7/27/2019 Correspondence: New York State Department of Economic Development v. MTH Electric Trains

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Robert E. HeslinJeff RothenbergKevin P. RadiganSusan E. FarleyNicholas MesitiPhilip E. Hansen*Bianche E. SchillerWayne F. ReinkeDavid P. Miranda

Victor A. CardonaBrett M. HuttonJohn W. BogerGeorge S. Blasiak

* Patent Agentt HK and UK Patent Attorney

HnslrN RoTHBNBERGEanrsv Mnsru P.c.INTELLECTUAL PROPERTY LAW

PATtrNTS . TRADEMARKS . COP\T,IGHTS

Attorneys at Law

5 Columbia CircleAlbany, New York 12203Telephone: (f f s) +sz-seooFacsimile: (5l8) 452-5579

www.hrfmlaw.com

Kathy Smith DiasDavid A. PascarellaAlana M. FuiererShanna K. SandersCaroline B. AhnKellie S. Fredericks*Andrew K. GonsalvesErica M. HinesShabrokh Falati

Matthew M. HulihanMelvin Li*fTeige P. SheehanRachel Leah PearlmanKristian E. ZieglerJacquelyn A. Graff

Of CounselJill M. BreedloveAnnette I. Kahler

July 26,2013

Via Federal Express 2-Day

Mr. Andy Edleman. VP of MarketingMTH Electric Trains7020 Columbia Gateway DriveColumbia, Maryland 21046-1532

RE: New York State Department of Economic Development v. MTH Electric TrainsTrademark InfringementOur File No.: 3106.GEN

Dear Mr. Edleman:

ITNYWe are intellectual property and litigation counsel to New York State Department of

Economic Development (State of New York), owner of federal trademark and service markregistrations for the I v NY@ marks. The State of New York has multiple registrations for itsfamily of I ? NY marks for a broad spectrum of goods and services, including, but not limited toUSPTO Registration Nos.: 1555836; 1558319;2431105;3091182;3944680;3818931; 4002144,4,267 ,3OJ , as well as common law trademark rights. The State of New York's federalregistrations include many classifications, including Class 28, which as yoll know, covers modeltrains. Furthermore, the State of New York has entered into many authorized licenses in which itpermits and controls the use of its mark, including licenses for toys and model trains.

MTH Electric Trains ("MTH") has been advised on multiple occasions, at least as earlyas May 30,2013, that its use of the I ? NY mark in its MTH O Gauge Model Train isunauthorized and infringing of the State of New York's registered trademarks. Bycorrespondence dated May 3I,2OI3 you confirmed MTH engaged in unauthorized use of the I

"Y mark in relation to the sale of 99 model trains, receiving revenues of approximately $6,000.The State of New York prohibits use of the I

"NY mark in this manner and prohibits any other

use of the I ? NY marks without a license. This confirms your representation that MTH is nolonger using the I V NY mark, and provides notice to you that any further use of the I ? NY markor any similar variation is unauthortzed and infringing.

Rochester Office - 100 Meridian Centre, Suite 250, Rochester, New York 14618 - Telephone: (585) 288-4832 - Facsimile: (585) 288-2010

7/27/2019 Correspondence: New York State Department of Economic Development v. MTH Electric Trains

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Mr. Andy Edleman, VP of MarketingMTH Electric TrainsJtly 26,20132lP age

As you know, the general public and legal precedent recognizes the I ? NY mark as "oneof the best known logos in the United States, if not the world". New York State Dep't of Econ.Dev. v. Ramapo Valley Brewery, lnc.,2010WL985321 (T.T.A.B. 2010). The use of thisfamous mark to advertise and market MTH products, without authorization violates thetrademark rights of the State of New York, constitutes an unauthorized infringement upon theState of New York's statutory and common law rights, is a misappropriation of its property, andis likely to cause confusion to the general public as to an affiliation and sponsorship with theState of New York. Such conduct constitutes trademark infringement pursuant to 15 U.S.C.$1114, etseq., andtrademarkdilutionunder 15U.S.C. $1125(c),aswellasaviolationof otherfederal, state and common law rights of the State of New York.

For over 30 years the State of New York has invested substantial time, effort andresources in creating the respect and goodwill associated with its I ? NY marks. The State ofNew York cannot and will not permit use of its mark to promote and advertise MTH'scommercial products. Your misguided threats of bringing a proceeding to cancel one or more ofthe I

"NY marks provides further evidence of not only your bad faith misuse of our client's

mark, but a lack of understanding of trademark law as our client's registrations have repeatedlybeen recognized and approved by the USPTO and others, and are considered among the mostvaluable in the world.

In light of the multiple federal trademark registrations for the I"

NY marks, the

undisputed fame of the marks, the State of New York's clear prohibition, any use of the I v NYmark by MTH is considered a deliberate, willful and knowing act of infringement for which theState of New York will be entitled to seek all appropriate damages and relief, including trebledamages and attorney's fees under the Lanham Act. We require a full accounting of all uses,revenues and profits resulting from the unauthorized use of the I ? NY logo, so that properdamages can be assessed.

Please be advised that this letter is provided without prejudice to all of the rights,remedies and causes of action that the State of New York has, including the recovery ofdamages, injunctive relief and attorney's fees. Thank you for your prompt attention.

Very truly yours,

Y & MESITI P.C.ESLIN ROTHENBERG

DPM/rfvid P. Miranda

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www. 14rk,RAi Ikii lq. corvr

phone: 4'lO.1Bl.2rB0[nx: 4l O.r81.6122

Dear David:

This letter responds to your July 26, 20'13 letter.

Your letter is ridiculous, and if New York paid you to write it, then it is no wonder Weinermay be its next Mayor. Your letter itself is a violation of the Lanham Act - chalked full oflies and half truths, calculated to deceive. For example, you state NY's trademarkregistrations "have repeatedly been recognized and approved by the USPTO and others,and are considered among the most valuable in the world." You know full well that noone thinks NY's trademark is "among the most valuable in the world." But you put theacronym "USPTO" next to "among the most valuable in the world" to create the falseimpression that the USPTO believes that. You also state New York's registrations"include many classifications, including Class 28, which as you know, covers modeltrains." But NY does not own a trademark registration in Class 28 for model trains - itowns a trademark registration in Class 28 for "plush toys." You attempted to deceive usinto believing that New York's Class 28 registration actually covers model trains as

opposed to the truth, thatClass 28 in general includes "model

trains."David, this is why

people despise lawyers. Does New York know you behave like this on its behalf? I'mguessing so if they read the NY Times:

http://www. nytimes.com/2013l05l30lnyregioninew-york-challenges-a-coffee-shop-logo.html?hp&_r=1&

http.//abovethelaw.com/2013i0Sinew-york-hearts-iptrolling/#more-247659

We are no longer using the I LOVE NEW YORK phrase. We sold 99 units of the item inquestion (M.T.H. model number 30-73334) for total revenue of $2,916.33 two and a halfyears ago. Our train car's deco was based on a real train that had been around since the1970's. lf you make the mistake of suing MTH for this, we will defend ourselves andpublicize this on all of the various web sites that take great interest in cases like this. l'msure the people of New York will be thrilled to know that tens of thousands of dollars intaxpayer funds are being spent to chase a model railroad manufacturer for a couplehundred bucks in licensing fees, while the New York public school system continues tocollapse based on a lack of resources.

lf you have any doubt about MTH's willingness to litigate, please search Pacer courts forthe federal actions in which we have been involved. lf you continue to have doubt afterlooking at the lengthy dockets in these cases, please feel free to contact any of ouradversaries in the cases to ask them about MTH's willingness to defend itself. Unless youare contacting me about accepting service of process of the complaint - something youand I both know will never happen - then kindly stop wasting our time with your quibblingover this trivial matter.

Mike WolfPresident - M.T.H. Electric Trains

M.T.H. Elecrnic Tnnins 7O2O Colunbin Gnrewny Dnive Columbin, Mnnylnnd 210+6.1r72