Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 1 of 15

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

PHILADELPHIA MEDIA NETWORK Civil Action No. 11-cv-

(DIGITAL) LLC,

Plaintiff,

v.

VENDIO SERVICES, INC.,

Defendant.

COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGMENT

Plaintiff, Philadelphia Media Network (Digital) LLC (“Philadelphia Media Network”),

by and through its attorneys, and for its complaint against Defendant, Vendio Services, Inc.

(“Vendio”), states:

THE PARTIES

1. Philadelphia Media Network is a corporation organized under the laws of the State

of Delaware, with its principal place of business at 400 N. Broad Street, Philadelphia,

Pennsylvania 19130.

2. Upon information and belief, Defendant Vendio is a corporation organized under

the laws of the State of Delaware, having a place of business at 2800 Campus Drive, Suite 150,

San Mateo, California 94403.

JURISDICTION AND VENUE

3. This is an action for declaratory judgment, brought under 28 U.S.C. §§ 2201 and

2202, which action concerns a controversy arising under the Trademark Laws of the United

States.
 Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 2 of 15

4. This Court has jurisdiction by virtue of the fact that this is a civil action arising

under 28 U.S.C. §§ 2201 and 2202 and under the Trademark Laws of the United States, 15

U.S.C. §§ 1051-1127, jurisdiction being expressly conferred in accordance with 15 U.S.C. §

1121 and 28 U.S.C. §§ 1331 and 1338(a).

5. This Court has personal jurisdiction over Vendio because, on information and

belief, Vendio conducts and/or has conducted business in the Commonwealth of Pennsylvania

and within this District

6. Venue is proper in this District under 28 U.S.C. §§ 1391(b) and 1391(c).

7. An actual case or controversy has arisen between the parties based on Vendio’s

assertions that Philadelphia Media Network’s use of the marks DEALYO and PHILLY

DEALYO create a likelihood of confusion with Vendio’s alleged DEALIO trademark.

FACTUAL BACKGROUND

A. Philadelphia Media Network

8. Philadelphia Media Network is a Philadelphia-based media company that owns The

Philadelphia Inquirer, the Philadelphia Daily News, and the Philly.com web portal.

9. As part of its online business, Philadelphia Media Network operates a group deal-

of-the-day marketed under the DEALYO and PHILLY DEALYO names. This deal-of-the-day

(the “Deal”) can be accessed via www.dealyo.com, www.phillydealyo.com, or through the

Philly.com portal at phillydealyo.philly.com (individually and collectively the “Dealyo

website”). The Dealyo website operates such that each day, a new Deal is offered to the

consumer public. When a certain number of users sign up to purchase a Deal, the Deal becomes

activated, and the purchase is available to all users. If the predetermined minimum number of

purchasers is not met, the Deal expires and is not sold to anyone. A screen capture of the Dealyo

website’s homepage is attached hereto as Exhibit A.

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 Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 3 of 15

10. Philadelphia Media Network has used the DEALYO and PHILLY DEALYO marks

in interstate commerce since at least as early as August 14, 2010.

B. Vendio

11. Upon information and belief, Vendio is an Internet-based company operating,

among other websites, www.dealio.com (“Dealio.com”).

12. Vendio’s Dealio.com website aggregates coupon codes for various online retailers,

e.g., Macy’s, Bath & Body Works, and Victoria’s Secret. The Dealio.com website claims that

“Dealio.com delivers daily the hottest online coupon codes, discount coupons and online

deals. …” A screen capture of the Dealio.com website’s homepage is attached hereto as Exhibit

B.

13. Vendio is not and has never been in the business of operating a group deal-of-the-

day concept through its Dealio.com website.

14. Vendio claims to be the owner of U.S. Trademark Registration No. 3294935 for the

mark DEALIO. The DEALIO Registration issued less than five years ago, on September 18,

2007, and covers three classes of goods and services:

• Computer software for use in finding products and comparing prices; computer

software for use in finding the lowest prices for specific products and alerting the

user of same; computer software for use in navigating shopping websites,

obtaining information about retailers and the goods and services of others,

promoting the sale of goods and services of others; computer software for use in

managing consumer purchase information; computer software for use in

generating customized web pages; computer software for use in storing data

relating to consumer purchasing patterns and personal, social and recreational

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 Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 4 of 15

interests of others; computer software for use in advertising, promoting, and

marketing the goods and services of others.

• Providing consumer product information about the goods and services of others

via a global computer network; promoting the goods and services of others via a

global computer network; providing information about retailers via a global

computer network.

• Providing use of non-downloadable software for use in providing information

about the goods and services of others; providing use of non-downloadable

software for use in promoting the sale of goods and services of others; providing

use of non-downloadable software for use in providing information about

retailers; providing use of non-downloadable software for use in managing

consumer purchasing information; providing a search engine for generating

customized web pages in response to the user requested information about the

goods and services of others.

15. Vendio has claimed that Philadelphia Media Network’s DEALYO and PHILLY

DEALYO Trademarks are likely to cause confusion, and thus infringe, the DEALIO Registration

and mark and has demanded that Philadelphia Media Network immediately cease any and all use

of the DEALYO and PHILLY DEALYO Trademarks. A copy of Vendio’s “cease and desist”

letter dated April 8, 2011, is attached as Exhibit C.

COUNT I

Declaratory Judgment of No Likelihood of Confusion, and

Non Infringement of Trademark, 15 U.S.C. § 1051 et. seq.

16. Philadelphia Media Network incorporates by reference the allegations contained in

the paragraphs above as if fully set forth herein.

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 Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 5 of 15

17. An actual, present and justiciable controversy has arisen between Philadelphia

Media Network and Vendio concerning Philadelphia Media Network’s use of the DEALYO and

PHILLY DEALYO Trademarks.

18. Philadelphia Media Network does not violate Vendio’s alleged rights under the

Trademark Laws, or any other federal or state statute, or under common law.

19. Relevant consumers have not been and are not likely to be confused between the

Philadelphia Media Network’s DEALYO and PHILLY DEALYO marks and Vendio’s DEALIO

mark.

20. Philadelphia Media Network seeks a declaratory judgment from this Court that its

use of the DEALYO and PHILLY DEALYO marks is not likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation, connection, or association of Philadelphia Media

Network with Vendio, or as to the origin, sponsorship or approval by Vendio of Philadelphia

Media Network’s products, and thus, does not infringe any of Vendio’s alleged rights.

PRAYER FOR RELIEF

WHEREFORE, Philadelphia Media Network respectfully requests that the Court:

a) Enter judgment according to the declaratory relief sought;

b) Preliminarily and permanently enjoin Vendio from asserting that Philadelphia Media

Network’s use of the DEALYO and PHILLY DEALYO marks violate any of Vendio’s alleged

rights in the DEALIO Trademark;

c) Declare that Philadelphia Media Network’s use of the DEALYO and PHILLY

DEALYO marks do not violate any of Vendio’s alleged rights under the Lanham Act;

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 Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 6 of 15

d) Declare that Philadelphia Media Network’s use of the DEALYO and PHILLY

DEALYO marks is not likely to be confused with the DEALIO Registration or mark to cause

mistake, or to deceive as to the affiliation, connection, or association of Philadelphia Media

Network with Vendio, or as to the origin, sponsorship or approval by Vendio of the Dealyo

website;

e) Award Philadelphia Media Network any damages it may sustain;

f) Award Philadelphia Media Network its costs and expenses of this civil action

together with reasonable attorneys’ fees; and

g) Enter any other relief to which Philadelphia Media Network is entitled as a matter of

law or equity, or which the Court determines to be just and proper.

DEMAND FOR JURY TRIAL

Pursuant to Federal Rule of Civil Procedure 38, Philadelphia Media Network hereby

demands a jury trial on all issues so triable.

WOODCOCK WASHBURN LLP

Dated: April 15, 2011 By: /s/ David J. Wolfsohn

David J. Wolfsohn (Pa. I.D. No. 57974)
Nancy R. Frandsen (Pa I.D. No. 46497)
Chad A. Rutkowski (Pa I.D. No. 79860)
Cira Centre
2929 Arch Street, 12th Floor
Philadelphia, PA 19104-2891
Telephone: (215) 564-2222
Facsimile: (215) 568-3439
wolfsohn@woodcock.com
nfrandsen@woodcock.com
crutkowski@woodcock.com

Attorneys for Philadelphia Media

Network (Digital) LLC

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Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 7 of 15

Exhibit A
Philly.com: $5 For $10 Worth Of Sandwiches, Soups & More http://phillydealyo.philly.com/deal/philadelphia/3-js-cafe
Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 8 of 15

View other Dealyo locations:

Philadelphia Login to My Account

Today's Deal More Deals How It Works Contact Us Sign Up for Deal Alerts

Today's Deal: $5 For $10 Worth Of Sandwiches, Soups & More

Join the Group Buy Time left: 1d:10h:05m

OR Gift this Deal!

The deal is on!

Deal tipped 6 hours ago with 10 buyers

Value Discount People Purchased

$10 50% 46

Share: Recommend

Description: The Fine Print:

“April showers bring May flowers,” and boy have we seen our share of April showers this year. If wet Today's Dealyo is $10 to 3J's CAFE.
weather has you down, chase away those rainy day blues with a hot sandwich and bold soup from Cannot be combined with any other offers.
3J’s CAFÉ in Philadelphia. Limit one per customer, may purchase additional as a gift.
Not valid on catering orders.
Located on Spring Garden St, 3J’s CAFÉ is a “new kind of neighborhood eatery.” Their menu goes Entire value must be used in first visit. Any remaining balance will be
beyond typical comfort food and explores the limits of what good food can be. Give 3J’s CAFÉ a try forfeited.
with today’s Dealyo for $10 worth of sandwiches, paninis, soups, salads and more for only $5. You’ll Cannot be redeemed for cash.
go for the food, but you’ll stay for the casual but swanky atmosphere. No refunds or exchanges.
Gratuity and tax not included, please tip on good service for full
amount.
About 3J's Cafe Purchased Dealyo voucher will be available for download on Friday,
April 15.
A new kind of neighborhood eatery, 3J's CAFE is the perfect downtown restaurant for unexpected Voucher expires October 15, 2011.
all-day dining. Far beyond conventional comfort food, restaurant updates long-time favorites with a
welcome dose of style and sophistication. Cultured yet casual, swanky and sexy – 3J's CAFE's
mod-Americana cuisine and playful ambience create a mood that is sleek, chic and effortlessly cool. More Deals Nearby
Expertly adapted from familiar favorites, their large menu delivers food that excite the palette with Conshohocken:
instant appeal. Boldly flavored and artfully presented, 3J's CAFE in downtown serves sandwich, Half Off 2 Personal Training Sessions
panini, soup and salad that inspires guests with imagination and authenticity.
Cherry Hill:
Come in for an easy morning breakfast, buttoned-up lunch or leisurely dinner overlooking it all. Settle $10 For $20 Worth Of Thai Cuisine
into their cafe before a roaring fire and order from the contemporary menu. 3J's CAFE is a relaxed-
yet-refined retreat in the heart of the city's urban action.
Bridgeport:
$10 For $20 Worth Of Pizza, Hoagies & More

3J's Cafe
Ardmore:
Click here for more details.
$15 For $30 Worth Of Fine Pet Goods & Gifts
Location:
1822 Spring Garden St.,
Philadelphia, PA 19003
Conshohocken:
Half Off Facial Peel
Get Directions

Frazer:
$10 For $20 Worth Of Pizza, Subs, Wings & More

Mannington:
1 Hour Private Riding Lesson For $25

Map data ©2011 Google - Terms of Use

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Philly.com: $5 For $10 Worth Of Sandwiches, Soups & More http://phillydealyo.philly.com/deal/philadelphia/3-js-cafe
Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 9 of 15

Facebook Community
Philly Dealyo on Facebook
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1,382 people like Philly Dealyo.

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Community Talking Join the discussion

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2 of 2 4/13/2011 2:53 PM
Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 10 of 15

Exhibit B
Tax Software Deals, Online Coupons, Coupon Codes & Online Deals fro... http://www.dealio.com/
Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 11 of 15

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Tax Software Deals, Online Coupons, Coupon Codes & Online Deals fro... http://www.dealio.com/
Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 12 of 15

Never miss new coupon codes or deals with the FREE Dealio Toolbar
Learn More | Download Now | See More Deal Hunting Tools

What the Dealio? | Privacy Policy | Terms of Use | Site Map | Shopping Guides | Help | Blog | Uninstall Dealio Toolbar | Contact Us
Black Friday Sales | Cyber Monday 2011 Deals | Day After Christmas Sales
Vendio Sites: Widgipedia | Vendio | Auction Sniper | Socialflavor

Copyright © 1998-2011 Vendio Services, Inc.

All Rights Reserved. All registered trademarks are the
property of their respective owners, without intent to infringe.
Dealio's community provides user-generated online coupons & deals.

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Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 13 of 15

Exhibit C
 Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 14 of 15

FENWICK & WEST LLP

SILICON VALLEY CENTER 801 CALI FORNIA STREET MOUNTAIN VIEW, CA 9404 1

TEL 650 .988.8500 FAX 650 .938 .5200 WWW. FENWICK.COM

April 8, 2011
STEPH EN R. GARCIA EMAIL SRGARCIA @FENWICK.COM
ASSOCIATE DIRECT DIAL (650) 335·7367

BY CERTIFIED MAIL
VIA E-MAIL: SMPARILLO@PHILLYNEWS.COM

Suzanne M. Parillo
Associate General Counsel
Philadelphia Media Network Inc.
400 N. Broad Street
Philadelphia, PA 19130

Dear Ms. Parillo :

As you know, we represent Vendio Services, Inc. ("Vendio") in trademark matters,

Thank you for your March 21, 201lletter, informing us of Philadelphia Media Network Inc.'s
("PMN") purchase and intended use of the Dealyo.com domain name. We note that PMN is
already using Dealyo.com to redirect to a website at PhillyDealyo.Phill .com that displays a

stylized and misspelled version of our client's DEALTO trademark, ~~!iU~, in connection
with daily shopping deals.

Having reviewed the cease and desist letter that we sent to the previous registrant of
Dealyo.com, we trust you are aware that Vendio has used its DEALTO mark at Dealio.com since
2005 in connection with daily shopping deals and coupons and owns two U.S. federal trademark
registrations for the mark. In light of this information, we are surprised by your claim that PMN
is not and has no intention of infringing our client's rights, given that PMN is using the same
mark and domain to which our client previously objected, in connection with virtually identical
services. This unauthorized use creates a significant likelihood of consumer confusion and
constitutes clear trademark infringement. Moreover, you have now revealed that PMN has been
infringing Vendio ' s rights since August 2010 through its use of the "Philly Dealyo" name and
the PhillyDealyo.com domain in connection with the same services.

We must insist that PMN immediately cease all use of "Dealyo," including the stylized

version, • , in connection with online shopping deals or coupons, and disable the
Dealyo.com, PhillyDealyo.com, and PhillyDealyo.Philly.com domains. Please confirm by
April 22, 2011 that PMN has complied with these demands. Ifwe do not receive your
 Case 2:11-cv-02605-JS Document 1 Filed 04/15/11 Page 15 of 15

Suzanne M. Parillo
April 8, 2011
Page 2

confinnation by this date, we will certainly recommend that our client pursue other legal
remedies to address your ongoing infringement.

Sincerely,

SRG

28472/00070IDOCS/2414497. 1