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Fortunoff files suit against similarly named store

By Michelle Graff
February 08, 2010

Brooklyn, N.Y.--Fortunoff Brands LLC has filed suit against a Westbury, N.Y.-based jewelry company, claiming its company name and the lettering used on both its retail store and a Web site infringe on the Fortunoff trademark, court papers show.

According to a lawsuit filed Feb. 3 in U.S. District Court for the Eastern District of New York in Brooklyn, N.Y., Fortunoff is suing Ex-Fortune.Off Jewelry Inc., Cash for Gold Inc., Cash for Diamonds Inc. and USA Jewelry and Diamond Corner Inc.--all listed as operating out of the same headquarters in Westbury--accusing the companies of a series of federal trade act violations, including trademark and service mark infringement, trademark dilution, false designation of origin and unfair competition, and state violations of trademark infringement and unfair competition.

"Defendants are using names and marks and operating a business that infringes, dilutes and misappropriates plaintiff's exceptionally strong, well-known, famous and distinctive family of Fortunoff service marks and trademarks, in a manner that is likely to cause confusion, mistake and deception, and that is likely to dilute the distinctive quality and value of such marks," the lawsuit states.

The suit comes as the members of the Mayrock and Fortunoff families, who owed and operated the chain for four generations, are trying to bring back the name of the once-venerable retailer of jewelry and home goods--at least in the retail arena of outdoor furniture.

The families purchased the Fortunoff intellectual property, including the Fortunoff name, in July 2009 after the company (which by then had different owners) filed for bankruptcy in February 2009 and liquidated all 20 stores.

Court papers state that without the trademark owners' permission, the defendants began using the name Fortun Off--styled using the same typographical lettering or font as the original Fortunoff logo--for a jewelry store they were operating that was located across the street from The Mall at the Source in 2009.

The mall is the former home of the flagship Fortunoff store and the future home of a new Fortunoff Backyard Store, which Fortunoff Brands is opening via a licensing partnership with Furniture Concepts LLC.

According to court documents, Furniture Concepts is set to open a total of six Fortunoff outdoor furniture stores in New York and New Jersey, including the one at The Mall at the Source.

In addition to the Fortun Off jewelry store, court papers state that the defendants used the "Fortun-off" mark across the top of a Web site they were operating at FortuneJewelryExchange.com, though at press time this Web site no longer appeared to be available.

In attempt to resolve the situation, Fortunoff sent a cease-and-desist letter to the defendants in August 2009, asking the parties to stop using the Fortunoff marks immediately.

According to the lawsuit, after receiving the letter, the defendants eliminated the "Off" part of their jewelry store's sign but the "fortun" portion remained.
 
A couple of weeks later, Fortunoff sent a second cease-and-desist letter demanding the defendants quit using the "fortun" name and mark in the font, alleging that it was immediately recognizable as that contained in the original Fortunoff logo, and the defendants agreed to change the sign.

According to court papers, "in September 2009, an individual purporting to act on behalf of the defendants stated that the operators would add an 'e' to 'fortun' and change the font of the sign to a different font."

The changes were never made, however, and the defendants instead added the word "Gold" to the sign so it now reads "fortun Gold Jewelry," court papers show.

A person who answered the phone at fortun Gold Jewelry Monday refused comment to National Jeweler on the suit.

Fortunoff is asking the court to bar the defendants from using any of the Fortunoff marks or marks that might be derived from them, and to award Fortunoff Brands all of the defendants' profits, gains and advantages derived from using the marks, attorneys' fees, enhanced damages and any further relief the court deems proper.
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