bon appetit v. schwan's - bon appetit trademark complaint.pdf
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PAUL R. GARCIA [Pro Hac Vice to be filed] [email protected] COLIN T.J. O’BRIEN [Pro Hac Vice to be filed] [email protected] PARTRIDGE & GARCIA, P.C 321 North Clark, Suite 720 Chicago, Illinois 60654 Telephone: (312) 634-9500 PAUL D. SUPNIK [SBN 52842] [email protected] 9401 Wilshire Blvd., Suite 1250 Beverly Hills, CA 90212 Telephone: (310) 859-0100 Facsimile: (310) 388-5645 Attorneys for Plaintiff BON APPÉTIT DANISH, INC.
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT COURT OF CALIFORNIA
WESTERN DIVISION
BON APPÉTIT DANISH, INC. a California Corporation, Plaintiff, v. SCHWAN’S IP, LLC, a Minnesota Limited Liability Company, and SCHWAN’S CONSUMER BRANDS, INC. a Georgia Corporation, Defendants. ____________________________
) ) ) ) ) ) ) ) ) ) ) ) ) ) )
Civil Action No:
COMPLAINT FOR: (1) VIOLATION OF SECTION
32 OF THE LANHAM ACT (2) VIOLATION OF SECTION
43(A) OF THE LANHAM ACT
(3) VIOLATION OF SECTION 17200 OF CALIFORNIA BUSINESS AND PROFESSIONS CODE
(4) CANCELLATION OF FEDERAL TRADEMARK REGISTRATION 15 U.S.C. § 1119
DEMAND FOR JURY TRIAL
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COMPLAINT
Bon Appétit Danish, Inc. (“Bon Appétit”), brings this action for trademark
infringement, unfair competition, and deceptive business practices against
Schwan’s IP, LLC and Schwan’s Consumer Brands, Inc. (collectively “Schwan’s”)
and states as follows:
NATURE OF ACTION
1. Bon Appétit asserts both Federal and State causes of action based
on Schwan’s infringement of Bon Appétit’s trademarks as follows: (1)
infringement of a registered trademark in violation of the Lanham Act, 15 U.S.C. §
1114; (2) unfair competition in violation of the Lanham Act, 15 U.S.C.
§1125(a)(1)(A); (3) infringement and unfair competition in violation of Section
17200 of the California Business and Professions Code; and (4) cancellation of
Schwan’s trademark registration 3,741,789 under 15 U.S.C. § 1127.
2. Bon Appétit brings this action due to Schwan’s unauthorized use of
Bon Appétit’s registered trademark BON APPETIT in connection with the sale of
pizza. Schwan’s infringing use of the BON APPETIT trademark is likely to cause
confusion, harming the public and damaging Bon Appétit’s valuable rights.
JURISDICTION
3. This Court has original jurisdiction over Counts One to Four under
28 U.S.C. § 1338(a) and 28 U.S.C. § 1331 because they arise under the laws of the
United States, namely the Lanham Act, 15 U.S.C. § 1051 et seq., which is an Act
of Congress relating to trademarks and unfair competition. This Court has
supplemental jurisdiction over Count Three under 28 U.S.C. § 1367(a) because it is
so related to the claims within the Court’s original jurisdiction that it forms a part
of the same case of controversy under Article III of the United States Constitution.
4. This Court also has original jurisdiction over the entirety of this
action under 28 U.S.C. § 1332 because the matter in controversy exceeds the sum
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or value of $75,000, exclusive of interest and costs, and is between citizens of
different states.
PARTIES
5. Plaintiff Bon Appétit is a California corporation with its principal
place of business at 4525 District Blvd, Vernon, California 90058.
6. On information and belief, Defendant Schwan’s IP, LLC is a
Minnesota limited liability company with a principal place of business at 115 West
College Drive, Marshall, Minnesota 56258.
7. On information and belief, Defendant Schwan’s Consumer Brands
Inc. is a Georgia corporation with a principal place of business at 100 South 5th
Street #1075, Minneapolis, Minnesota 55402.
BON APPÉTIT’S PRIOR RIGHTS
8. In the mid-1980’s, Bon Appétit first began selling fresh pastries
delivered in baskets to retailers in the Los Angeles area.
9. Bon Appétit’s pastries soon achieved a following among Los
Angelenos which allowed the business to expand and grow quickly.
10. Capitalizing on its early success, Bon Appétit began selling
danishes, cakes and muffin pastries for “on the go” consumers under the BON
APPETIT mark in 1990.
11. Since its humble start, Bon Appétit has become the premier “on the
go” baker in North America. Currently, Bon Appétit sells its branded BON
APPETIT, BON APPETIT AMERICA’S PASTRY CHEF, and BUON APPETITO
(collectively “BON APPETIT Marks”) products in thousands of retail locations
throughout the United States.
12. To protect and give further notice of its rights, Bon Appétit owns a
federal trademark registration for BON APPETIT, Reg. No. 1,826,501 for “danish,
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cakes and muffin pastries,” with the mark’s date of first use and first use in
commerce on August 1, 1990. This registration issued on March 15, 1994. A copy
of the Registration certificate for this mark is attached as Exhibit A. The BON
APPETIT registration is valid and subsisting, and in accordance with §1057(b) of
the Lanham Act, is prima facie evidence of Bon Appétit’s ownership of the mark,
the validity of the mark, and its exclusive right to use the mark in connection with
the above identified goods. Further, the BON APPETIT mark has been held
incontestable in accordance with 15 U.S.C. § 1065 of the Lanham Act, which
constitutes conclusive evidence of the validity of the BON APPETIT mark and
registration and Bon Appétit’s exclusive right to use the registered mark in
commerce.
13. Bon Appétit also owns a federal trademark registration for BUON
APPETITO, Reg. No. 1,960,572 for “bakery goods,” with the mark’s date of first
use and first use in commerce on November 12, 1994. This registration issued on
March 5, 1996. A copy of the Registration certificate for this mark is attached as
Exhibit B. The BUON APPETITO registration is valid and subsisting, and in
accordance with section 1057(b) of the Lanham Act, is prima facie evidence of
Bon Appétit’s ownership of the mark, the validity of the mark, and its exclusive
right to use the mark in connection with the above identified services.
14. Bon Appétit further owns a federal trademark registration for BON
APPETIT AMERICA’S PASTRY CHEF, Reg. No. 3,441,174 for “bakery
products,” with the mark’s date of first use and first use in commerce on 2004.
This registration issued on June 3, 2008. A copy of the Registration certificate for
this mark is attached as Exhibit C. The BON APPETIT AMERICA’S PASTRY
CHEF registration is valid and subsisting, and in accordance with section 1057(b)
of the Lanham Act, is prima facie evidence of Bon Appétit’s ownership of the
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mark, the validity of the mark, and its exclusive right to use the mark in connection
with the above identified services
15. Bon Appétit has sold millions of dollars of goods using its BON
APPETIT Marks and has spent millions of dollars to promote and distribute its
goods bearing the marks throughout the United States.
16. By virtue of its use for approximately three decades and substantial
investment, Bon Appétit owns valuable trademark rights in its BON APPETIT
Marks.
17. As a result of Bon Appétit’s long use, advertising and promotion, its
BON APPETIT Marks are strongly associated with Bon Appétit and represent an
extremely valuable goodwill owned by Bon Appétit throughout the United States.
SCHWAN’S INFRINGEMENT OF THE BON APPETIT MARKS
18. Recently, Schwan’s launched a new and confusingly similar BON
APPETIT pizza product, which Schwan’s touts on a new BON APPETIT website
<www.bonappetitpizza.com>:
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19. Schwan’s also touts the introduction of its new BON APPETIT
pizza product on the website <www.schwans.com>:
20. Schwan’s launched its new and confusingly similar BON APPETIT
product even after the United States Patent and Trademark Office (“USPTO”)
expressly told Schwan’s that its use of the BON APPETIT mark on such products
is likely to cause confusion with Bon Appétit because of Bon Appétit’s prior rights.
21. Specifically, on November 21, 2013, Schwan’s applied to register
(Application Ser. No. 86/124,996) for use in connection with
“pizza.”
22. On December 30, 2013, the USPTO issued an Office Action
refusing Schwan’s registration based on a likelihood of confusion with Bon
Appétit’s preexisting BON APPETIT Marks.
23. In particular, the USPTO concluded: “The goods of applicant
[Schwan’s] and registrant [Bon Appétit] are closely related because the goods are
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all baked dough-based food items that often emanate from a single source under a
single trademark.”
24. On May 9, 2014, Schwan’s filed a response in which it tried to
convince the USPTO that there is no likelihood of confusion between Schwan’s
use of BON APPETIT for pizza and Bon Appétit’s BON APPETIT Marks.
25. One of the arguments Schwan’s unsuccessfully advanced to the
USPTO is that Schwan’s own BON APPETIT trademark registrations for use on
other products—all of which post-date Bon Appétit’s trademark registrations—
somehow permit Schwan’s new and expanded use of BON APPETIT.
26. Specifically, Schwan’s unsuccessfully argued to the USPTO that
Registration No. 4,162,482 for the following design:
which issued on June 19, 2012, for use in connection with
“frozen prepared entrees consisting primarily of meat, fish, poultry or vegetables,”
justified Schwan’s expansion into new products.
27. Schwan’s also unsuccessfully argued to the USPTO that
Registration No. 4,139,732 for BON APPETIT, which issued on May 8, 2012, for
use in connection with “frozen prepared entrees consisting primarily of meat, fish,
poultry or vegetables,” justified Schwan’s expansion into new products.
28. Schwan’s further unsuccessfully argued to the USPTO that
Registration No. 3,741,789 for the following design
which issued on January 26, 2010, for use in
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connection with “frozen hors d’oeuvres comprised of meat, cheese and vegetables,
excluding fish, in pastries,” justified Schwan’s expansion into new products.
29. The USPTO disagreed with Schwan’s as to all three registrations.
Indeed, on May 29, 2014, the USPTO rejected Schwan’s arguments and
maintained the rejection of Schwan’s application Ser. No. 86/124,996 because of a
likelihood of confusion stemming from Bon Appétit’s preexisting BON APPETIT
Marks.
30. Despite being told by the USPTO that its use of BON APPETIT in
connection with pizza is likely to cause confusion with Bon Appétit’s BON
APPETIT Marks, Schwan’s brazenly proceeded with the launch of its confusingly
similar BON APPETIT product.
31. Above and beyond being advised by the USPTO of Bon Appétit
and its BON APPETIT Marks, Schwan’s was, on information and belief, aware of
Bon Appétit and its BON APPETIT marks well prior to Schwan’s application for
or acquisition of any BON APPETIT registration.
32. Schwan’s acts are without Bon Appétit’s authorization or approval.
33. Schwan’s acts are greatly and irreparably damaging to Bon Appétit
and will continue to damage Bon Appétit, and the public, unless and until enjoined
by this Court; wherefore, Bon Appétit is without adequate remedy at law.
COUNT I – TRADEMARK INFRINGEMENT
34. Bon Appétit re-alleges the preceding paragraphs as if fully set forth
herein.
35. Bon Appétit’s U.S. Registration No. 1,826,501 is valid, enforceable,
and in full force and effect.
36. Bon Appétit’s U.S. Registration No. 1,960,572 is valid, enforceable,
and in full force and effect.
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37. Bon Appétit’s U.S. Registration No. 3,741,789 is valid, enforceable,
and in full force and effect.
38. Schwan’s use in commerce of BON APPETIT for pizza is likely to
cause confusion or mistake, or to deceive as to source, affiliation, or sponsorship,
in violation of the Lanham Act, 15 U.S.C. § 1114.
39. Bon Appétit has been, and will continue to be, damaged by
Schwan’s infringement in an amount to be determined at trial.
40. On information and belief, Schwan’s conduct is willful, deliberate,
intentional, and in bad faith, making this an exceptional case.
41. By reason of the foregoing acts, Schwan’s has caused, and unless
permanently enjoined will continue to cause, irreparable harm to Bon Appétit and
to the public. Bon Appétit has no adequate remedy at law.
COUNT II – FEDERAL UNFAIR COMPETITION
42. Bon Appétit re-alleges the preceding paragraphs as if fully set forth
herein.
43. Bon Appétit has common law rights in its BON APPETIT Marks,
which are uniquely associated with Bon Appétit as the source of goods offered in
connection therewith.
44. Schwan’s foregoing use in commerce of the BON APPETIT
trademark is likely to cause confusion or mistake, or to deceive as to source,
affiliation, or sponsorship, in violation of the Lanham Act, 15 U.S.C. §
1125(a)(1)(A).
45. Bon Appétit has been and will continue to be damaged by Schwan’s
infringement, in an amount to be determined at trial.
46. On information and belief, Schwan’s conduct is willful, deliberate,
intentional, and in bad faith, making this an exceptional case.
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47. By reason of the foregoing acts, Schwan’s use has caused and will
continue to cause irreparable harm to Bon Appétit, and to the public, unless and
until enjoined. Bon Appétit has no adequate remedy at law.
COUNT III – CALIFORNIA BUSINESS AND PROFESSIONS CODE
SECTION 17200
48. Bon Appétit re-alleges the preceding paragraphs as if fully set forth
herein.
49. The foregoing acts of infringement and unfair competition violate
Section 17200 of the California Business and Professions Code.
50. Bon Appétit is entitled to an injunction against further infringement
and unfair competition.
51. Bon Appétit is entitled to restitutionary relief according to proof.
COUNT IV – CANCELLATION OF REGISTRATION NUMBER 3,74 1,789
52. Bon Appétit re-alleges the preceding paragraphs as if fully set forth
herein.
53. On or about July 7, 2010, Schwan’s purported to acquire rights
from Burris-Phila, Inc. in Registration No. 3,741,789 for the following design
for use in connection with “frozen hors
d'oeuvres comprised of meat, cheese and vegetables, excluding fish, in pastries.”
54. On information and belief, for at least the last three consecutive
years, Schwan’s has not used in commerce
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for the goods identified in Registration No.
3,741,789, creating a presumption of abandonment under 15 U.S.C. § 1127.
55. Indeed, on information and belief, since its acquisition of
Registration No. 3,741,789 in July of 2010, Schwan’s has never used in commerce
for the goods identified Registration No.
3,741,789.
56. On information and belief, Schwan’s does not have a bona fide
intent to resume use in commerce of
for the goods identified in Registration No.
3,741,789.
57. Accordingly, Schwan’s has abandoned any rights in said mark for
the goods identified in Reg. No. 3,741,789, requiring that said registration be
cancelled under 15 U.S.C. § 1127.
PRAYER FOR RELIEF
WHEREFORE , Bon Appétit respectfully asks this Court to:
A. Enter judgment that Schwan’s has violated the Lanham Act, 15 U.S.C.
§§ 1114 and 1125(a)(1)(A), the California Business and Professions Code
Section 17200;
B. Preliminarily and permanently enjoin Schwan’s, its officers, directors,
agents, employees, attorneys, successors, and assigns, and all other in active
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1 concert or participation with any of them, from directly or indirectly
2 engaging in any further trademark infringement, unfair competition, or
3 deceptive business practices;
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c. Issuing a certified Order to the Director of the U.S. Patent and
Trademark Office, pursuant to Section 37 of the Lanham Act, 15 U.S.C. §
1127, ordering the Director to enter upon the records of the Patent and
Trademark Office a cancellation of Schwan's Registration No. 3,741,789.
D. Order Schwan's to pay:
1. All monetary gain and advantages obtained by Schwan' s from
its unlawful conduct;
11. All monetary damages sustained and to be sustained by
Schwan's as a consequence of Schwan's unlawful conduct; including lost
monetary gains, in an amount to be determined at trial;
111. Exemplary damages;
1v. Bon Appetit's costs and disbursements in this action, including
17 its reasonable attorneys' fees; and
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E. Award Bon Appetit such other and further relief as this Court deems
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necessary and just.
Respectfully submitted,
26 Dated: September 15, 2015
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Paul R. Garcia Colin T. J. O'Brien PARTRIDGE & GARCIA, P.C.
Paul D. Supnik
By:_il_vJfJ_ ... -~-' _ Paul D. Supnik Attorneys for Plaintiff BON APPETIT DANISH, INC.
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DEMAND FOR A JURY TRIAL
Pursuant to FED. R. Crv. P. 38(b), Bon Appetit respectfully demands a
trial by jury of all issues triable by a jury.
Respectfully submitted,
Dated: September 15, 2015
Paul R. Garcia Colin T. J. O'Brien PARTRJDGE & GARCIA, P.C.
Paul D. Supnik
By:_o_~_o_.~_~_ Paul D. Supnik Attorneys for Plaintiff BON APPETIT DANISH, INC.
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