Moreover, since Plaintiff’s unsupported claims of actual notice are not plausible, its general allegations of Defendants’ knowledge, (FAC ¶ 157), also fail to provide a plausible inference of willful or deliberate infringement. Defendants are not aware of any precedential case where a court has found willfulness, or granted injunctive relief for that matter, absent actual notice under 15 U.S.C. § 1111. Having failed to plead that Defendants had actual notice of its registered trade dress as required by statute, Plaintiff’s claims of willfulness and request for injunctive relief fail as a matter of law and should be dismissed.

Thus, no damages are awardable to Gucci for its Lanham Act claims because it failed to give notice as required under 15 U.S.C. § 1111. Coach, Inc. v. Asia Pac. Trading Co., 676 F. Supp. 2d 914, 925 (C.D. Cal. 2009) (plaintiffs were “not entitled to recover any damages—whether profits, actual damages, or statutory damages—on their Lanham Act claims” under § 1111 for lack of actual or constructive notice); mophie, Inc. v. Shah, No. SACV1301321DMGJEMX, 2014 WL 10988347, at *22 (C.D. Cal. Nov. 12, 2014) (citing § 1111 and Coach case).[1] [1] Gucci America is also barred from recovering statutory damages for alleged counterfeiting by Forever 21 for BRB on clothing under 15 U.S.C. § 1117(c) because Forever 21’s use of BRB on clothing did not arise to use of a counterfeit mark. Gucci does not have a registration for BRB covering clothing, as required for establishing a counterfeit mark under the Lanham Act. See 15 U.S.C. § 1116(d)(1)(B)(i) (“A counterfeit mark is one that is “a counterfeit of a mark that is Case 2:17-cv-04706-SJO-E Document 219 Filed 10/29/18 Page 54 of 60 Page ID #:16950 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -41- Case No. 2:17−cv−04706 SJO (Ex) FOREVER 21’S MEMORANDUM OF CONTENTIONS OF FACT AND LAW 17. Whether Gucci America is entitled to any monetary relief in light of the equities of the case and Forever 21’s lack of willfulness Section 35(a) of

or the letter R enclosed within a circle.” 15 U.S.C. § 1111. Plaintiff has no registered trademark for the HBDGAS phrase.

Because Plaintiff failed to provide notice of its trademark registration, and has failed to produce evidence that Defendants knew of such registration, Plaintiff’s trademark infringement claims fail. Importantly, 15 U.S.C. §1111’s notice requirement applies to claims brought under both 15 U.S.C. §1114 for infringement of a registered mark and 15 U.S.C. §1125(a) for infringement of an unregistered mark, when this claim is based Case 8:09-cv-00055-DMG-MLG Document 93 Filed 02/12/10 Page 22 of 30 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CASE NO. SACV09-0055 DMG (MLGx) 18 DEFENDANTS’ MPA IN SUPPORT OF MOTION FOR SUMMARY ADJUDICATION on a registered mark.

Actual notice is similarly a prerequisite for recovery of damages or profits for registered trade dress infringement because Apple does not display the trade dress with the required statutory language identifying its registration. See 15 U.S.C. § 1111; RT 2007:21-2008:1. Mr. Musika based all of his damage estimates for patent infringement and registered trade dress dilution on a notice date of August 4, 2010, the date of a meeting between SEC and Apple representatives.

SACV09-0055 DMG (MLGx) 6 DEFENDANTS’ REPLY IN SUPPORT OF MOTION FOR SUMMARY ADJUDICATION C. Plaintiff has submitted no evidence that it provided notice of its trademark registration for FREECREDITREPORT.COM. As discussed in Defendants’ opening brief, 15 U.S.C. §1111 bars the award of profits and damages under the Lanham Act unless the defendant had actual notice of the trademark registration. While Plaintiff might have inconsistently used the ® symbol in connection with the FREECREDITREPORT.COM mark prior to November 4, 2008, it certainly never did so in the samples it sent to Defendants.

Further, even if a class member proves liability, it can recover damages only if it individually proves, for each registered mark, that either (1) it consistently displayed trademark notice (such as ®) along with the mark, or (2) the defendant had actual notice of the trademark registration. See 15 U.S.C. § 1111. g. Litigating plaintiffs’ unjust-enrichment claims would require an impracticable application of the laws of all 50 states.

I. INTRODUCTION Plaintiffs initiated this action on January 24, 2017, in the Court of Common Pleas of Philadelphia County at docket number 170103190 (the "Action"). In the Action, Plaintiffs allege the following purported claims against the ADAGP Defendants and John Does 1-10 (the "John Doe Defendants"): (1) violation of the Pennsylvania Trademark Act, 54 Pa. C.S.A. §§ 1101 et seq., and unfair competition under Pennsylvania common law (the "Infringement Claim")1; (2) commercial disparagement; (3) tortious interference with prospective commercial advantage; (4) civil conspiracy (the "Conspiracy Claim"); and violation of the Lanham Act, 15 U.S.C. §§ 1111 et seq. The ADAGP Defendants removed this action to the United States District Court for the Eastern District of Pennsylvania on February 23, 2017, and now move this Court to dismiss the trade dress claims contained in the Infringement Claim (Count 1)2, and the Conspiracy Claim (Count IV) in its entirety, with prejudice, because in each of these claims, Plaintiffs fail to state a claim for relief The trade dress claims in Plaintiffs' Infringement Claim are legally insufficient because Plaintiffs fail to sufficiently identify any non-functional, unique elements comprising its purported trade dress.

Moreover, Plaintiff failed to provide any pre-filing notice of federal trademark registration no. 4,254,086. 15 U.S.C. §1111 states “in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.” Because Plaintiff did not give notice of its registration and Defendant had no actual notice of the registration, Plaintiff is not entitled to profits or damages.