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Case 3:11-cv-30251 Document 1

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UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS CHANNING BETE COMPANY, INC., Plaintiff, v. SELMEDIA, INC., Defendant. Plaintiff Channing Bete Company, Inc., by and through its attorneys, brings this action against the defendant, SELmedia, Inc., and complains and alleges as follows: The Parties 1. Plaintiff Channing Bete Company, Inc. (CBC) is a family-owned corporation Civil Action No. COMPLAINT DEMAND FOR JURY TRIAL

founded in 1936 and organized and existing under the laws of the Commonwealth of Massachusetts with its principal place of business in South Deerfield, Massachusetts. 2. CBC publishes, advertises, offers for sale and sells social and emotional learning

instructional materials to be used by teachers, clinics, educational institutions and parents under trademarks for PATHS. 3. CBC owns three registered trademarks for PATHS, with dates of first use in

commerce of at least as early as September 1986. 4. Upon information and belief, SELmedia, Inc. (SELmedia) is a corporation

organized and existing under the laws of the State of North Carolina, with its principal place of business in Cary, North Carolina. 5. SELmedia advertises, markets, offers for sale and sells social and emotional learning

instructional materials to be used by teachers, clinics, educational institutions and parents under the name ParentPaths.

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Nature of the Complaint 6. This is an action for trademark infringement, whereby CBC is seeking damages and

injunctive relief under the Lanham Act, 15 U.S.C. 1051 et seq., arising out of SELmedias willful infringement of CBCs trademarks for PATHS due to SELmedias unauthorized use of marks that are confusingly similar to the PATHS trademarks. Jurisdiction and Venue 7. This Court has jurisdiction over the subject matter of CBCs claims pursuant to 28

U.S.C. 1331, 1332 and 1338(a), and 15 U.S.C. 1116 and 1121. 8. This Court has personal jurisdiction over SELmedia pursuant to M.G.L. c. 223A

3(d) because SELmedia owns, operates and maintains its website, www.parentpaths.com, which is persistently directed and accessible to residents of Massachusetts, from which SELmedia advertises and offers to sell products into Massachusetts using infringing marks without CBCs authorization or consent, causing tortious injury to CBC in Massachusetts. 9. This Court has personal jurisdiction over SELmedia pursuant to M.G.L. c. 223A

3(b) and (c) because, upon information and belief, SELmedia contracts to supply products into Massachusetts using infringing marks without CBCs authorization or consent, and is causing tortious injury to CBC in Massachusetts. 10. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b) because a

substantial part of the events or omissions giving rise to CBCs claims occurred in this judicial district.

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General Allegations 11. Social and emotional learning, known in the industry as SEL, is a specialized niche

within the education industry designed to teach children how to develop social skills, cope with difficult social situations and avoid behavioral problems, such as violence and aggression. 12. The importance of SEL programs has gained momentum over the past decade through,

for example, the Collaborative for Academic, Social, and Emotional Learning, whose mission statement is [t]o establish social and emotional learning as an essential part of education. Exhibit 1. 13. On July 7, 2011, the Academic, Social and Emotional Learning Act of 2011, H.R.

2437, was introduced in the House of Representatives with the goal of support[ing] evidencebased social and emotional learning programming. 14. CBC is a third-generation family-run Massachusetts company that has been in the

advertising and publishing business since 1936 and specializes in the publication and sale of SEL instructional materials throughout the United States under its registered trademarks for PATHS. See Exhibit 2. 15. CBCs mission is to strengthen individuals, families, and communities by reinforcing

healthy behaviors and commitment to positive social values. Exhibit 2. 16. CBC owns all right, title and goodwill in U.S. Trademark Registrations Nos.

1,916,419; 3,511,765 and 4,018,347 for PATHS for SEL instructional materials (the PATHS Marks), all of which have dates of first use in commerce of at least as early as 1986. See Exhibits 3, 4 and 5.

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17.

The PATHS brand products are one of the leading and most highly respected

evidence-based SEL programs, and CBC is widely praised throughout the SEL industry as the source of one of the best quality SEL programs available in the industry. See Exhibit 6. 18. CBC has devoted significant resources to advertising and promoting its PATHS

brand of SEL products and materials. 19. The PATHS brand of SEL products are marketed, offered for sale and sold for use by

educational institutions, clinics, teachers and parents in print and digital format. See Exhibit 7. 20. CBC has widespread sales of its PATHS brand SEL products and materials

throughout the United States, including all 50 states, the District of Columbia and the Virgin Islands. 21. On or about July 8, 2011, SELmedia announced the launch of its own SEL

instructional materials under the name ParentPaths. See Exhibit 8. 22. SELmedia has used and continues to use ParentPaths, which is confusingly similar to

the PATHS Marks, without CBCs authorization or consent to advertise, offer for sale and sell SEL products to educational institutions, clinics, teachers and parents. See Exhibits 8 and 9. 23. On or about July 20, 2011, CBC requested that SELmedia cease and desist from

continuing to infringe CBCs trademark rights in PATHS, but SELmedia refused. 24. On or about October 21, 2011, CBC again requested that SELmedia cease and desist

from continuing to infringe CBCs trademark rights in PATHS, but SELmedia chose not to respond. 25. Upon information and belief, SELmedia intends to launch at least two new SEL

products under the name ParentPaths. See Exhibit 9.

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26.

SELmedias unauthorized use ParentPaths, which is confusingly similar to the PATHS

Marks, has caused, and will continue to cause, irreparable harm to CBC unless and until enjoined by this Court. COUNT I INFRINGEMENT OF FEDERAL TRADEMARK REGISTRATION NO. 1,916,419 27. CBC realleges and incorporates herein by reference the allegations set forth in

paragraphs 1 through 26. 28. CBC was assigned, and therefore owns, all substantial rights and goodwill in the valid

and enforceable U.S. Trademark Registration No. 1,916,419, registered on September 5, 1995, for PATHS (the 419 PATHS Mark). A true and correct copy of the 419 PATHS Mark certificate of registration and assignment are attached hereto as Exhibits 3 and 10. 29. The 419 PATHS Mark is registered under International Class 16 for printed

curriculum for regular and special education elementary school classes relating to the prevention of behavioral problems including violence and aggression and has a date of first use in commerce of at least as early as September 1986. 30. 31. 32. 33. The 419 PATHS Mark is incontestable pursuant to 15 U.S.C. 1065 and 1115(b). The 419 PATHS Mark is distinctive for SEL instructional materials. CBC has continuously used the 419 PATHS Mark in interstate commerce. As a result of its continued use, the 419 PATHS Mark has become associated in the

minds of consumers as identifying CBC as the source of quality SEL instructional materials. 34. SELmedia has advertised, offered for sale and sold its SEL instructional materials

using ParentPaths, which is confusingly similar to the 419 PATHS Mark, without CBCs authorization or consent. See Exhibits 8 and 9.

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35.

SELmedias unauthorized use of ParentPaths to advertise, offer for sale and sell

goods that compete with goods sold by CBC in interstate commerce under the 419 PATHS Mark is and/or has been likely to cause confusion, or to cause mistake, as to the source of PATHS products pursuant to 15 U.S.C. 1114. 36. 37. SELmedias infringing activities have damaged CBC. Upon information and belief, SELmedia will continue to infringe the 419 PATHS

Mark, causing irreparable harm to CBC, unless enjoined by this Court. 38. Upon information and belief, SELmedia had actual notice of, or should have

reasonably known of the existence of, the 419 PATHS Mark and, despite such notice, has continued to engage in acts of infringement of the 419 PATHS Mark. 39. SELmedias past and continued acts of infringement are willful and deliberate. COUNT II INFRINGEMENT OF U.S. TRADEMARK REGISTRATION NO. 3,511,765 40. CBC realleges and incorporates herein by reference the allegations set forth in

paragraphs 1 through 39. 41. CBC owns all substantial rights and goodwill in the valid and enforceable U.S.

Trademark Registration No. 3,511,765, registered on October 7, 2008 for PATHS (the 765 PATHS Mark). A true and correct copy of the 765 PATHS Mark certificate of registration is attached hereto as Exhibit 4. 42. The 765 PATHS Mark is registered under International Class 16 for flashcards;

photographs; curriculum manuals in the areas of bullying prevention and positive social and emotional development and printed materials for evaluating and tracking student development in those areas; progress charts; posters; and instructional manuals for use in assisting children with social development, emotional development, self-control, and problem identification and for use

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in the prevention of behavioral problems including violence and aggression and has a date of first use in commerce of at least as early as September 1986. 43. 44. 45. The 765 PATHS Mark is distinctive for SEL instructional materials. CBC has continuously used the 765 PATHS Mark in interstate commerce. As a result of its continued use, the 765 PATHS Mark has become associated in the

minds of consumers as identifying CBC as the source of quality SEL instructional materials. 46. SELmedia has advertised, offered for sale and sold its SEL instructional materials

using ParentPaths, which is confusingly similar to the 765 PATHS Mark, without CBCs authorization or consent. See Exhibits 8 and 9. 47. SELmedias unauthorized use of ParentPaths to advertise, offer for sale and sell

goods that compete with goods sold by CBC in interstate commerce under the 765 PATHS Mark is and/or has been likely to cause confusion, or to cause mistake, as to the source of PATHS products pursuant to 15 U.S.C. 1114. 48. 49. SELmedias infringing activities have damaged CBC. Upon information and belief, SELmedia will continue to infringe the 765 PATHS

Mark, causing irreparable harm to CBC, unless enjoined by this Court. 50. Upon information and belief, SELmedia had actual notice of, or should have

reasonably known of the existence of, the 765 PATHS Mark and, despite such notice, has continued to engage in acts of infringement of the 765 PATHS Mark. 51. SELmedias past and continued acts of infringement are willful and deliberate. COUNT III INFRINGEMENT OF U.S. TRADEMARK REGISTRATION NO. 4,018,347 52. CBC realleges and incorporates herein by reference the allegations set forth in

paragraphs 1 through 51.

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53.

CBC owns all substantial rights and goodwill in the valid and enforceable U.S.

Trademark Registration No. 4,018,347, registered on August 30, 2011 for PATHS (the 347 PATHS Mark). A true and correct copy of the 347 PATHS Mark certificate of registration is attached hereto as Exhibit 5. 54. The 347 PATHS Mark is registered under International Class 16 for printed

curriculum and instructors manuals for regular and special education preschool, kindergarten and elementary school classes relating to the prevention of behavioral problems, including bullying, violence and aggression, that helps build language arts skills such as reading, writing, reasoning, listening, and other communication skills and enhances art and music programs; drawings; photographs; posters; storybooks; coloring books; stickers; activity sheets; scripted curriculum manuals to assist children in building positive social and emotional skills so they can use self-control and problem-solving skills to resolve differences; instructor's manuals to guide teachers and counselors in delivering educational curriculum and tracking and evaluating student progress; all of the foregoing sold as a unit and has a date of first use in commerce of at least as early as September 1986. 55. The 347 PATHS Mark is also registered under International Class 9 for computer

software consisting of educational curriculum documents and information with a date of first use in commerce of at least as early as January 2011. 56. 57. 58. The 347 PATHS Mark is distinctive for SEL instructional materials. CBC has continuously used the 347 PATHS Mark in interstate commerce. As a result of its continued use, the 347 PATHS Mark has become associated in the

minds of consumers as identifying CBC as the source of quality SEL instructional materials.

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59.

SELmedia has advertised, offered for sale and sold its SEL instructional materials

using ParentPaths, which is confusingly similar to the 347 PATHS Mark, without CBCs authorization or consent. See Exhibits 8 and 9. 60. SELmedias unauthorized use of ParentPaths to advertise, offer for sale and sell

goods that compete with goods sold by CBC in interstate commerce under the 347 PATHS Mark is and/or has been likely to cause confusion, or to cause mistake, as to the source of PATHS products pursuant to 15 U.S.C. 1114. 61. 62. SELmedias infringing activities have damaged CBC. Upon information and belief, SELmedia will continue to infringe the 347 PATHS

Mark, causing irreparable harm to CBC, unless enjoined by this Court. 63. Upon information and belief, SELmedia had actual notice of, or should have

reasonably known of the existence of, the 347 PATHS Mark and, despite such notice, has continued to engage in acts of infringement of the 347 PATHS Mark. 64. SELmedias past and continued acts of infringement are willful and deliberate.

COUNT IV FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION (15 U.S.C. 1125) 65. CBC realleges and incorporates herein by reference the allegations set forth in

paragraphs 1 through 64. 66. 67. CBC owns all right, title and goodwill in the PATHS trademark. The PATHS trademark has been continuously used in interstate commerce since at

least as early as September 1986 in connection with social and emotional learning products. 68. products. CBCs use of the PATHS trademark is distinctive for social and emotional learning

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69.

The PATHS trademark has become associated in the minds of consumers as

identifying CBC as the source of quality SEL instructional materials. 70. 71. CBC owns three federal trademark registrations for PATHS. See Exhibits 3, 4 and 5. CBC owns all common law rights in the term PATHS as a trademark for social and

emotional learning products. 72. 73. SELmedias use of ParentPaths is confusingly similar to CBCs PATHS trademark. SELmedia has used ParentPaths, which is confusingly similar to the PATHS

trademark, without CBCs authorization or consent in interstate commerce to falsely designate the origin of SELmedias products, which has caused or is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of CBC with SELmedia, or as to the origin, sponsorship, or approval of SELmedias goods. 74. 75. SELmedias violations of 15 U.S.C. 1125(a) have damaged CBC. Upon information and belief, SELmedia will continue to falsely designate the source

or origin of its goods by using ParentPaths without CBCs authorization or consent, causing irreparable harm to CBC unless enjoined by this Court. 76. Upon information and belief, SELmedia had actual notice of, or at least should have

reasonably known of, its false designations of origin and, despite such notice, SELmedia has continued to engage in falsely designating the source and origin of its goods. 77. willful. PRAYER FOR RELIEF WHEREFORE, CBC requests judgment against SELmedia and respectfully prays for relief as follows for all counts asserted in this Complaint: SELmedias past and continued acts of false designation of origin are deliberate and

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(a)

a judgment that SELmedias use of ParentPaths is confusingly similar to the

PATHS Marks; (b) U.S.C. 1114; (c) a judgment that SELmedia has falsely designated the origin of its goods in a judgment that SELmedia has infringed the PATHS Marks in violation of 15

violation of 15 U.S.C. 1125(a); (d) an injunction pursuant to 15 U.S.C. 1116 permanently enjoining further

infringement of the PATHS Marks; (e) an order directing SELmedia to deliver up to CBC for destruction any documents,

labels, signs, prints, packages, wrappers, receptacles, advertisements or other article in SELmedias possession or under SELmedias control bearing the PATHS Marks pursuant to 15 U.S.C. 1118; (f) a finding that SELmedias infringement of the PATHS Marks was willful and

deliberate and that this case is exceptional pursuant to 15 U.S.C. 1117; (g) an award of SELmedias profits, damages and costs of this litigation, including

attorneys fees, pursuant to 15 U.S.C. 1117(a); (h) (i) an award of statutory damages pursuant to 15 U.S.C. 1117(c) and (d); an award of treble damages, attorneys fees and pre-judgment interest pursuant to

15 U.S.C. 1117(b); and (j) such other and further relief as the Court deems just and proper.

PLAINTIFF DEMANDS A TRIAL BY JURY ON ALL ISSUES SO TRIABLE

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Respectfully submitted, CHANNING BETE COMPANY, INC. By its attorneys, Dated: November 9, 2011 /s/ Andrew T. OConnor Ralph A. Loren (BBO No. 304980) Andrew T. OConnor (BBO No. 664811) EDWARDS WILDMAN PALMER LLP 111 Huntington Avenue Boston, Massachusetts 02199 Tel. 617-239-0100 Fax. 617-227-4420 Email: rloren@edwardswildman.com aoconnor@edwardswildman.com

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