media icon of the letter m on a solid background on Twitter, Facebook, Instagram, and
LinkedIn, and in connection with their Shopify App1 (the Infringing Icon and together the
Infringing Uses). Defendants Infringing Uses violate Plaintiffs rights in the mark
MAKEABLE, a federally-registered trademark owned by Plaintiff (the Makeable Mark).
THE PARTIES
2.

Plaintiff Makeable is a limited liability company organized under the laws of New

York that maintains its principal place of business at 11 Harrison St., New York, New York
10013.
3.

Upon information and belief, defendant Breakout Commerce, Inc. is corporation

incorporated under the law of Delaware that maintains its principal place of business at 79
Madison Ave., Suite 230, New York, New York 10016.
4.

Upon information and belief, defendant Bernstein is the CEO and Co-Founder of

Breakout Commerce Inc. and resides and/or works in this District.


5.

Upon information and belief, defendant Smith is the CTO and Co-Founder of

Breakout Commerce Inc. and resides and/or works in this District.


JURISDICTION AND VENUE
6.

This Court has original jurisdiction over this action pursuant to 15 U.S.C. 1121.

This Court has subject matter jurisdiction pursuant to 28 U.S.C. 1331 and 1338, as questions
of federal law have been presented under the Trademark Act of 1946, 15 U.S.C. 1041, et seq.

It appears that the Makeable Shopify App is currently in Private Beta, see
https://apps.shopify.com/makeable.

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This Court has supplemental jurisdiction over Makeables state law claims pursuant to 28 U.S.C.
1367.
7.

Venue is proper in this District under 28 U.S.C. 1391(b) because Defendants

reside and/or regularly conduct business in this District, and/or because a substantial part of the
claims arose in this District.
RELEVANT FACTS
8.

Makeable is a leading, independent full-service digital innovation company that

provides among other things, innovation consulting, technology design and development,
product design and development, user experience design, mobile app development, and
collaboration and invention services.
9.

Makeable was founded in 2007 and has been using the MAKEABLE

trademarks in connection with various goods and services since at least as early as September 18,
2013. As a result of Makeables longstanding and extensive use of the MAKEABLE
trademarks, those marks have become widely recognized as identifying Makeable and its
services as described further below.
Makeable and the MAKEABLE Marks
10.

Makeable offers a full array of product innovation services for Fortune 500

companies, including American Express, Viacom, Federated Department Stores, Uniqlo,


Priceline.com, and high profile start-ups, including jet.com, among others. As a ground-breaking
innovator in the field, Makeable created the worlds first made-for-the-internet entertainment
property for Simon Fuller and 19 Entertainment (available at:
http://www.itsmakeable.com/love/dream/), an extraordinarily popular weather app for the
Weather Channel (available at: http://www.itsmakeable.com/love/weatherchannel/), an

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Ecommerce MPG for American Express (see: http://www.itsmakeable.com/love/amex/serve/),


among other branded products.
11.

Makeables unique and creative work earned it the award of a best digital agency

in New York from Awwwards last year. Makeables work has been lauded in The New York
Times, Variety Magazine, the Daily News, Esquire Magazine, Fast Company, Advertising Age,
and Mashable.
12.

Makeable was founded in 2013 by Tom Ajello and Michael Kantrow. Makeable

owns and operates a website accessible via the domain www.itsmakeable.com, which was first
registered on July 25, 2013 (Plaintiffs Domain Name). Makeable has been marketing and
promoting its high quality product development services, innovation services, and digital
services under the Makeable name and through Plaintiffs Domain Name since at least July
2013.
13.

Makeable maintains an active presence on social media, including Facebook,

Twitter, LinkedIn, and Instagram using the icon that depicts the letter m against a solid

background

(the Makeable Icon). Makeable maintains an active presence and

overall reputation and marketing initiatives worldwide using digital media, SEO (search engine
optimization), SEM (search engine marketing) and social media.
14.

Makeable owns six (6) total federal trademark registrations for the trademark

MAKEABLE (Reg. Nos. 4598636, 4594226, 4598635) and the stylized mark

(Reg. Nos. 4609373, 4609372, 4642636). These registrations are for,


among other services, new product design services; graphic design services; design and
development of internet websites; visual design services in the nature of designing visual
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elements for on-line, broadcast, print, outdoor and other communication media; installation,
maintenance, repair, design and creation of computer programs; design for others in the field of
exhibits and displays for others; business consulting services in the field of brand creation,
brand development, brand evaluation, brand marketing and brand identity; business consulting
services in the fields of advertising, marketing, corporate identity development, strategic
branding, brand positioning and product promotion; business development services in the fields
of social commerce, ecommerce, mcommerce and CMS strategy; providing temporary use of
online non-downloadable software for use in creating, hosting, administering and measuring
social media metrics and analytics, and construction and installation of structures in the nature
of exhibits and displays. Copies of the listed Registration Certificates are attached as Exhibit A.
15.

Since 2013, Makeable has invested substantially in the promotion and marketing

of its MAKEABLE Mark. On average, Makeable spends more than $500,000 on promotion and
marketing each year using a variety of advertising channels, including PR, digital media, website
sponsorship, SEO (search engine optimization), SEM (search engine marketing) and social
media.
16.

As a result of Makeables significant promotional efforts, the public has come to

associate the MAKEABLE Mark with product design and development, innovation services and
digital services emanating exclusively from Makeable.
17.

By virtue of two and half years of continuous and substantially exclusive use, as

well as Makeables promotional efforts, the MAKEABLE Mark has come to symbolize
extensive and valuable goodwill that belongs exclusively to Makeable.

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DEFENDANTS INFRINGING CONDUCT


18.

Defendant Breakout is a startup company that is offering digital product design

and brand support services through several platforms.


19.

Upon information and belief, Breakout is owned and operated by Defendants

Austen Bernstein and Micah Smith.


20.

Defendants have not now, nor have they ever, been authorized by Makeable or its

affiliates to use the MAKEABLE Marks or any variation thereof in connection with its services.
21.

Upon information and belief, Defendant Breakout launched its makeable brand,

which was previously known as print.io, in September 2015. On September 20, 2015, print.io
announced on a blog accessible through the Infringing Domain that: Today, were excited to
share great news regarding the growth of our company, and to announce that we are rebranding
under our new company name - Makeable. A true and correct screenshot of the article is
attached hereto as Exhibit B.
22.

Upon information and belief, Defendants makeable brand offers services

involving access to manufacturing and development tools, including but not limited to,
technology design and development, product design and development, mobile app development,
and other similar services.
23.

In September 2015, Makeable became aware that on August 20, 2015, Defendant

Breakout filed an intent to use trademark application with the USPTO for the Infringing Mark
(Serial No. 86/731869) for services including, but not limited to, graphic design services;
providing temporary use of online non-downloadable software for use in storing, editing,
manipulating and printing digital images; providing temporary use of online non-downloadable
software for connecting customers with manufacturers; computer software; downloadable

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mobile application software for use in searching for, identifying, locating and displaying
providers of third-party manufacturing services.
24.

Upon information and belief, Defendant Breakout is the registrant of the

Infringing Domain Name, www.makeable.com.


25.

Upon information and belief, Defendant Breakout owns and operates the

Infringing Domain Name.


26.

Defendant Breakout currently uses the MAKEABLE Mark on and in connection

with the Infringing Domain and social media pages, including on Facebook, LinkedIn, Twitter,
and Instagram. True and correct copies of the website pages are attached hereto as Exhibit C.
27.

As depicted on the attached copies of Facebook, LinkedIn, Twitter, and Instagram

social media website pages, Defendant Breakout uses the Infringing Icon of a letter m on a

solid background as its social media icon


28.

, which also appears as

Upon information and belief, Defendants registered and are using the Infringing

Domain Name in connection with the website and digital media, SEO (search engine
optimization), SEM (search engine marketing), and social media for its competing business for
the purpose of diverting customers away from Plaintiff and trading on the goodwill associated
with Plaintiffs MAKEABLE Mark.
29.

Upon information and belief, Defendants registered and are using the Infringing

Domain Name in bad faith and with intent to profit from the goodwill associated with the
MAKEABLE Mark.
30.

Upon information and belief, Defendants had actual knowledge of Plaintiffs

existing trademark rights in and to the MAKEABLE Mark before they began making
unauthorized and infringing use of that mark in the United States.

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31.

Upon information and belief, Defendants began using the business name

makeable (the Infringing Mark) and the Infringing Domain Name, www.makeable.com, in
August 2015, two years after Plaintiff started using the MAKEABLE Mark and Plaintiffs
Domain Name, and with full knowledge of Plaintiffs use of the MAKEABLE Mark and
Plaintiffs Domain Name.
32.

Upon information and belief, Defendants spend little on advertising and

promotion in connection with its makeable brand, instead using their confusingly similar
Infringing Mark and the nearly identical Infringing Domain Name to trade on the goodwill
associated with the MAKEABLE Mark.
33.

Defendants services are identical to, or very closely related to Makeables goods

and services in the digital product design and brand support industry. Both offer brand support
services including access to manufacturing and development tools, such as graphic design,
technology design and development, product design and development, mobile app development,
and other similar services.
34.

As a result of Defendants sale, and offer of sale in e-commerce of manufacturing

services, which includes product design and brand support services to the same community of
consumers under an identical mark to Plaintiffs MAKEABLE Mark, and their use of the nearidentical Infringing Domain Name and visually similar Infringing Icon used on social media,
customers and potential customers are highly likely to be confused as to the source of the
services offered by Defendants and by Plaintiff.
35.

Indeed, to Plaintiffs knowledge, there has already been at least one direct

instance of actual confusion among consumers as to the source of the services offered by
Defendants and the services offered by Plaintiff.

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36.

In September 2015, Makeable received an email through its contact form at the

email address whatup@itsmakeable.com from an events manager at a digital marketing start-up


in New York City requesting information about creating new swag and asking about Makeables
work for other companies. The confusion was a result of Defendants use of its Infringing Mark
and Infringing Domain Name.
37.

This type of confusion has and will continue to significantly harm the Makeable

brand and lead to the loss of business by Plaintiff.


38.

Defendants Infringing Mark is confusingly similar to the MAKEABLE Mark.

Defendants use of the Infringing Mark, Infringing Domain Name, and Infringing Icon in
connection with digital product development, brand support, and related services threatens to
cause, and has already caused, consumer confusion and mistake, and deceives consumers as to
the existence of an affiliation, connection, or association under 15 U.S.C. 1114(1)(a), 1125(a),
1125(d) and state unfair competition laws.
COUNT I
Infringement of a Federally Registered Trademark (15 U.S.C. 1114(1)(a))
39.

Makeable repeats and realleges the allegations of Paragraphs 1 through 38 of this

Complaint as if fully set forth herein.


40.

Makeable owns valid and protectable federally registered trademarks for

MAKEABLE, Trademark Registration Nos. 4598636, 4594226, 4598635, 4609373, 4609372,


4642636.
41.

Defendants are using in commerce an Infringing Mark that is confusingly similar

in appearance and identical in sound and meaning to Makeables federally registered


MAKEABLE Mark.

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42.

The services offered by Defendants are competitive with the services offered by

Makeable under its MAKEABLE Mark.


43.

Defendants actions as alleged herein are likely to cause confusion or mistake or

deceive as to the origin, sponsorship, or approval of Defendants services, and thus infringe
Plaintiffs rights in its federally registered MAKEABLE trademarks in violation of Section 32(a)
of the Lanham Act, 15 U.S.C. 1114(1)(a).
44.

Upon information and belief, Defendants acts as alleged herein have been

committed with full knowledge of Plaintiffs prior rights in the MAKEABLE Mark. Defendants
infringement is therefore willful.
45.

Plaintiff has no adequate remedy at law inasmuch as money damages alone would

not adequately compensate Plaintiff for the harm done to its property rights, goodwill and
business reputation.
COUNT II
Trademark Infringement, False Designation of Origin and
Unfair Competition (15 U.S.C. 1125(a))
46.

Makeable repeats and realleges the allegations of Paragraphs 1 through 45 of this

Complaint as if fully set forth herein.


47.

Makeable has federally registered trademark rights in the MAKEABLE Mark.

48.

Defendants actions as alleged herein are likely cause confusion or reverse

confusion, mistake, as to the origin, sponsorship or approval of the services provided by each
party, and as to the affiliation, connection or association between Defendants and Plaintiffs
services, thus constituting trademark infringement, false designation of origin and unfair
competition with respect to the MAKEABLE Mark in violation of Section 43(a) of the Lanham
Act, 15 U.S.C. 1125(a).

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49.

As a direct and proximate result of Defendants intentional acts as alleged herein,

Plaintiff has been injured and will continue to be injured, in amount presently unknown and to be
determined at the time of trial.
50.

Upon information and belief, Defendants acts as alleged herein have been

committed with full knowledge of Plaintiffs prior rights in the MAKEABLE Mark. Defendants
infringement is therefore willful.
51.

Plaintiff has no adequate remedy at law inasmuch as money damages alone would

not adequately compensate Plaintiff for the harm done to its property rights, goodwill and
business reputation.
COUNT III
Cybersquatting Under the Anti-Cybersquatting
Consumer Protection Act (15 U.S.C. 1125(d))
52.

Makeable repeats and realleges all of the allegations of Paragraphs 1 through 51

of this Complaint as if fully set forth herein.


53.

Makeable owns six (6) federal trademarks registrations for its distinctive

MAKEABLE mark.
54.

Defendants Infringing Domain Name, www.makeable.com, is identical or

confusingly similar to Plaintiffs trademark.


55.

Upon information and belief, Defendants registered the Infringing Domain Name

with a bad faith intent to profit from it.


56.

Defendants are liable to Plaintiff for cybersquatting in violation of Section

43(d)(1)(A) of the Lanham Act, 15 U.S.C. 1125(d)(1)(A).

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57.

Plaintiff has no adequate remedy at law inasmuch as money damages alone would

not adequately compensate Plaintiff for the harm done to its property rights, goodwill and
business reputation.
COUNT IV
Common Law Unfair Competition, Trademark Infringement and
Misappropriation of Intellectual Property Rights
58.

Makeable repeats and realleges the allegations of Paragraphs 1 through 57 of this

Complaint as if fully set forth herein.


59.

The acts of Defendants complained of herein constitute common law unfair

competition, common law trademark infringement and misappropriation of Plaintiffs intellectual


property rights, and have caused and will continue to cause damage and irreparable injury to
Plaintiff.
60.

Upon information and belief, the acts of Defendants complained of herein have

been committed intentionally, willfully, deliberately, in reckless disregard of Plaintiffs legal


rights and/or with the malicious intent of injuring Plaintiff.
61.

Plaintiff has no adequate remedy at law inasmuch as money damages alone would

not adequately compensate Plaintiff for the harm done to its property rights, goodwill and
business reputation.
COUNT V
Deceptive Trade Practices Under 349 of New York General Business Law
62.

Makeable repeats and realleges the allegations of Paragraphs 1 through 61 of this

Complaint as if fully set forth herein.


63.

The above-described acts constitute deceptive trade and business practices under

349 of New York Gen. Bus. Law.

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64.

Defendants use of the Infringing Mark, the Infringing Domain, and Infringing

Icon is materially misleading to consumers and the public, and has caused and will continue to
cause confusion, mistake, as to the origin, sponsorship or approval of the services provided by
each party, and as to the affiliation, connection or association between Defendants and
Plaintiffs services.
65.

Upon information and belief, Defendants acts as alleged herein have been

committed with full knowledge of Plaintiffs prior rights in the MAKEABLE Mark. Defendants
infringement is therefore willful.
66.

Plaintiff has no adequate remedy at law inasmuch as money damages alone would

not adequately compensate Plaintiff for the harm done to its property rights, goodwill and
business reputation.
COUNT VI
Injury to Business Reputation and Dilution under 360-l of
New York General Business Law
67.

Plaintiff repeats and realleges the allegations of Paragraphs 1 through 66 of this

Complaint as if fully set forth herein.


68.

By reason of the practices and acts set forth above, Defendants have injured

Plaintiffs reputation and diluted the distinctive qualities of the MAKEABLE Mark, and are
likely to continue to do so.
69.

The actions of Defendants are without permission, license or consent of Plaintiff,

and unless enjoined by this Court, Defendants will continue these practices and acts, thereby
further harming Plaintiffs business reputation and causing Plaintiff further irreparable injury.

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70.

Plaintiff has no adequate remedy at law inasmuch as money damages alone would

not adequate compensate Plaintiff for the harm done to its property rights, goodwill and business
reputation.
PRAYER FOR RELIEF
WHEREFORE, by the undersigned attorneys, Plaintiff prays that this Court:
A.

Issue a preliminary and permanent injunction, restraining Defendants and all

those acting for, on behalf of, in active concert or participation with Defendants from: (i) using
on or in connection with access to manufacturing and development tools, including but not
limited to, technology design and development, product design and development, mobile app
development, brand support, and other similar services, any name containing the word
makeable or any confusingly similarly name; and (ii) using the Infringing Domain Name,
www.makeable.com, or the Infringing Icon, of the letter m against a solid color background;
B.

Direct Defendants to relinquish and transfer to Makeable the registration for the

Infringing Domain Name makeable.com;


C.

Direct Defendants to take affirmative steps to dispel the false impressions that

have been heretofore created by the use of marks and domain names confusingly similar to the
MAKEABLE Mark and Plaintiffs Domain Name;
D.

Enter a judgment in favor of Plaintiff and against Defendants, and order

Defendants to pay to Plaintiff:


i.

all profits, gains and advantages derived by Defendants as a result


of their acts complained of herein, together with interest; and in
view of the willful and deliberate nature of Defendants acts, that
such amount be trebled;

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ii.

the actual damages sustained by Plaintiff as a result of


Defendants acts complained of herein, together with interest; and
in view of the willful and deliberate nature of Defendants acts,
that such amount be trebled;

iii.

treble damages, reasonable attorneys fees, costs and


disbursements incurred by Plaintiff in this action, pursuant to 15
U.S.C. 1117; and

E.

Enter such other and further relief as the Court deems just and proper.

JURY TRIAL DEMANDED

Dated: New York, New York


November 4, 2015
FRANKFURT KURNIT KLEIN & SELZ, P.C.

By:

/s/ Edward H. Rosenthal


Edward H. Rosenthal, Esq.
Beth I. Goldman, Esq.
488 Madison Avenue
New York, New York 10022
Tel.: (212) 980-0120
Fax: (212) 593-9175
erosenthal@fkks.com
bgoldman@fkks.com
Attorneys for Plaintiff

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