Case 1:22-cv-06172 Document 1 Filed 07/20/22 Page 1 of 29

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

__________________________________________

WARREN HAMILTON, JR., §

§ Case No. _______________
Plaintiff, §
§
§ PLAINTIFF’S
§ ORIGINAL COMPLAINT
§
§
§
v. §
§
DANIEL HERNANDEZ, §
TENTHOUSAND PROJECTS, LLC, and § DEMAND FOR TRAIL BY JURY
UMG RECORDINGS, INC. §
§
Defendants. §
__________________________________________

TO THE HONORABLE JUDGE OF SAID COURT:

COMES NOW PLAINTIFF Warren Hamilton, Jr. (“Plaintiff” or “Hamilton”) and files

this original complaint against Defendants Daniel Hernandez, TenThousand Projects, LLC, and

UMG Recordings, Inc. (collectively, the “Defendants”) and alleges as follows:

I.

NATURE OF THE ACTION

1. Plaintiff Warren Hamilton, Jr. (“Hamilton”) is a rap and hip-hop artist. Hamilton is

the senior user of the mark SIX9 that Hamilton has used in interstate commerce to promote and sell

his goods and services in the entertainment industry.

2. Conversely, Defendant Daniel Hernandez (“Hernandez”), who is also rap and hip-

hop artist, subsequently started to use the infringing mark, 6IX9INE, to identify Hernandez’s goods

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and services in the entertainment industry. Upon information and/or belief, TenThousand Projects,

LLC (“TenThousand Projects”) and UMG Recordings, Inc. (“UMG”) also acted in concert with

Hernandez in the sale of the same or similar goods and services as Hamilton that bear the infringing

mark, 6IX9INE.

3. Accordingly, Plaintiff Warren Hamilton, Jr. brings this action for trademark

infringement and unfair competition pursuant to Lanham Act, 15 U.S.C. § 1125(a).

II.

PARTIES

4. Plaintiff Warren Hamilton, Jr. (“Hamilton”) is an individual residing at 1235

Stoneybook Drive, Conway, SC 29526.

5. Defendant Daniel Hernandez (“Hernandez”) is an individual residing at 1650

Broadway, Suite 505A, New York, NY 10019.

6. Defendant TenThousand Projects, LLC (“TenThousand Projects”) is a California

limited liability company with a principal address of 1880 Century Park East #1600, Los Angeles,

CA 90067. TenThousand Projects registered agent is Eresidentagent, Inc., 7801 Folsom Blvd., Suite

202, Sacramento, CA 95826. TenThousand Projects is an independent record label.

7. Defendant UMG Recordings, Inc. (“UMG”) is a Delaware corporation with a

principal place of business and operational headquarters located at 2220 Colorado Ave, Santa

Monica, California, 90404. Also known as Universal Music Group, UMG is one of the world’s

largest recorded music and publishing companies and is considered one of the “Big Three” Record

labels, along with Sony Music and Warner Music Group. The registered agent of UMG is the

Corporation Trust Company located at Corporation Trust Center, 1209 Orange Street, Wilmington,

DE 19801.

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III.

JURISDICTION

8. The Court has jurisdiction over the lawsuit under 28 U.S.C. § 1338 because the suit

arises under the Lanham Act, specifically 15 U.S.C. § 1125(a) and further seeks damages under 15

U.S.C. § 1117(a).

IV.

VENUE

9. Venue is proper in this district under 28 U.S.C. § 1391 because Defendant resides

and/or does business in this district.

V.

CONDITIONS PRECEDENT

10. All conditions precedent have been performed or have occurred.

VI.

FACTS

Background of Warren Hamilton and his use of the SIX9 mark

11. Warren Hamilton, Jr. is a recording and live performance artist and musician.

Hamilton specifically releases music in the rap and hip-hop genres. Hamilton has been using his

SIX9 mark for years to identify himself as the source of his goods and services sold in the

entertainment industry, specifically in the nature of audio and/or video recordings, live music

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performances, production of audio and/or visual musical recordings, as well on ancillary

merchandise goods (including his clothing goods).

12. Hamilton first began using his SIX9 mark when he started performing live music

shows in 2007. Since then, Hamilton has performed numerous live musical performances using his

SIX9 mark throughout the United States in numerous states including but not limited to South

Carolina, Tennessee, Alabama, Georgia, North Carolina, Kentucky, Florida, and Mississippi.

13. Hamilton has used his SIX9 mark to also perform and record with famous and

well-known hip-hop and rap artists such as Shawty Lo, 2 Chainz, Lil Wayne, Metro Boomin,

Stoopidbeatz, and Shawty Redd.

14. Hamilton has expended substantial time, money, and resources marketing,

advertising, and promoting his SIX9 mark to sale his goods and services through various platforms

including but not limited to his website ([Link]), online music stores and digital

services providers (e.g., Google Play, iTunes and Amazon Music), social media platforms (e.g.

Twitter), and tangible paper sources (e.g. distribution of flyers and posters). Hamilton exploits and

distributes his music worldwide through online music stores and digital service providers.

15. Hamilton has released and published the following musical recordings using his

SIX9 mark:

• “Phantom and Ferrari”, “Nigga with the Money”, and “Splurge”

singles were released on June 14, 2013;

• “The Streets Love Me” single was released on August 27, 2013;

• “Black” single was released on June 18, 2014;

• “Stove” single was released on August 5, 2015;

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• “All My Life” single was released on May 24, 2016;

• “Time” single was released on June 1, 2016;

• “Outro” single was released on July 24, 2017;

• “Dreamer” single was released on October 15, 2018;

• SIX Mixtape album was released on July 2, 2021;

• Black Mixtape album was released on July 17, 2021;

• Dirt Road Dreams album was released on July 26, 2021;

• Born Alone album was released on July 27, 2021;

• “Dope Lines” single with K-Bird and Y.D. was released on

October 2, 2021; and

• “Fallen Solider” single was released on January 26, 2022.

16. Hamilton also uses his SIX9 mark to market and sell clothing goods in promotion

of his artistic career.

Registration History of Hamilton’s SIX9 Mark

17. On March 31, 2014, Hamilton applied for federal registration of his trademark

SIX9 in class 41 for “entertainment services in the nature of music and video performances;

Production of musical sound recording; Production of musical videos.” The USPTO assigned

serial number 86237502 to Hamilton’s SIX9 application.

18. On October 28, 2014, the USPTO, after review and approval of Hamilton’s

application for registration and after publication for opposition, granted registration of Hamilton’s

SIX9 mark (serial number 86237502) and assigned registration number 4628568 to the registered

mark.

19. On June 4, 2021, the USPTO canceled Hamilton’s registration of the SIX9 mark

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(Reg. No. 86237502) when Hamilton inadvertently failed to timely file his required section 8

declaration to maintain such federal trademark registration.

20. When Hamilton realized that he had lost his federal registration of his SIX9 mark

(Reg. No. 86237502), Hamilton immediately reapplied for registration of his SIX9 mark (Serial

No. 90800431) on June 24, 2021.

21. On March 28, 2022, the USPTO’s examiner issued a non-final office action on

Hamilton’s application for the SIX9 mark (Serial No. 90800431), because according to the

examiner Hamilton’s description of his goods and services in such application is indefinite and

needs to be further clarified. Accordingly, as of the filing of this pleading, Hamilton has responded

to address the USPTO examiner’s non-final office action.

22. Regardless of the registration status of the SIX9 mark, Hamilton’s widespread,

continuous, and exclusive use of the SIX9 mark in commerce to identify Hamilton’s’ goods and

services in the entertainment industry evidences that Hamilton, at the very least, owns the

trademark SIX9 with valid and subsisting common law rights to his SIX9 mark.

Background of Daniel Hernandez

and Defendants’ subsequent use of the 6IX9INE mark

23. Like Hamilton, Defendant Daniel Hernandez (“Hernandez”) is rapper and hip-hop

artist.

24. Upon information and belief, sometime on or around 2014, Hernandez decided to

become a rapper and hip-hop artist and began referring to himself and selling his goods and

services in the entertainment industry as “Tekashi69.”

25. Upon information and belief, in 2015, Hernandez pled guilty to a crime involving

the use of a child in a sexual performance. Upon information and belief, because of such

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conviction, Hernandez sometime thereafter decided to stop referring to himself as Tekashi69 and

instead began rebranding himself as 6IX9INE. Hernandez even had the numerals “6” and “9”

tattooed to cover half of his forehead.

26. Upon information and belief, Hernandez’s first used the 6IX9INE mark in the sale

of an audio recording on November 10, 2017, when Hernandez released his single entitled

“GUMMO”. Upon information and/or belief, Hernandez licensed the use of the 6IX9INE mark

to TenThousand Projects and UMG. Upon information and/or belief, TenThousand Projects and

UMG released and exploited the musical recordings of Hernandez under the 6IX9INE mark.

27. Following the release of “GUMMO”, Hernandez’s popularity and association as

6IX9INE in the entertainment industry began to surge, and the Defendants continued to release

and exploit more new music using the infringing mark 6IX9INE. The Defendants made millions

of dollars from the use of the 6IX9INE mark.

28. Despite Defendants’ notice of Hamilton’s senior use and trademark registration of

SIX9, Defendants have continued to adversely use the infringing 6IX9INE mark in the sale of

Hernandez’s musical goods and services in commerce.

29. Defendants’ subsequent and adverse use of the 6IX9INE mark to sell Hernandez’s

goods and services in the entertainment industry has caused confusion in the marketplace and

injured and stifled Hamilton’s career in the entertainment industry. Many rap and hip-hop

consumers have erroneously accused and criticized Hamilton of stealing Hamilton’s SIX9 mark

from Hernandez. Many rap and hip-hop consumers have also mistakenly attended Hamilton’s live

performance shows thinking that Hernandez was going to be performing. Many music promoters

and booking agents have refused to book live performance shows featuring Hamilton because his

trademark SIX9 is so confusingly similar or the same as Defendants’ infringing 6IX9INE mark.

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Accordingly, Hamilton’s entire career as a recording artist, performer, and entertainer has been

injured and stifled by Defendants’ infringing, subsequent, and adverse use of the 6IX9INE mark.

Registration history of the 6IX9INE mark

30. As previously mentioned, from October 28, 2014 to June 2, 2021, Hamilton had a

federal registration on his SIX9 mark (Reg. No. 86237502) in class 41 for “entertainment services

in the nature of music and video performances; Production of musical sound recording; Production

of musical videos.”

31. On February 24, 2020, while Hamilton’s SIX9 mark appeared active on the federal

registry, Daniel Hernandez submitted a section 1(a) in-use application for the registration of

6IX9INE (Serial No. 88808682) in class 25 for “Clothing, namely, t-shirts, shirts, tops, hoodies,

sweatshirts, hooded sweat shirts, short-sleeve t-shirts, long-sleeve t-shirts” and in class 41 for

“Entertainment services, namely, audio and video recording services; Audio and video production,

namely, mastering sequencing, editing and mixing of compact discs, phono records, cassettes,

electronic recordings and other mediums of recording music; Entertainment services by a musical

artist and producer, namely, musical composition for others and production of musical sound

recordings; Production of sound and music video recordings; Entertainment services in the nature

of production of motion pictures, television shows, multimedia entertainment content;

Entertainment, namely, live music concerts; Music composition for others; Music publishing;

Entertainment services, namely, live, televised and movie appearances by a professional

entertainer; Entertainment services by a musical artist and producer, namely, musical composition

for others and production of musical sound recordings; Entertainment services, namely,

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performances and public appearances by a live musical artist.”1

32. On May 12, 2020, the USPTO issued a non-final office action refusing registration

of the proposed 6IX9INE mark (Serial No. 88808682) based in part on likelihood of confusion

with Hamilton’s registered mark SIX9 (Reg. No. 4628568).

33. On November 10, 2020, Hernandez responded to such non-final office action

arguing that there was no likelihood of confusion with Hamilton’s registered mark.

34. On December 1, 2020, the USPTO, by and through its examiner Susan Lawrence,

issued a final office action again refusing registration of the proposed 6IX9INE mark based on a

likelihood of confusion with Hamilton’s SIX9 mark.

35. On June 1, 2021, Hernandez filed a Request for Reconsideration after the Final

Office Action was issued, again arguing that there was no likelihood of confusion with Hamilton’s

registered SIX9 mark.

36. As mentioned, on June 4, 2021, the USPTO canceled Hamilton’s registered SIX9

mark when Hamilton inadvertently failed to timely file his section 8 declaration to maintain

Hamilton’s federal registration of the SIX9 mark.

37. Nevertheless, on or before June 18, 2021, Hamilton called Hernandez’s attorney

and told Hernandez’s attorney that Hamilton was the senior user of the SIX9 mark, that Hamilton

is still using his SIX9 mark, that Hernandez’s use of the 6IX9INE mark is infringing Hamilton’s

senior rights to the SIX9 mark, and that Hernandez needs to stop using the 6IX9INE mark or obtain

a license from Hamilton.

38. Despite such actual notice given by Hamilton to Hernandez’s attorney, on June 21,

1
Hernandez also filed a trademark registration application for “TEKASHI69” (Serial No. 88808679) on February
24, 2020 for the same or substantially similar products and services appearing his aforementioned 6IX9INE
application (Serial No. . 88808682). For the avoidance of any doubt, Hamilton’s action before this Court concerns
only Defendants’ use of the 6IX9INE mark.

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2021, while Hernandez was awaiting a response from the USPTO to Hernandez’s Request for

Reconsideration after Final Office Action, Hernandez’s attorney sent an email to USPTO examiner

Susan Lawrence, informing the USPTO’s examiner that Hamilton’s SIX9 mark had been canceled

and then fraudulently suggested to the examiner that the likelihood of confusion refusal was now

moot due to such cancellation when in fact Hernandez and his attorneys’ knew that Hamilton was

still using the SIX9 mark and opposed Hernandez’s use of the 6IX9INE mark. The failure of

Hernandez’s attorney to disclose Hamilton’s continued use of the SIX9 mark and his opposition

to Hernandez’s use of the 6IX9INE mark to the USPTO’s examiner violated the declaration given

by Hernandez’s attorney’s in the registration application of the 6IX9INE mark, which states in

part: “To the best of signatory’s knowledge and belief, no other persons… have the right to use the

mark in commerce, either in the identical form or in such near resemblance as to be likely, when

used on or in connection with the goods/services of such other persons, to cause confusion or

mistake, or to deceive.”

39. As a result of Hernandez’s and Hernandez’s attorney’s intentional and reckless

disregard for Hamilton’s continued use of the SIX9 mark and failure to inform the USPTO of such

continued use, Hernandez’s application for the 6IX9INE mark was published for opposition on

July 27, 2021.

40. Thereafter, Hamilton filed a notice of opposition to Hernandez’s pending

registration of the 6IX9INE mark (Serial No. 88808682) in Proceeding Number 91271966 before

the United States Trademark Trial and Appeal Board (the “Proceeding”). In the Proceeding,

Warren Hamilton, Jr. opposes the registration of the 6IX9INE mark by Hernandez as identified in

Serial No. 88808682 pursuant to Section 2(d) of the Trademark Act based a likelihood of confusion

with Hamilton’s priority of use of the mark SIX9 in commerce. Warren Hamilton, Jr. also opposes

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the registration of the 6IX9INE mark by Hernandez as identified in Serial No. 88808682 due to

fraud on the application and fraud in the procurement of the application.

41. Hamilton now brings this civil action against the Defendants before this Federal

District Court to further enforce Hamilton’s trademark rights and remedies under federal law.

VII.

COUNT 1

UNFAIR COMPETITION UNDER LANHAM ACT

BASED ON LIKELIHOOD OF CONFUSION

(15 U.S.C. § 1125(a))

42. Hamilton incorporates by reference herein as if fully set forth all the statements

made in paragraphs 1-41 above.

43. Common law unfair competition or trademark infringement claims and claims

under 15 U.S.C. § 1125(a) cover cases where the infringed trademarks are not registered, and they

allow the court more leeway to exercise its equitable powers than a federal statutory trademark

infringement claim does. Major League Baseball Promotion Corp. v. Colour-Tex, Inc., 729 F.

Supp. 1035, 1039 (D.N.J. 1990) (citing Boston Professional Hockey Ass'n v. Dallas Cap &

Emblem Mfg. Co., 510 F.2d 1004, 1010 (5th Cir.), cert. denied, 423 U.S. 868 (1975); Holiday Inns,

Inc. v. Trump, 617 F. Supp. 1443, 1465 (D.N.J. 1985); Estate of Presley v. Russen, 513 F. Supp.

1339, 1376 (D.N.J. 1981)).).

44. Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) provides, in relevant part,

that:

Any person who, on or in connection with any goods or services, or

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any container for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false
or misleading representation of fact, which—(1)(a) is likely to cause
confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or as
to the origin, sponsorship, or approval of his or her goods, services,
or commercial activities by another person . . . shall be liable in a
civil action by any person who believes that he or she is or is likely
to be damaged by such act.

45. “To prevail on a trademark infringement claim under…[15 U.S.C. §1125(a)],

the trademark's possessor must prove two elements: (1) that its trademark is valid and entitled to

protection and (2) that the contested use of the trademark is likely to cause confusion among

consumers.” Paco Sport, Ltd. v Paco Rabanne Parfums, 86 F Supp 2d 305, 309-310 (S.D.N.Y.

2000) (citing Time, Inc. v. Petersen Publ'g Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999)).

46. “It is well settled in this Circuit that in evaluating the likelihood of confusion,

courts consider the eight factors established by Judge Friendly in Polaroid Corp. v. Polarad

Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), ("the Polaroid factors"). These factors

include: (1) the strength of the senior user's trademark; (2) the degree of similarity between the

contested trademarks; (3) the competitive proximity of the products; (4) the likelihood that the

senior user will "bridge the gap" by entering the junior user's market; (5) actual confusion; (6) the

junior user's good faith in adopting its mark; (7) the quality of the junior user's product; and (8)

the sophistication of relevant consumers.” Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp.

2d 305, 310 (S.D.N.Y. 2000).

A. SIX9 is a valid trademark and entitled to protection

47. “Assessment of a trademark's protectability begins with appraising the

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trademark's inherent capacity to identify the source of a product and classifying the trademark in

one of four categories of inherent distinctiveness. These categories, outlined in Abercrombie &

Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir. 1976), are generic, descriptive,

suggestive, and arbitrary/fanciful. Generic terms are never entitled to protection. Suggestive,

arbitrary and fanciful terms, on the other hand, are inherently distinctive and generally entitled to

protection. Descriptive terms are not inherently distinctive, but are nonetheless entitled to

protection if they acquire secondary meaning in the marketplace.” Paco Sport, Ltd. v. Paco

Rabanne Parfums, 86 F. Supp. 2d 305, 310 (S.D.N.Y. 2000) (citing PaperCutter, Inc. v. Fay's

Drug Co., 900 F.2d 558, 561-62 (2d Cir. 1990); Abercrombie & Fitch, 537 F.2d at 9-11.).

48. Plaintiff’s mark, 6IX9, is an arbitrary or fanciful term that is inherently distinctive

and entitled to the highest degree of protection.

B. The contested use of 6IX9INE is likely to cause confusion as confusion is inevitable.

49. Additionally, Defendants’ use of the infringing 6IX9INE mark is confusingly

similar to Hamilton’s use of the SIX9 Mark. The Polaroid factors weigh in favor of finding of

confusion.

Factor 1: Strength of Hamilton’s Trademark SIX9

50. This Court has held:

The courts have defined the strength of a trademark as its inherent

and acquired capacity to identify the source of a product. See Time,
173 F.3d at 117. "The strength of a mark is directly related to
likelihood of confusion, for the stronger the mark, the more likely
that the consumer will associate it with the familiar purveyor." H.
Lubovsky, Inc. v. Esprit de Corp., 627 F. Supp. 483, 486-87
(S.D.N.Y. 1986). In analyzing this Polaroid factor, the courts
consider both the inherent distinctiveness of the trademark and its

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strength acquired through use in the marketplace. See Time, 173

F.3d at 117-18 (citing Streetwise Maps, Inc. v. VanDam, Inc., 159
F.3d 739, 743-44 (2d Cir. 1998)). The analysis involves many of the
same factors that initially determine the trademark's protectability,
such as the classification of the trademark on
the Abercrombie continuum as generic, descriptive, suggestive, or
arbitrary/fanciful and the existence of secondary meaning. See id.

Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 311-12 (S.D.N.Y. 2000).

51. Plaintiff’s mark, SIX9, is an arbitrary and fanciful mark, and is therefore

inherently distinctive.

52. Additionally, because Plaintiff’s SIX9 mark has been registered, it is presumed

inherently distinctive. “The registration of a trademark is also relevant to the assessment of the

strength” as “registered marks are presumed to be distinctive.” Paco Sport, Ltd. v. Paco Rabanne

Parfums, 86 F. Supp. 2d 305, 312 (S.D.N.Y. 2000) (citing Lois Sportswear, 799 F.2d at 871).

53. Thus, this factor weighs in favor of Plaintiff and a finding of likelihood of

confusion.

Factor 2: Similarity of the Contested Trademarks

54. This Court has held:

“In analyzing this factor, "the courts consider whether the similarity
of the marks is likely to cause confusion among potential
customers." Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 394
(2d Cir. 1995). The courts have held that trademarks should be
compared in their entirety, because "juxtaposing fragments of each
mark does not demonstrate whether the marks as a whole are
confusingly similar." Universal City Studios, Inc. v. Nintendo Co.,
746 F.2d 112, 117 (2d Cir. 1984). In analyzing the trademarks'
similarity, the courts appraise the overall impression created by the
trademarks, considering the context in which the trademarks appear
and "the totality of factors that could cause confusion among
prospective purchasers." Gruner + Jahr USA Publ'g v. Meredith
Corp., 991 F.2d 1072, 1078 (2d Cir. 1993).

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Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 315 (S.D.N.Y. 2000)

55. Defendants’ use of the 6IX9INE mark is confusingly similar in appearance, sound,

connotation and overall commercial impression to Hamilton’s SIX9 mark.

56. Defendants’ 6IX9INE mark and Hamilton’s SIX9 mark are highly similar in

appearance as both marks contain letters and numbers. The first four characters of each mark are

nearly identical. Defendants’ mark begins “6IX9” whereas Hamilton’s mark begins “SIX9”.

Hernandez’s substitution of a “6” for an “S” is a distinction without a difference because the

appearance of numerical “6” as used in Defendants’ mark looks very similar to the letter “S” when

followed by the characters “I” and “X” to spell the word “SIX”, which is the first word in

Hamilton’s mark and has the equivalent meaning of the written number “6” appearing in

Defendants’ mark. Additionally, the later halves of the two marks are nearly identical as both

marks use the numerical “9”. The fact that Defendants’ mark uses a numerical “9” with the

characters “I”, “N”, and “E” is again a distinction without a difference, because the additional

letters used to spell the word “nine” is the equivalent meaning of the number “9” and is already

understood in both marks regardless of how it appears. Thus, both marks are highly similar in

appearance.

57. More importantly, the sound, connotation, and commercial impression of the two

marks are even more important in the present action than any nuanced differences in the

appearance, because the goods and services that are being sold in commerce by Defendants and

Hamilton are music-related, and music by its very nature is auditory and not necessarily visual.

Therefore, music consumers do not always have the benefit of seeing the marks spelt out, nor will

the average consumer necessarily realize that there is a difference in the sources of the goods and

services offered by Defendants and Hamilton when encountering the marks in commerce. Thus,

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confusion is inevitable.

58. Hamilton’s SIX9 mark and Defendants’ infringing 6IX9INE mark are pronounced

exactly the same. Hamilton’s SIX9 mark is pronounced “siks nīn” – as is Defendants’ infringing

6IX9INE mark. Thus, the marks are phonetic equivalents and sound the same; and similarity in

sound alone may be sufficient to support a finding that the marks are confusingly similar. In re

White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84

USPQ2d 1581, 1586 (TTAB 2007).

59. Hamilton’s SIX9 mark and Defendants’ infringing 6IX9INE mark have the same

meaning or connotation. “The meaning or connotation of a mark must be determined in relation to

the named goods or services.” See TMEP § 1207.01 (b)(v). “The focus is on the recollection of the

average purchaser who normally retains a general, rather than specific, impression of

trademarks.” See id. (citing In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016)

(citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per

curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB

2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB

2013)); see also San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d

683, 196 USPQ 1, 2-3 (CCPA 1977) (“Obviously, the marks here are constructed of old linguistic

elements, but they must be considered as wholes, and not on the basis of side-by-side comparison,

and in the light of the fallibility of memory.”); Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d

1391, 161 USPQ 687, 688 (CCPA 1969) (many consumers “may have but dim recollections from

having previously seen or heard one or the other of the involved marks.”).). Here, both Hamilton’s

SIX9 mark and Defendants’ 6IX9INE mark have the same numerical meanings and are used to

identify the source of the same or substantially similar goods and services. According, both marks

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have the same connotation.

60. Both marks also create the same overall commercial impression, i.e., of the number

“6” followed by the number “9.” The fact that they are both a combination of numbers and letters

does not change the meaning nor commercial impression of the marks – nor does it distinguish

one from the other. Consumers are likely to remember them as being the same and mistakenly

believe that they identify a common source for the services. When comparing marks, “[t]he proper

test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently

similar in terms of their commercial impression such that [consumers] who encounter the marks

would be likely to assume a connection between the parties.” Cai [Link] Hong, Inc., 901 F.3d

1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph

Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP

§1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a

general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d

1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082,

1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169

USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir.

2019); TMEP §1207.01(b).

61. Finally, Defendants’ mark 6IX9INE and Hamilton’s mark SIX9 are both in

standard character format, meaning that both marks may be used in any manner – including in a

stylization identical to that of the other. A mark in typed or standard characters may be displayed

in any lettering style; the rights reside in the wording or other literal element and not in any

particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905,

1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed.

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Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).

62. Accordingly, Defendants’ 6IX9INE mark is confusingly similar in appearance,

sound, connotation and overall commercial impression to Hamilton’s SIX9 mark. Indeed, USPTO

examiner Sue Lawrence in her final office action dated December 1, 2020 also found that

Hernandez’s proposed 6IX9INE mark was confusingly similar in appearance, sound, connotation,

and overall commercial impression to Hamilton’s 6IX9 mark. Therefore, this factor weighs in

favor of Plaintiff and a finding of likelihood of confusion.

Factor 3: Competitive Proximity of the Produces

63. “Under this Polaroid factor, the courts examine "whether and to what extent the

two products compete with each other," based on "the nature of the products themselves and the

structure of the relevant market." Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305,

316 (S.D.N.Y. 2000)(citing Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir.

1996)).

64. In this instance, Defendants’ goods and services are highly related to, if not

identical to, or, at the very least, encompassed within, Hamilton’s goods and services. Both marks

are used to market and sell the same or highly similar music entertainment services, goods, and

ancillary goods. Both Hamilton and Hernandez are rap and hip-hop artist artists. Both Hamilton

and Defendants sell rap and hip-hop music. Both Hamilton and Defendants sell ancillary clothing

merchandise in promotion of their music and entertainment career and endeavors.

65. Thus, the goods and services of Defendants are sufficiently related to the goods and

services provided by Hamilton so that confusion is likely. Indeed, USPTO examiner Sue Lawrence

in her final office action dated December 1, 2020 also found that the Hernandez’s and Hamilton’s

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services were sufficiently related in refusing registration of 6IX9INE.

66. This factor weighs in favor of Hamilton and a finding of likelihood of

confusion.

Factor 4: Bridging the Gap

67. This court has explained:

This Polaroid factor examines the likelihood that the senior user
will enter the junior user's market and compete with the junior user
("bridge the gap"). See Streetwise Maps, 159 F.3d at 743. The factor
weighs in the senior user's favor either if bridging the gap is actually
probable or if an average consumer perceives it as
probable. See Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d
955, 963 (2d Cir. 1996); Lois Sportswear, 799 F.2d at 874. The
actual probability of bridging the gap is relevant because the
trademark law protects, in part, the senior user's interest in being
able to expand into a related field in the future. See Hormel Foods
Corp. v. Jim Henson Prods, 73 F.3d 497, 504 (1996). The
perception of consumers, on the other hand, affects the likelihood of
confusion, because if consumers perceive bridging the gap as
probable, they are more likely to believe that the junior user's
products emanate from the senior user. See Lang, 949 F.2d at
582; McGregor-Doniger, 599 F.2d at 1136 ("Because consumer
confusion is the key, the assumptions of the typical consumer,
whether or not they match reality, must be taken into account.").

Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 318 (S.D.N.Y. 2000).

68. This factor warrants little weight since Hamilton and Defendants already operate in

the same marketplace. See, Rebelution, LLC v. Perez, 732 F. Supp. 2d 883, 898 (N.D. Cal. 2010).

Factor 5: Actual Confusion

69. Where reverse confusion is alleged, it "is likely to cause consumers to believe,

erroneously, that the goods marketed by the prior user are produced by the subsequent user."

Wyndham Co. v. Wyndham Hotel Co., 176 Misc. 2d 116, 121, 670 N.Y.S.2d 995, 999 (Sup. Ct.

1997).

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70. Many rap and hip-hop consumers have erroneously accused and criticized

Hamilton of stealing Hamilton’s SIX9 mark from Hernandez. Many rap and hip-hop consumers

have also mistakenly attended Hamilton’s live performance shows thinking that Hernandez was

going to be performing. Many music promoters and booking agents have refused to book live

performance shows featuring Hamilton because his trademark SIX9 is so confusingly similar or

the same as Hernandez’s infringing 6IX9INE mark. Accordingly, Hamilton’s entire career as a

recording artist, performer, and entertainer has been injured and stifled by Defendants’ infringing,

subsequent, and adverse use of the 6IX9INE mark.

71. Accordingly, this factor weighs in favor of Hamilton and a finding of likelihood of

confusion, because there is actual reverse confusion occurring in the marketplace.

Factor 6: Junior User’s Good Faith

72. This Court has explained:

This factor examines whether the junior user "adopted its mark with
the intention of capitalizing on [the senior user's] reputation and
goodwill and any confusion between his and the senior user's
product." Sports Auth., 89 F.3d at 964 (quoting Lang, 949 F.2d at
583). Knowledge of the senior user's mark, while relevant to this
determination, "does not necessarily give rise to an inference of bad
faith and may be consistent with good faith." Arrow Fastener, 59
F.3d at 397. Selection of a mark that reflects the product's
characteristics or attracts customers, on the other hand, indicates
good faith. See Streetwise Maps, 159 F.3d at 746. Additional
relevant factors may include a request for a trademark search,
reliance on the advice of counsel, see Lang, 949 F.2d at 583, and the
benefits the junior user could derive from consumer
confusion. See Hormel Foods, 73 F.3d at 505.

Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 324 (S.D.N.Y. 2000).

73. Defendants adopted the 6IX9INE mark in bad faith. Hamilton’s 6IX9 mark was

on federal register in class 41 for entertainment services at the time that Defendants’ first started

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using the 6IX9INE mark. Therefore, Defendants, at the very least, had constructive notice of

Hamilton’s mark when Hernandez’s first started using the mark. Additionally, Hernandez also had

actual notice of Hamilton’s SIX9 mark when Hernandez attempted and/or first considered to apply

for federal registration of the infringing 6IX9INE mark.

74. Accordingly, this factor weighs in favor of Hamilton and a finding of likelihood

of confusion.

Factor 7: Quality of Junior User’s Products.

75. This Court has explained:

The courts have held that the quality of the junior user's products
can be relevant to trademark infringement analysis in two ways.
First, inferior quality of the junior user's products increases the
senior user's interest in preventing confusion, because associations
with an inferior product tarnish the senior user's
reputation. See Hormel Foods, 73 F.3d at 505. Second, differences
in the products' quality may affect the likelihood of confusion. See
id. The courts have found that, when the senior and the junior users'
products are otherwise similar, comparable quality may support the
consumers' belief that the products emanate from the same source
and thus contribute to consumer confusion.

Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 325-26 (S.D.N.Y. 2000).

76. Both Hamilton and Defendants are producing same or highly similar goods and

services that are of the same commercial quality.

77. This factor weighs in favor of Hamilton and a finding of likelihood of confusion.

Factor 8: Sophistication of Consumers

78. This Court has explained:

This factor examines the sophistication of typical consumers and the

level of care they exercise when purchasing the products at

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issue. See Sports Auth., 89 F.3d at 965. Because people generally

exercise greater care in purchasing expensive products than in
purchasing cheap products, purchasers of expensive products
are usually less likely to be confused. See McGregor-Doniger, 599
F.2d at 1137; Edison Bros. Stores, Inc., v. Cosmair, Inc., 651 F.
Supp. 1547, 1561 (S.D.N.Y. 1987).

Usually, greater sophistication of consumers reduces the likelihood

of confusion. See Centaur Communications, 830 F.2d at 1228. In
some cases, however, greater sophistication may increase the
likelihood of confusion. For example, in Centaur Communications,
the Second Circuit suggested that greater sophistication could
increase the likelihood of confusion if the products or the marks in
question were identical. Id. at 1228 (holding that in that case, greater
sophistication of the consumers "decreased the likelihood
of confusion since neither the products nor the marks [were]
identical").

Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 327 (S.D.N.Y. 2000).

79. The consumption of music in the marketplace is based on “impulse”

purchases driven by a person’s emotion or feeling at a particular moment in time. When

consumers hear a song that they like, they listen to it, stream it, or buy it in the moment.

Consumers do not make careful considerations when listening, buying, or streaming music.

When deciding to listen to a song, consumers simply ask themselves the question: do I like

this song or do I want to listen to this song. If consumers do not like the song or do not want

to listen to the song, they simply skip to the next song. Thus, when listening to music,

consumers carelessly scroll and explore music on various platforms that they may use to

listen to music such as Spotify, Apple Music, YouTube, Pandora, and Amazon Music.

Consumers often let the platforms choose the music that the listener enjoys on such

platform’s playlists. Accordingly, the music consumer may not even have a particular artist

in mind when the consumer wants to listen to music. The consumer may just want to hear

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music of a particular genre when they turn on the radio or listen to a playlist. Accordingly,

if a DJ on the radio or a playlist or podcast announces that this is a song by SIX9 or

6IX9INE, the average consumer doesn’t know by the announcement of the artist’s name if

that song is going to be by Hamilton or Hernandez since each mark has the same exact

pronunciation and meaning. The same is true if a consumer saw a concert poster or heard

an advertisement using the mark “SIX9” or “6IX9INE.” Instead, the average music

consumer who is an impulse buyer is still going to be confused on whether the goods and

services sold as SIX9 or 6IX9INE emanate from the same source, because they travel in the

same trade channels. Moreover, the fact that purchasers are sophisticated or knowledgeable

in a particular field does not necessarily mean that they are sophisticated or knowledgeable

in the field of trademarks or immune from source confusion. See TMEP §1207.01(d)(vii);

see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110

USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101

USPQ2d 1163, 1170 (TTAB 2011). And here, where the marks are identical in sound,

meaning, and overall commercial impression, and the goods and services are highly related,

if not the same, confusion as to the source of such goods and services is indeed likely and

inevitable.

80. Thus, this factor weighs in favor of Hamilton and a finding of likelihood of

confusion.

Summary of Polaroid Factor Test

81. Accordingly, because Hamilton’s SIX9 mark is a valid trademark and all of

the Polaroid factors weigh in favor of finding a likelihood of confusion, Defendants’

subsequent use of 6IX9INE to sell the same or highly similar goods and services is a

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violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

VIII.

COUNT 2

Deceptive Acts and Practices Unlawful in Violation of the New York General Business Law

(N.Y. Gen. Bus. Law §§ 349 and 350)

82. Plaintiff hereby repeats and each and every allegation set forth in in paragraphs 1 to 81

above as if fully set forth herein.

83. New York General Business Law, Section 349 states, in relevant part, that: “Deceptive acts

or practices in the conduct of any business, trade or commerce or in the furnishing of any

service in this state are hereby declared unlawful.”

84. New York General Business Law, Section 350 states, in relevant part, that “False

advertising in the conduct of any business, trade or commerce or in the furnishing of any

service in this state is hereby declared unlawful.”

85. Through the Defendants’ importation, advertisement, distribution, offer to sell, and sale of

unauthorized goods and services that are the same or substantially similar to Hamilton’s

goods and services and bear the trademark 6IX9INE that is same or deceivingly the same

as Hamilton’s SIX9 mark, the Defendants have engaged in consumer-oriented conduct that

has affected the public interest of New York and has resulted in injury to consumers in

New York.

86. The Defendants’ deceptive acts and practices, as described herein, are materially

misleading. Such acts or practices have deceived or have a tendency to deceive a material

segment of the public to whom Plaintiff has directed his marketing activities, and Plaintiff

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has been injured thereby.

87. By the acts described above, the Defendants have willfully engaged in deceptive acts or

practices in conduct of business and furnishing of services in violation of Section 349 and

350 of the New York General Business Law.

88. The Defendants’ acts have caused, and will continue to cause, irreparable injury to

Hamilton. Plaintiff Hamilton has no adequate remedy at law and is thus damaged in an

amount not yet determined.

IX.

COUNT 3

Trademark Infringement in Violation of New York State Common Law

89. Plaintiff Hamilton hereby repeats each and every allegation set forth in paragraphs

1 to 88 above as if fully set forth herein.

90. Plaintiff Hamilton owns all rights, titles, and interests in and to the SIX9 mark,

including all common law rights in the SIX9 trademark.

91. The products and services sold by Defendants incorporate and use the 6IX9INE

mark, which is an infringing version of Hamilton’s 6IX9 mark to sell the same or highly similar

goods and services as Hamilton.

92. The Defendants use of the 6IX9INE mark was never authorized by Hamilton and

has caused consumer confusion.

93. By the acts described above, the Defendants have engaged in trademark

infringements in violation of the common law of the State of New York.

94. The Defendants’ acts have caused, and will continue to cause, irreparable injury to

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Plaintiff Hamilton. Plaintiff Hamilton has no adequate remedy at law and is thus damaged in an

amount not yet determined.

X.

DEMAND FOR JURY

95. Plaintiff Cuevas asserts his right under the Seventh Amendment to the U.S.

Constitution and demands, in accordance with Federal Rule of Civil Procedure 38, a trial by jury

on all issues.

XI.

PRAYER

96. WHEREFORE, the Plaintiff prays:

1. For a FINAL JUDGMENT that:

a. the Defendants have violated Section 43(a) of the Lanham Act, 15 U.S.C. §

1125(a)

b. the Defendants have engaged in deceptive acts and practices unlawful in

violation of Section 349 and 350 of the New York General Business Law;

c. The Defendants have engaged in trademark infringement in violation of common

law of the State of New York; and

e. that the above acts were done willfully, and/or intentionally.

2. For entry of an ORDER permanently enjoining and restraining the Defendants, and

their officers, agents, servants, employees and attorneys and all those in active concert or

participation with any of them, pursuant to 15 U.S.C. § 1116, from:

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a. Using the 6IX9INE mark or any reproduction, counterfeit, copy or colorable

imitation of Hamilton’s SIX9 mark, including the trademark for and in

connection with any goods or services not authorized by Hamilton;

b. Engaging in any course of conduct likely to cause confusion, deception or

mistake, or injury to Plaintiff’s business reputation;

c. Using any false description of representation, including works or other symbols

tending falsely to describe or represent Defendants’ unauthorized goods,

services, or their packaging as being those of Hamilton, or sponsored by or

associated with Hamilton, and from offering such goods into commerce;

d. Further infringing Hamilton’s SIX9 trademark by manufacturing, producing,

distributing, circulating, selling, marketing, offering for sale, advertising,

promoting, renting, displaying or otherwise disposing of any products or services

or their packaging not authorized by Hamilton that bear any simulation,

reproduction, counterfeit, copy or colorable imitation of Hamilton’s SIX9

Trademarks including but not limited to use of the 6IX9INE mark;

e. Using any simulation, reproduction, counterfeit, copy or colorable imitation of

the SIX9 Trademark and the infringing 6IX9INE mark in connection with the

promotion, advertisement, display, sale, offering for sale, manufacture,

production, circulation or distribution of any unauthorized products, services, or

packaging in such fashion as to relate or connect, or tend to relate or connect,

such products or services in any way to Hamilton, or to any goods or services

sold, manufactured, sponsored or approved by, or connected with Hamilton;

f. Making any statement or representation whatsoever, or using any false

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designation of origin or false description, or performing any act, which may or

is likely to lead the trade or public, or individual members thereof, to believe

that any products or services manufactured, distributed, or sold by the

Defendants are in any manner associated or connected with Hamilton, or are

sold, manufactured, licensed, sponsored, approved or authorized by Hamilton;

and

g. Effecting assignments or transfers, forming new entities or associations or

utilizing any other device for the purpose of circumventing or otherwise

avoiding the prohibitions set forth in any Final Judgment or Order in this action.

3. For entry of an ORDER requiring the Defendants to disseminate corrective

advertisements in a form approved by the Court to acknowledge their violations of

the law hereunder, and to ameliorate the false and deceptive impressions produced

by such violations.

4. For an assessment of the ACTUAL DAMAGES suffered by Hamilton, trebled,

and an award of all profits that Defendants have derived from using the infringing

6IX9INE mark, including trebled damages on such profits assessed, as well as costs

and attorneys’ fees to the full extent provided for by Section 35 of the Lanham Act,

15 U.S.C. § 1117.

5. For COSTS OF SUIT, pre- and post- judgment interest, and for such other and

further relief as the Court shall deem appropriate.

Plaintiff’s Original Complaint Page 28

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Date: July 20, 2022 Respectfully submitted,

________________________________
David Chase LanCarte
LanCarte Law, PLLC
2817 West End Ave., Suite 126-276
Nashville, Tennessee 37203
Tel: 214-935-2430
Fax: 214-934-2450
chase@[Link]

ATTORNEY FOR PLAINTIFF

WARREN HAMILTON, JR.

Plaintiff’s Original Complaint Page 29