Diamonds Direct Sues BFJ for Trademark Infringement
Diamonds Direct USA filed suit against BFJ Holdings, doing business as Capri Jewelers, for trademark infringement, unfair competition, false advertising and for violating Virginia’s consumer protection act. Diamonds Direct, which is based out of North Carolina, explained in court papers that in an effort to expand into Richmond, Virginia, it had secured a new location and contracting services to construct the retail space. In January 2012, Diamonds Direct filed its corporate papers under the laws of the Commonwealth of Virginia in preparing to open the new store.
While Diamonds Direct claimed to have kept its plans confidential, and negotiated confidentiality agreements with its contractors, an employee of one of those service providers allegedly informed Capri Jewelers of the plaintiff’s plans. Diamonds Direct alleged that Capri Jewelers, upon learning this new would-be competitor was opening in Richmond, began an advertisement campaign using the phrase and signage of ”Diamonds Direct.” 
The plaintiff cited examples of radio commercials, billboards and print catch- phrases promoting ”Diamonds Direct” by Capri Jewelers, and the plaintiff also alleged that Capri Jewelers had never before used the term ”Diamonds Direct.”
”In its recent billboard advertisements, Capri Jewelers encourages consumers to ‘Come see our new Diamonds Direct collection,”’ which the plaintiff drew comparisons to the word new, ”because [Capri] never had a Diamonds Direct collection prior to learning that Diamonds Direct was going to open a Richmond location,” according to the complaint.
Diamonds Direct argued that Capri Jewelers was using the term ”specifically to undercut Diamonds Direct before it could even enter the market, to cause confusion among consumers, and to harm Diamonds Direct.” Furthermore, Capri Jewelers registered the Diamonds Direct service mark, connected to a specific graphical depiction of the mark on April 16, which Diamonds Direct claimed it alone had already established this service mark in Virginia and elsewhere.
The plaintiff seeks an injunction requiring Capri Jewelers to immediately cease using the mark ”Diamonds Direct,” cancel its service mark request with Virginia, remove the mark from all advertisements, and prohibit the use of this mark on future advertisements. Diamonds Direct also seeks financial compensation for damages suffered as a result of the alleged trademark infringement, unfair and deceptive business practices, attorneys’ fees and court costs.
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