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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NEW YORK
NWHL Holdings, LLC, and
NWHL LLC
Civil Action No. 1:19-cv-3803
Plaintiffs,
v.

COMPLAINT FOR DECLARATORY
JUDGMENT

Buffalo Beauts Hockey, LLC
Defendants.

NWHL HOLDINGS, LLC’S AND NWHL LLC’S COMPLAINT FOR DECLARATORY
JUDGMENT
Plaintiffs NWHL Holdings, LLC (“NWHL Holdings”) and NWHL LLC (collectively,
“NWHL”), by and through their undersigned attorneys, hereby brings this complaint for
declaratory judgment pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq.,
against Defendant Buffalo Beauts Hockey, LLC (“Defendant”), and alleges as follows:
NATURE OF ACTION AND RELIEF SOUGHT
1.

This is an action under the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq.,

for a declaratory judgment of non-infringement of certain of Defendant’s registered and
common law trademarks (collectively, the “BEAUTS marks”). NWHL seeks a declaration that
their use of the BEAUTS marks, does not constitute infringement of any of Defendant’s rights in
the BEAUTS marks, nor does it constitute false affiliation, false endorsement, or unfair
competition, because NWHL’s use of the BEAUTS marks is expressly permitted by a Mutual
Trademark License Agreement (the “License Agreement”) that was duly executed by NWHL
Holdings and Defendant on August 27, 2018.

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BACKGROUND
2.

This action arises out of demands asserted by Defendant in a June 25, 2019 letter.

In this letter, Defendant demands that Plaintiffs: (a) cease and desist from, inter alia: (i) future
use of the BEAUTS marks; and (ii) displaying and distributing any marketing materials featuring
the BEAUTS marks; (b) destroy all merchandise in their possession or control bearing the
BEAUTS marks; and (c) provide Defendant with written assurances of NWHL’s compliance
with these demands.
3.

Each of Defendant’s demands stands in direct contravention of the License

Agreement, which expressly and explicitly permits NWHL Holdings to use the BEAUTS marks
“in connection with the operation and promotion of [the National Women’s Hockey League],”
and grants NWHL Holdings a “perpetual, royalty-free . . . non-exclusive, sublicensable . . . right
and license” to use the BEAUTS marks in connection with NWHL Holdings’ “operation and
promotion of [the National Women’s Hockey League].” A true and correct copy of the License
Agreement is attached hereto as Exhibit 1. See Exhibit 1, at 1, § 1.1.
THE PARTIES
4.

Plaintiff, NWHL LLC, a Delaware limited liability company having a principal

place of business at 67 West Street, Suite 401-B11, Brooklyn, New York 11222; a/k/a “National
Women’s Hockey League”, is a women’s professional ice hockey league that was established in
2015. NWHL LLC currently has five franchises: the Boston Pride, Connecticut Whale,
Metropolitan Riveters, Minnesota Whitecaps, and the Buffalo Beauts.
5.

Plaintiff, NWHL Holdings, LLC is a New York limited liability company having

its principal place of business at 67 West Street, Suite 401-B11, Brooklyn, New York 11222 and
is the holder of NWHL LLC’s intellectual property rights.

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6.

Upon information and belief, Defendant Buffalo Beauts Hockey, LLC is a

Delaware limited liability company having its principal place of business at 199 Scott Street,
Suite 200, Buffalo, New York 14203 and operates the Buffalo Beauts women’s ice hockey team.
JURISDICTION AND VENUE
7.

This Court has jurisdiction over the subject matter of this action pursuant to 28

U.S.C. § 1331 and 28 U.S.C. § 1338. The claims alleged in this Complaint do not relate to
Federal taxes and arise under the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., and the
Lanham Act, 15 U.S.C. §§ 1051, et seq.
8.

This Court has personal jurisdiction over Defendant because, Defendant’s

principal place of business is within the State of New York and upon information and belief,
Defendant has substantial, continuous, and systematic contacts within this judicial District
including an online presence accessible within this judicial District.
9.

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

information and belief, a substantial portion of the events giving rise to Plaintiffs’ claims
occurred in this District, the alleged infringement occurred in this district, and because the
Defendant is subject to this Court’s personal jurisdiction with respect to this action.
10.

An actual case or controversy exists between the parties. Defendant has

threatened imminent legal action against Plaintiffs and has demanded that Plaintiffs immediately
cease and desist from: (i) all future use of the BEAUTS marks; (ii) the display and/or distribution
of any marketing materials, social media posts, or websites that utilize the BEAUTS marks, as
well as demanding that Plaintiffs destroy all merchandise in their possession or control that bears
the BEAUTS marks and provide written assurances to Defendant of compliance with these
demands.

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GENERAL ALLEGATIONS
11.

NWHL LLC, owns and operates the only professional women’s ice hockey league

located in the United States. Upon information and belief, Defendant owns and operates the
Buffalo Beauts, which was one of the four founding franchises of the National Women’s Hockey
League.
12.

On August 27, 2018, Plaintiff NWHL Holdings and Defendant entered into a

series of agreements, including the License Agreement. The purpose of these agreements was to
transfer ownership of the Buffalo Beauts professional women’s ice hockey team from NWHL
Holdings to Defendant, including the intellectual property associated with the Buffalo Beauts
team, i.e. the BEAUTS marks:

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13.

In the License Agreement, NWHL Holdings and Defendant agreed to allow each

other to use intellectual property owned by the other party for the business operations of the
National Women’s Hockey League and the Buffalo Beauts, respectively, including the BEAUTS
marks.
14.

In the License Agreement, the parties1 specified that:

15.

Section 1 of the License Agreement details the mutual licenses that the parties

granted to one another. Section 1.1 specifies that NWHL Holdings and Defendant granted each
other perpetual, non-exclusive, royalty-free, and sublicensable licenses to use one another’s
trademarks, including the BEAUTS marks:

1

In the August 27, 2018 Mutual Trademark License Agreement (the “License Agreement”), Plaintiff NWHL
Holdings, LLC is referred to as “Holdings,” and as such appears as “Holdings” rather than “NWHL Holdings” in
relevant sections of the License Agreement excerpted throughout this Complaint. Likewise, Defendant is referred
to in the License Agreement as “BBH,” and as such appears as “BBH” rather than “Defendant” in relevant
sections of the License Agreement excerpted throughout this Complaint.

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16.

Sections 1.2 and 1.3 of the License Agreement deal with the parties’ use of these

trademarks, including for purposes of advertising, marketing, and promotion:

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17.

The License Agreement contains provisions directed at the maintenance of these

trademarks, as well as their enforcement. See Exhibit 1, §§ 2.2, 2.3. The laws of the State of
New York govern the License Agreement. Id. at § 9.11.
18.

The marks that constitute the BEAUTS marks are listed in Exhibit B to the

License Agreement (at the time the License Agreement was executed, Application Serial Nos.
88/009,831, 88/013,888, and 88/013,784 were pending, and have now registered), which is
referenced throughout the above excerpts.
Exhibit B to the License Agreement specifies that after execution of the License

19.

Agreement, Defendant became owner of the following trademarks:

20.

Upon information and belief, Defendant is record owner of the following

trademarks:
a. U.S Registration No. 4,906,135, for the standard character mark BUFFALO
BEAUTS in International Class 41, which is listed for use in connection with
“Entertainment in the nature of hockey games.”
b. U.S Registration No. 5,655,814 (Application Serial No. 88/009,831), for the
standard character mark BUFFALO BEAUTS in International Class 25, which is

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listed for use in connection with “Hats; Hoodies; Jerseys; Leggings; One-piece
garments for children; Shirts; Sports bra; Sweatshirts; Tank tops.”
c. U.S Registration No. 5,638,076 (Application Serial No. 88/013,888), for the
design mark BEAUTS in International Class 41, which is listed for use in
connection with “Entertainment in the nature of hockey games.”
d. U.S Registration No. 5,661,523 (Application Serial No. 88/013,784), for the
design mark BEAUTS in International Class 25, which is listed for use in
connection with “Hats; Hoodies; Jerseys; Leggings; One-piece garments for
children; Shirts; Sports bra; Sweatshirts; Tank tops.” True and correct copies of
the foregoing registration certificates from the TSDR is attached hereto as Exhibit
2.
21.

Each of the above registered trademarks, or their respective applications, is listed

in Exhibit B to the License Agreement. The common law trademarks for “BUFFALO
BEAUTS” and “BEAUTS” (plus design) are also listed in Exhibit B to the License Agreement.
Thus, any purported or alleged use by NWHL is proper, authorized, and non-infringing.
22.

Despite the clarity of the terms outlined in the License Agreement, however,

counsel for Defendant contacted NWHL by letter dated June 25, 2019, alleging that “as you are
aware . . . [NWHL] is no longer authorized to use the BEAUTS Marks.” The BEAUTS marks
are purportedly listed in Exhibit A to the June 25, 2019 letter. A true and correct copy of
Defendant’s June 25, 2019 letter (the “cease and desist letter”) is attached hereto as Exhibit 3.
Exhibit A to the cease and desist letter lists the following trademarks and service marks as those
in which NWHL allegedly has no right—and yet they are the very same trademarks and service

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marks listed in Exhibit B to the License Agreement as those that NWHL Holdings is expressly
permitted to use:

23.

Defendant’s cease and desist letter alleges that NWHL is engaged in “continued,

unauthorized use of the BEAUTS Marks” that is “clearly willful and constitutes a violation of
[Defendant’s] intellectual property rights, is actionable under numerous federal and state laws,
and constitutes trademark infringement, false affiliation, false endorsement, and unfair
competition.” Exhibit 3 at 1. Defendant further contends that “[t]he civil remedies available for
these violations include immediate and permanent injunctive relief, recovery of NWHL’s profits,
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and up to three times the amount of monetary damages suffered by [Defendant], as well as an
award of attorney’s fees.” Id.
24.

Defendant demands a response “on or before June 27, 2019,” and warns NWHL

that it should “be advised that [Defendant] will not hesitate to take further legal action” if NWHL
“fail[s] to comply with the demands herein.” Id. at 2 (emphasis original).
25.

Defendant demands that NWHL immediately cease and desist from: (i) all future

use of the BEAUTS marks; and (ii) the display and/or distribution of any marketing materials,
social media posts, or websites that utilize the BEAUTS marks. Defendant also demands that
Plaintiffs destroy all merchandise in their possession or control that bears the BEAUTS marks
and provide written assurances to Defendant of their compliance with these demands. Id. at 1-2.
26.

Nowhere in the cease and desist letter does Defendant mention the existence of

the License Agreement, nor the fact that use of the BEAUTS marks is explicitly and expressly
permitted pursuant to Sections 1.1 and 1.3 of the License Agreement.
27.

Defendant’s cease and desist letter, with its concurrent demands and threat of

litigation commencing on or before June 27, 2019, creates a reasonable apprehension of
litigation; accordingly, an actual case or controversy exists.
28.

Defendant’s demands and threats have placed a cloud over NWHL’s rights to

continue using the BEAUTS marks in the course of its business operations, including for
advertising, marketing, and promotional purposes, and for the manufacture and distribution of
various merchandise.
29.

In view of Defendant’s threats and allegations, NWHL is in need of, and is

entitled to, a judicial declaration that: (a) the License Agreement, which is a valid instrument,
explicitly permits NWHL Holdings to use the BEAUTS marks; (b) NWHL’s use of the

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BEAUTS marks is thus authorized; and therefore (c) NWHL’s use of the BEAUTS marks does
not infringe any federal and/or common law trademark rights owned by Defendant, including
those claimed in the cease and desist letter, and does not constitute false affiliation, false
endorsement, or unfair competition under any federal or state law.
FIRST CLAIM FOR RELIEF
(Declaratory Judgment of No Federal Trademark Infringement, No False Affiliation, No
False Endorsement, and No Unfair Competition)
30.

Plaintiffs repeat and reallege the allegations contained in paragraphs 1-29 as if

fully set forth herein.
31.

Defendant claims that Plaintiffs’ use of the BEAUTS marks in the course of its

business operations constitutes federal and common law trademark infringement, false
affiliation, false endorsement, and unfair competition, and, under an imminent threat of
litigation, demands that Plaintiffs: (a) immediately cease and desist from: (i) all future use of the
BEAUTS marks; (ii) the display and/or distribution of any marketing materials, social media
posts, or websites that utilize the BEAUTS marks; (b) destroy all merchandise in their possession
or control that bears the BEAUTS marks; and (c) provide written assurances to Defendant of
compliance with these demands.
32.

An actual, present, and justiciable controversy exists between Plaintiffs and

Defendant, not involving Federal taxes, concerning Plaintiffs’ use of the BEAUTS marks in the
course of their business operations.
33.

The License Agreement explicitly and expressly permits NWHL Holdings to use

the BEAUTS marks; thus, any purported or alleged use by NWHL is proper, authorized, and
non-infringing.

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34.

The License Agreement is a valid, duly-negotiated instrument that was voluntarily

entered into by Defendant and NWHL Holdings, both of whom desired the use of each other’s
intellectual property in the ordinary operations and course of their businesses.
35.

Plaintiffs seek a declaratory judgment from this Court that Plaintiffs’ use of the

BEAUTS marks does not constitute trademark infringement under the Lanham Act or under the
common law of the State of New York.
36.

Plaintiffs seek a declaratory judgment from this Court that Plaintiffs’ use of the

BEAUTS marks does not constitute false affiliation under the Lanham Act or under the common
law of the State of New York.
37.

Plaintiffs seek a declaratory judgment from this Court that Plaintiffs’ use of the

BEAUTS marks does not constitute false endorsement under the Lanham Act or under the
common law of the State of New York.
38.

Plaintiffs seek a declaratory judgment from this Court that Plaintiffs’ use of the

BEAUTS marks does not constitute unfair competition under the Lanham Act or under the
common law of the State of New York.
39.

Plaintiffs seek a declaratory judgment that Defendant has suffered no, and will

not suffer any, damages or loss of goodwill as a result of Plaintiffs’ use of the BEAUTS marks.
40.

Plaintiffs seek a declaratory judgment that Defendant is not entitled to any

injunctive relief or damages under 15 U.S.C. § 1125 or any other federal law or under the
common law of the State of New York.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs pray that this Court enter judgment in their favor as follows:

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a. Declare that Plaintiffs’ conduct, including its use of the BEAUTS marks, does not
constitute trademark infringement, false affiliation, false endorsement, or unfair
competition under the Lanham Act or under the laws of the State of New York;
b. Declare that Defendant is not entitled to any injunctive relief with respect to
Plaintiffs’ use of the BEAUTS marks;
c. Declare that Defendant is not entitled to recover any lost profits with respect to
Plaintiffs’ use of the BEAUTS marks;
d. Declare that Defendant is not entitled to recover any form of damages, monetary
or otherwise, with respect to Plaintiffs’ use of the BEAUTS marks;
e. Declare that Defendant is not entitled to any award of attorneys’ fees or costs with
respect to Plaintiffs’ use of the BEAUTS marks;
f. Declare that Defendant has not suffered any and will not suffer any harm or
damages, and thus is not entitled to any relief under the Lanham Act or under the
laws of the State of New York;
g. Declare that Plaintiffs’ are entitled and permitted to continue using the BEAUTS
marks in the future, because the August 27, 2018 Mutual Trademark License
Agreement between NWHL Holdings and Defendant expressly and explicitly
authorizes and permits it to do so;
h. Declare that Plaintiffs’ past use of the BEAUTS marks was expressly and
explicitly authorized and permitted under the August 27, 2018 Mutual Trademark
License Agreement between NWHL Holdings and Defendant;
i. Award Plaintiffs costs, expenses, and attorneys’ fees in this action; and

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j. Award such and other further relief to which Plaintiffs may be entitled as a matter
of law or equity, or which this Court may deem to be just and proper.

Dated: June 30, 2019

Respectfully submitted,
By:

/s/ Ben Natter
Ben Natter
Ben Natter
Haug Partners LLP
745 Fifth Avenue
New York, New York 10151
Telephone: (212) 588-0800
Email: bnatter@haugpartners.com
Attorneys for Plaintiff,
NWHL Holdings, LLC

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