Download - Kind bars trademark complaint.pdf
JS 44C/SDNYREV. 4/2014
CIVIL COVER SHEET ORIGINAL
PLAINTIFFSKIND LLC
initiating the civil docket sheet
ATTORNEYS (FIRM NAME,ADDRESS, AND TELEPHONE NUMBERDEBEVOISE & PLIMPTON LLP919 THIRD AVE, NEW YORK, NY 10022(212) 909-6000
purpose
DEFENDANTS
*9
- y, r^ -'-4FLAGST^t FOQDS (a/kV&NACKS HC0£MNG«OJ*&£AMPORTTOdbS (a/k/a AMERICAN IMPORTING CO., INC.)
ATTORNEYS (IF KNOWN)
CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE ABRIEF STATEMENT OF CAUSE)(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
Action for trade dress infringement and false designation of origin under 15 U.S.C. §1125(a) and other state/federal unfair competition laws.
Has this action, case, or proceeding, or one essentially the same been previously filed in SDNY at any time? Nr&esQjudge Previously Assigned
Ifyes, was this case Vol. • Invol. • Dismissed. No • Yes • If yes, give date &Case No.
IS THIS AN INTERNATIONAL ARBITRATION CASE? No [*] Yes fj]
(PLACEAN[x]IN ONE BOX ONLY) NATURE OF SUIT
CONTRACI PERSONAL INJURY
[ ] 110 INSURANCE [ ] 310 AIRPLANE[ 1120 MARINE [ ] 315 AIRPLANE PRODUCT[J130 MILLER ACT LIABILITY[]140 NEGOTIABLE [ ] 320 ASSAULT, LIBEL &
INSTRUMENT SLANDER[J 150 RECOVERY OF [ ] 330 FEDERAL
OVERPAYMENT & EMPLOYERS'ENFORCEMENT LIABILITYOF JUDGMENT [ ] 340 MARINE
[ ] 151 MEDICARE ACT [ ] 345 MARINE PRODUCT[]152 RECOVERY OF LIABILITY
DEFAULTED [ J 350 MOTOR VEHICLESTUDENT LOANS [ ] 355 MOTOR VEHICLE(EXCLVETERANS) PRODUCT LIABILITY
[]153 RECOVERY OF [ J 360 OTHER PERSONALOVERPAYMENT INJURYOF VETERAN'S [ J 362 PERSONAL INJURY -BENEFITS MED MALPRACTICE
[]160 STOCKHOLDERSSUITS
[]190 OTHER
CONTRACT[ ]195 CONTRACT
PRODUCT ACTIONS UNDER STATUTESLIABILITY
[ ] 196 FRANCHISE CIVIL RIGHTS
[]440 OTHER CIVIL RIGHTS
REAL PROPERTY (Non-Prisoner)
[ ] 441 VOTINGI ]210 LAND [ ] 442 EMPLOYMENT
CONDEMNATION [ J 443 HOUSING/[ ]220 FORECLOSURE ACCOMMODATIONS[ ]230 RENT LEASE & [ ] 445 AMERICANS WITH
EJECTMENT DISABILITIES -[]240 TORTS TO LAND EMPLOYMENT[]245 TORT PRODUCT [ ] 446 AMERICANS WITH
LIABILITY DISABILITIES -OTHER[ ]290 ALL OTHER
REAL PROPERTY
[ ] 448 EDUCATION
Check ifdemanded incomplaint:
CHECK IF THIS IS ACLASS ACTIONUNDER F.R.C.P. 23•
PERSONAL INJURY[ ] 367 HEALTHCARE/PHARMACEUTICAL PERSONALINJURY/PRODUCT LIABILITY
[ ] 365 PERSONAL INJURYPRODUCT LIABILITY
[ ]368ASBESTOS PERSONAL l JbaU °'HERINJURY PRODUCTLIABILITY
PERSONAL PROPERTY
[ J 370 OTHER FRAUD[ ] 371 TRUTH IN LENDING
[ ] 380 OTHER PERSONALPROPERTY DAMAGE
[ ] 385 PROPERTY DAMAGEPRODUCT LIABILITY
PRISONER PETITIONS
[ J 463 ALIEN DETAINEE[ ] 510 MOTIONS TO
VACATE SENTENCE28 USC 2255
[ ] 530 HABEAS CORPUS[ ] 535 DEATH PENALTY[ ] 540 MANDAMUS & OTHER
PRISONER CIVIL RIGHTS
[ ] 550 CIVIL RIGHTS[ ] 555 PRISON CONDITION[ ] 560 CIVIL DETAINEE
FORFEITURE/PENALTY
[ J 625 DRUG RELATED
SEIZURE OF PROPERTY21 USC 881
LABOR
[ J 710 FAIR LABORSTANDARDS ACT
[ ] 720 LABOR/MGMTRELATIONS
[ ] 740 RAILWAY LABOR ACT
[ ] 751 FAMILY MEDICALLEAVEACT (FMLA)
[ ] 790 OTHER LABORLITIGATION
[ J 791 EMPL RET INCSECURITY ACT
IMMIGRATION
[ ] 462 NATURALIZATIONAPPLICATION
[ ) 465 OTHER IMMIGRATIONACTIONS
CONDITIONS OF CONFINEMENT
ACTIONS UNDER STATUTES
BANKRUPTCY
[ J 422 APPEAL28 USC 158
[ ] 423 WITHDRAWAL28 USC 157
PROPERTY RIGHTS
[ ] 820 COPYRIGHTS[ ] 830 PATENTM 840 TRADEMARK
SOCIAL SECURITY
[ J 861 HIA(1395ff)[ ] 862 BLACK LUNG(923)[ j863 DIWC/DIWW (405(g))[ J 864 SSID TITLE XVI[ ] 865 RSI (405(g))
FEDERAL TAX SUITS
[ ] 870 TAXES (U.S. Plaintiff orDefendant)
[ ] 871 IRS-THIRD PARTY26 USC 7609
OTHER STATUTES
I J 375 FALSECLAIMS[ 1400 STATE
REAPPORTIONMENT[ ] 410 ANTITRUST[ ] 430 BANKS & BANKING[ ] 450 COMMERCE[ ] 460 DEPORTATION[ ] 470 RACKETEER INFLU
ENCED & CORRUPTORGANIZATION ACT(RICO)
[ 1480 CONSUMER CREDIT[ ] 490 CABLE/SATELLITE TV
[ ) 850 SECURITIES/COMMODITIES/EXCHANGE
[ J 890 OTHER STATUTORYACTIONS
[ ] 891 AGRICULTURAL ACTS
[ ] 893 ENVIRONMENTALMATTERS
[ ] 895 FREEDOM OFINFORMATION ACT
[ J 896 ARBITRATION
[ ] 899 ADMINISTRATIVEPROCEDURE ACT/REVIEW ORAPPEAL OF AGENCY DECISION
[ ] 950 CONSTITUTIONALITY OFSTATE STATUTES
DEMAND $ Damages OTHER Injunction
(pOgYjO^lyAJM THIS CASE IS RELATED TO ACIVIL CASE NOW PENDING IN S.D.N.Y.?
JUDGE DOCKET NUMBER
Check YES only ifdemandedincomplaintJURY DEMAND: E YES D\|0 NOTE: You must also submit atthe time of filing the Statement of Relatedness form (Form IH-32).
(PLACEAN x INONEBOXONLY) ORIGIN
L*J 1 Original |_| 2 Removed from LJ 3 Remanded LJ 4 Reinstated or fj 5 Transferred from • 6 MultidistrictProceeding State Court from Reopened (Specify District) Litigation
• a. all parties represented AppellateCourt
I I b. At least oneparty is pro se.
(PLACEAN xINONEBOXONLY) BASIS OF JURISDICTION IF DIVERSITY, INDICATE\J 1 U.S. PLAINTIFF Q 2 U.S. DEFENDANT 0 3 FEDERAL QUESTION Q4 DIVERSITY CITIZENSHIP BELOW.
(U.S. NOT A PARTY)
CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)(Placean [X] inone boxfor Plaintiff and one boxfor Defendant)
r~l 7 Appeal toDistrictJudge fromMagistrate JudgeJudgment
PTF DEFCITIZEN OF THISSTATE [ ] 1 [ ] 1
CITIZEN OF ANOTHER STATE [ ] 2 [ ] 2
CITIZEN OR SUBJECT OF AFOREIGN COUNTRY
PTF DEF
[]3[]3PTF DEF
INCORPORATED and PRINCIPAL PLACE [ ] 5 [ ] 5OF BUSINESS IN ANOTHER STATE
INCORPORATED or PRINCIPAL PLACE [ ] 4 [ ] 4OF BUSINESS IN THIS STATE
FOREIGN NATION
PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)KIND LLC
1372 BroadwayNew York, NY 10018New York County
DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)FLAGSTONE FOODS380 St. Peter Street, No. 1000St. Paul, MN 55102Ramsey County
AMPORT FOODS
380 St. Peter Street, No. 1000St. Paul, MN 55102Ramsey County
[ J6
DEFENDANT(S)ADDRESS UNKNOWNREPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, IHAVE BEEN UNABLE, WITH REASONABLE DILIGENCE TO ASCERTAIN
RESIbENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:
Check one: THIS ACTION SHOULD BE ASSIGNED TO: \J WHITE PLAINS \k\ MANHATTAN(DO NOT checkeither boxifthis a PRISONER PETITION/PRISONER CIVIL RIGHTSCOMPLAINT.)
DATE 2/23/2015 SIGNATUREOF ATTORNEY OF RECORD ADMITTED TO PRACTICE IN THIS DISTRICT^^ -—~-* [] NODC„|DT# /-^^ '=:= -^ W YES (DATE ADMITTED Mo. .11 Yr. 1999 )
KtL/tlH' ff ^y^ Attorney Bar Code # jH 4651
Magistrate Judgeis to be designated by the Clerk ofthe Coiin/A,',
Magistrate Judge
<"• w^jij. i> iVA
RubyJ. Krajick, Clerkof Court by . Deputy Clerk, DATED
UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)
is so Designated.
JUDGE ENGELMAYER
David H. Bernstein ([email protected])Jyotin Hamid ([email protected])Charles W. Baxter ([email protected])DEBEVOISE & PLIMPTON LLP
919 Third Avenue
New York, New York 10022(212) 909-6696
Attorneys for PlaintiffKIND LLC
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
KIND LLC,
Plaintiff,
-against-
FLAGSTONE FOODS a/k/a SNACKS HOLDING
CORP. and AMPORT FOODS a/k/a AMERICAN
IMPORTING CO., INC.,
Defendants.
ECF CASE „
CO
c;:
COMPLAINT AND DEMAND FOR JURY TRIAL
KIND LLC ("KIND"), by its attorneys, Debevoise & Plimpton LLP, for its
complaint against Flagstone Foods also known as Snacks Holding Corp. and Amport
Foods also known as American Importing Co., Inc. (together, "Flagstone"), alleges as
follows:
INTRODUCTION
1. This is an action for trade dress infringement, deceptive acts and practices,
unfair competition, and related claims arising from Flagstone's launch of its new
NATURE'S HARVEST snack bars in packaging that was designed intentionally to
mimic the look of KIND'S distinctive trade dress. Flagstone is, by its own account, one
of the largest manufacturers anddistributors of private label healthy snack products in
North America. Recognizing the rapid growth in the healthy snackindustry generated by
KIND'S innovative healthy snackbar products, Flagstone decided to produce and market
a derivative, private label version of top-selling KIND products. But Flagstone has done
more than develop derivative, private label products. It has adoptedpackaging for those
products intentionally designed to mimic the distinctive look of KIND'S packaging.
These new bars in their strikingly similar packages will inevitably confuse consumers.
2. When KIND bars entered the market a decade ago, they transformed the
nutritional snack bar category by using simple, whole ingredients the consumer could
"see and pronounce." This was a revolutionary change; most other bars at the time were
made from unrecognizable and unpronounceable ingredients that were extruded into
brown globs. To emphasize KIND'S use of simple, whole ingredients and the high
nutritional quality of its bars, as well as to create a distinctive, sleek, modern impression
on store shelves, KIND designed an innovative and distinctive trade dress which
prominently features a large rectangular window through which its visually-inviting,
delicious-looking bars can be seen.
3. Flagstone is a manufacturer and distributor of private label snack items.
Sometimes these products fill a gap in a retailer's branded offerings, and sometimes they
provide a retailer with a product designed to compete with higher-priced branded
alternatives in the same retail space.
4. Although KIND understands that there is a place for legitimate
competition from private label manufacturers who do not cross the line, KIND cannot
standby while a leadingprivate label manufacturer seeks to usurp KIND'S hard-earned
goodwill and confuse the consuming public by releasing a private-label version of
KIND'S products in packaging designed to be confused with KIND'S distinctive
packaging.
5. As shown above, the new NATURE'S HARVEST trade dress mimics the
distinctive overall impression of KIND's packaging trade dress, appropriating several key
aspects of KIND'S unique look to create a confusingly similar overall impression.
Among these striking similarities are (1) a transparent, rectangular front panel in
essentially identical proportion to the remaining package; (2) a horizontal stripe of
essentially identical proportion bisecting the transparent front panel and containing the
flavor of the bar in text; (3) an opaque panel, offset to the side of the package, containing
the brand identifier above a bulleted list of many of the bar's key healthful attributes; (4)
a thin vertical line in a contrasting color, marking the border between the transparent
panel and the brand-identifier panel; (5) opaque vertical bands, or end caps, at either edge
of the product package; and (6) a roughly identical slender shape. The overall impression
conveyed by the NATURE'S HARVEST trade dress, in its entirety, is confusingly
similar to that created by the KIND packaging.
6. The confluence of similarities between the KIND Trade Dress and the
NATURE'S HARVEST trade dress is no coincidence. In May 2014, KIND became
aware of Flagstone's efforts to market its own healthy snack bars to retailers as a
potential private label offering. KIND notified Flagstone that the images Flagstone was
using to market its private label product infringed KIND'S rights in its unique package,
and Flagstone confirmed that the images were concepts only, that it would immediately
discontinue use of each image in its marketing efforts, and that it would take KIND's
concerns into consideration in the future. There is no question that Flagstone is fully
aware of KIND's rights and has made a conscious decision to disregard them.
7. Flagstone's unlawful conduct is likely to create consumer confusion,
which will cause serious and irreparable harm to KIND. This conduct, if not enjoined,
could eviscerate the goodwill KIND has spent years carefully cultivating for its brand.
THE PARTIES
8. KIND is a corporation organized and existing under the laws of the State
of Delaware with its principal place of business at 1372 Broadway, New York, New York
10018.
9. Flagstone Foods is the assumed name of Snacks Holding Corporation, a
corporationorganized and existing under the laws of the State of Delaware with its
principal place of business at 380 St. Peter Street, Number 1000, St. Paul, Minnesota,
55102.
10. American Importing Company, Inc. (operating as Amport Foods), is a
business corporation organized and existing under the laws of the State of Minnesota
with its principal place of business at 380 St. Peter Street, Number 1000, St. Paul,
Minnesota, 55102.
JURISDICTION AND VENUE
11. This Court has original jurisdiction over the subject matter of this action
pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338 and has supplemental
jurisdiction pursuant to 28 U.S.C. § 1367(a).
12. This Court has personal jurisdiction over Defendants pursuant to N.Y.
Civ. Prac. L. & R. § 302(a). Defendants are regularly soliciting business and have
transacted business in the State of New York and in this District through marketing and
product displays on the Internet, sale of their products on a nationwide basis including
extensive sales throughout the State of New York and in this District, and sale of
products through Internet retailers. Defendants derive substantial revenue from interstate
commerce. In addition, through their activities, Defendants are wrongfully causing injury
to KIND in the State of New York and in this District, such injury being reasonably
foreseeable.
13. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) because
Plaintiff resides in this district under 28 U.S.C. § 1391(c), and because Defendants
conduct business in this District.
KIND BARS AND THEIR TRADE DRESS
14. KIND is a market leader in the nutritional snackbar category and is the
number one brand in the healthy snack bar segment within the nutritional snack bar
category. KIND's Fruit & Nut bars transformed the nutritional snack bar categorywhen
they were launched a decade ago. Unlike most other leading nutritional snack bars—then
and now—which typically start from a paste or emulsion, KIND's healthy snack bars are
made from identifiable, nutritionally rich "ingredients you can see and pronounce," a
branding proposition KIND registered as a trademark (Federal Trademark Registration
No. 3,634,183). These include ingredients such as whole nuts, dried fruits and honey.
15. KIND designed a graphic identity for its bars that would resonate with its
core brand proposition (simple, whole ingredients you can see and pronounce) and which
would convey a distinctive, sleek, and modern impression on store shelves. This trade
dress, sharedamong three product lines, consists of the distinctive arrangement and
combination of elements comprising product packaging for the presentation of a ready to
eat food bar (the "KIND Shared Trade Dress"). As depicted below, the packaging is a
glossy, plastic wrapper sized to contain an individual 40 grambar. The packaging
configuration consists of four rectangular segments. The segments at both edges of the
package are the same contrasting opaquecolor. Along the right edge of the left-most
segment runs a vertical line of approximately 1/16of an inch in width. Immediately to
the right of the 1/16 inch line is a transparent segment, which consists of a rectangular,
transparent block. The transparent segment is dividedby a horizontal band, boundedon
the top and bottomby thin white lines, containing the productflavor identifier. Along the
left edge of the right-most segment runs a vertical, thin, white line. Immediately to the
left of the vertical white line is the final segment, which consists of a black-colored
rectangular block. The product line
identifier (i.e. FRUIT & NUT,
PLUS, or NUTS & SPICES) appears
within the black-colored block in
line with the horizontal band that
divides the transparent segment, and
below in smaller sans-serif font
appears a list of product attributes, each bulleted with a stylized check mark. Above the
product line identifier is the brand identifier, "KIND," in white capital letters against the
black background. Above the brand identifier are four smaller vertical rectangular bars
colored yellow, red, green and blue from left to right. Separating the black-colored
segment and the transparent segment is a vertical red-colored line approximately 1/32 of
an inch in width.
16. These three healthy snack bar lines are comprised of bars in 22 flavors, all
of which utilize the distinctive KIND Shared Trade Dress. Since its inception, KIND has
sold nearly 500 million healthy snack bars in the United States in the KIND Shared Trade
Dress.
17. Each of the individual flavors has a packaging that incorporates the KIND
Shared Trade Dress together with other features.
a. For example, since 2004 KIND has packaged its Almond &
Apricot bar in the package depicted below (the "KIND A&A Trade
Dress").
The KIND A&A Trade Dress is comprised of the distinctive arrangement
and combination of unique elements in combination with shared elements
in the KIND Shared Trade Dress above. The segments at both edges of
the package are yellow in color. Along the right portion of the left-most
segment, and visible on the face of the package, appear the terms
"NATURAL INGREDIENTS YOU CAN" in gold, sans-serif font. The
1/16 inch vertical line along the right edge of the left-most segment is gold
in color. Within the horizontal black-colored band bisecting the
transparent rectangular segment is the flavor identifier, "ALMOND &
APRICOT," in white, sans-serif letters and a stylized ampersand. The
product line identifier "FRUIT & NUT" appears within the black-colored
segment in white, sans-serif font, and below, visible on the leading face of
thepackage, in smaller sans-serif font appear the following product
attributes, each accompanied by a stylized check-mark: "ALL NATURAL
/ NON GMO," "GLUTEN FREE," "LOW GLYCEMIC," and "GOOD
SOURCE OF FIBER." Since 2011, KIND has achieved over $24.8
million in measured outlet sales of Almond & Apricot bars in the
distinctive KIND A&A Trade Dress.
b. As another example, since 2004 KIND has packaged its
Almond & Coconutbar in the packagedepicted below (the "KIND A&C
Trade Dress").
The KIND A&C Trade Dress is comprised of the distinctive arrangement
and combination of unique elements in combination with shared elements
in the KIND Shared Trade Dress above. The segments at both edges of
the package are dark brown in color. Along theright portion of the left
most segment, and visible on the face of the package, appear the terms
"NATURAL INGREDIENTS YOU CAN" in gold, sans-seriffont. The
1/16 inch vertical line along the right edge of the left-most segment isgold
in color. Within the horizontal black-colored band bisecting the
transparent rectangular segment is the flavor identifier, "ALMOND &
COCONUT," in white, sans-serif letters and a stylized ampersand. The
product line identifier "FRUIT & NUT" appears within the black-colored
segment in white, sans-serif font, and below, visible on the leading face of
the package, in smaller sans-serif font appear the following product
attributes, each accompanied by a stylized check-mark: "ALL NATURAL
/ NON GMO," "GLUTEN FREE," "LOW GLYCEMIC," and "GOOD
SOURCE OF FIBER." Since 2011, KIND has achieved over $72.6
million in measured outlet retail sales of Almond & Coconut bars in the
distinctive KIND A&C Trade Dress.
c. As a third example, since 2010 KIND has packaged its
Cranberry Almond bar in the package depicted below (The "KIND CA+
Trade Dress").
The KIND CA+ Trade Dress is comprised of the distinctive arrangement
and combination of unique elements in combination with shared elements
in the KIND SharedTrade Dress above. The segments at both edges of
the package are burgundy in color, with a repeating pattern overlay of
white "plus" symbols. The 1/16inch vertical line along the right edge of
the left-most segment is gold in color. Within the horizontal black-colored
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band bisecting the transparent rectangular segment are the flavor
identifier, "CRANBERRY ALMOND," and the term "ANTIOXIDANTS"
in white, sans-serif font. Immediately to the right of the flavor identifier,
and superimposed on the vertical black-colored band, is a white plus
symbol over a rectangle in the same burgundy color as the edges of the
package. The product line identifier "PLUS" appears within the black-
colored segment in gold, sans-serif font, and below, visible on the leading
face of the package, in smaller white sans-serif font appear the following
product attributes, each accompanied by a stylized check-mark: "50% DV
ANTIOXIDANTS VITAMINS A, C AND E," and "ALL NATURAL /
NON GMO." Since 2011, KIND has achieved over $62.6 million in
measured outlet retail sales of Cranberry Almond bars in the distinctive
KIND CA+ Trade Dress.
d. As a final example, since 2010 KIND has packaged its
Peanut Butter Dark Chocolate bar in the package depicted below (the
"KIND PBDC+ Trade Dress")
The KIND PBDC+ Trade Dress is comprised of the distinctive
arrangement and combination of unique elements in combination with
shared elements in the KIND Shared Trade Dress above. The segments at
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both edges ofthe package are light brown in color, with a repeating
pattern overlay ofwhite "plus" symbols. The 1/16 inch vertical line along
therightedge of the left-most segment is gold in color. Within the
horizontal black-colored band bisecting the transparent rectangular
segment is the flavor identifier, "PEANUT BUTTER DARK
CHOCOLATE,"and the term "PROTEIN" in white, sans-serif font.
Immediately to the right of the flavor identifier, and superimposed on the
vertical black-colored band, is a white plus symbol over a rectangle in the
same light brown coloras the edges of the package. Theproduct line
identifier "PLUS" appears within the black-colored segment in gold, sans-
serif font, and below, visible on the leading face of the package, in smaller
white sans-serif font appearthe following product attributes, each
accompanied by a stylized check-mark: "7g PROTEIN, "ALL NATURAL
/ NON GMO," "GLUTEN FREE," and "LOW GLYCEMIC." Since
2011, KIND has achieved over $88.3 million in measured outlet retail
sales of Peanut Butter Dark Chocolate bars in the distinctive KIND
PBDC+ Trade Dress.
18. Furthermore, KIND owns Federal Trademark Registration No. 3,882,221,
covering elements of its packaging trade dress, for "healthy snacks, namely, nut and seed
based snack bars; processed fruit-and-nut-based food bars, nut based snack food bars,
fruit based snack food bars also containing nuts, grains, cereals anddried fruit." KIND
also owns Federal Trademark Registration No. 4,097,493, covering elements of its
packaging trade dress, for, inter alia, "nutrition bars, namely, nutand seed based snack
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bars; processed fruit-and-nut-based food bars, nut based snack food bars, fruit based
snack food bars also containing nuts, grains, cereals and dried fruit." (Together, the
"KIND Registered Trade Dress.")
19. The KIND Registered Trade Dress, the KIND Shared Trade Dress, and
each of the trade dresses of the individual flavors, including the KIND A&A Trade Dress,
KIND A&C Trade Dress, KIND CA+ Trade Dress, and KIND PBDC+ Trade Dress, are
all referred to collectively herein as the "KIND Trade Dress."
20. The success of KIND bars stems not only from the high quality of the
products, but also from the distinctive brand image communicated by the KIND Trade
Dress. Indeed, the KIND Trade Dress is among the most significant ways in which
consumers identify the brand on shelves, and is thus among KIND's most valuable
intellectual property.
KIND'S ADVERTISING AND MARKETING
21. KIND has expended considerable resources advertising and promoting its
products using the distinctive KIND Trade Dress. The KIND Trade Dress is featured
prominently in advertisements, on KIND's website, in experiential marketing programs,
and in point-of-sale promotional materials. KIND's extensive advertising and promotion,
featuring the KIND Trade Dress, has supported the explosive growth of the KIND brand.
Since 2011 these programs have generated more than 1 billion media impressions.
Additionally, KIND has engaged in widespread experiential marketing efforts,
distributing more than 25 million KIND bars as samples. In 2004, KIND spent
approximately $300,000 advertising KIND bars including sales promotion and trade
13
spending. This figure rose to more than $70 million in 2014. Altogether, since 2004,
KIND has spent over $150 million marketing itshealthy snack bars.
22. KIND bars have received multiple awards, including All You - Snack Star,
Climbing - Editor's Choice (2014), Fitness - Best Pre-Workout Snacks (2014), Outside
- Travel Awards (2014), Prevention - 125 Cleanest Packaged Goods (2014), SELF-
Best Energy Bar (2014), Men's Health - Best Breakfast Bar(2014), Men's Health -
Best Energy Bar(2014), Women's Health - Supermarket Stars (2014), Prevention -
Best Bar (2011), Natural Products Expo - Best New Product (2008), and many others.
KIND bars also have received extensive unsolicited media coverage in major
publications such as TIME, BusinessWeek, Food &Wine, Oprah's O Magazine, Good
Housekeeping, Ladies Home Journal, Progressive Grocer, Health Magazine, and The
New York Times. KIND bars have been featured on national television programs such
as The Today Show, Good Morning America, and the Rachel Ray Show. Through
these media outlets, KIND bars have received in excess of 7.5 billion earned media
impressions during the past four years.
SALES OF KIND BARS
23. KIND bars are the fastest growing product in the nutritional snack bar
category and can be found in more than 150,000 locations. During the 52 weeks ending
December 28, 2014, sales ofKIND bars inSPINS/IRI outlets enjoyed a growth rate of
62% while KIND's closest competitor in the space, LARABAR, saw sales grow by
20%. Fourteen ofthe top 15 performing products in the healthy snack bar segment are
KIND products.
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24. Growth in the sales of KIND bars has led to significantrevenue for KIND.
In 2014 alone, KIND sold approximately 200 million KIND bars in measured retail
outlets, resulting in retail sales of approximately$300 million. Since 2011, KIND sold
more than 450 million KIND bars in measured retail outlets, with aggregate retail sales
well in excess of $625 million.
25. Thisrapid growth has come primarily through KIND's leadership in
rapidly expanding thehealthy snack bar market. Every day KIND is reaching new
consumers who have never tried a healthy snack bar before. This rapidly expanding
market has notgone unnoticed by KIND's competition, and KIND has seen a steady
stream of new product entrants with offerings similar to KIND's innovative products; a
development KIND welcomes so long as competitors strive to compete on the merits of
their products and not on consumer deception.
DEFENDANTS' WRONGFUL CONDUCT
26. Flagstone is a manufacturer anddistributor of private label healthy snacks.
Hagstone recently released and began selling a private label snack bar product underits
NATURE'S HARVEST label. Flagstone offers this product in at least three varieties, in
the packaging depicted at left in the image on the following page.
15
27. As shown above, the new NATURE'S HARVEST trade dress mimics the
distinctive overall impression of KIND's packaging trade dress, appropriating several key
aspects of KIND's unique packaging to create a confusingly similar overall impression.
Among these striking similarities are (1) a transparent, rectangular front panel in
essentially identical proportion to the remaining package; (2) a horizontal stripe of
essentially identical proportion bisecting the transparent front panel and containing the
flavor of the bar in text; (3) an opaque panel, offset to the side of the package, containing
the brand identifier above a bulleted list of many of the bar's key healthful attributes; (4)
a thin vertical line in a contrasting color, marking the border between the transparent
panel and the brand-identifier panel; (5) opaque vertical bands, or end caps, at either edge
of the product package; and (6) a roughly identical slender shape. The overall impression
conveyed by the NATURE'S HARVEST trade dress is confusingly similar to the overall
impression created by KIND's distinctive package.
16
28. Each Flagstone wrapper also closely replicates the prominent endcap color
on the KIND A&A Trade Dress, the KIND A&C Trade Dress, and the KIND AC Trade
Dress, respectively.
29. The confluence of similarities results from intentional mimicry and
reflects a bad faith intent to trade on KIND's hard-earned good will.
30. In May of 2014, KIND became aware of Flagstone's efforts to market its
own healthy snack bars to retailers as a potential private label offering. In connection
with these efforts, Ragstone created a "sell-sheet" (see images below) depicting snack
bars packaged in wrappers that copied KIND's distinctive packaging.
Product Details
Ingredient* Product Benefits:
31. KIND notified Ragstone that the images Ragstone was using to market its
private label product infringed KIND's rights in its unique package, and Flagstone
confirmed that the images were concepts only, that it would immediately discontinue use
of each image in its marketing efforts, and that it would take KIND's concerns into
17
consideration in the future. In short, there is no doubt that Flagstone was fully aware of
KIND's rights and concerns since at least May of 2014. Despite its prior assurances,
Ragstone has now launched the NATURE'S HARVEST snack bars in infringing
packaging.
32. Ragstone's unlawful conduct is likely to create consumer confusion which
will cause serious and irreparable harm to KIND. This conduct, if not enjoined, could
eviscerate the goodwill KIND has spent years carefully cultivating for its brand.
LIKELIHOOD OF CONFUSION
33. Due to the striking similarity between the KIND Trade Dress in general,
the three Individual KIND Trade Dresses in particular, and the NATURE'S HARVEST
trade dress, there is a high likelihood that consumers will buy a NATURE'S HARVEST
bar under the mistaken belief that it comes from, is manufacturedby, sponsored by, or is
associated or affiliated with, KIND.
34. As a private label version of KIND's products, the NATURE'S
HARVEST bars compete directly with KIND products in the exact same channels of
commerce.
35. Indeed, Flagstone clearly intends for its private label NATURE'S
HARVEST bars to compete directly with KIND bars because it has mimicked three of
KIND's most successful ingredient combinations, and has demonstrated its intention
through its "sell-sheet" to mimic three others:
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KIND FlavorNATURE'S HARVEST
Flavor
Flagstone Sell-Sheet
Flavor
Almond & Coconut Almond & Coconut Almond & Coconut
Cranberry Almond Cranberry & Almond Cranberry Almond
Peanut Butter Dark
Chocolate
Peanut Butter Dark
Chocolate
Peanut Butter Dark
Chocolate
Dark Chocolate CherryCashew
Dark Chocolate CherryCashew
Fruit & Nut Delight Fruit & Nut Delight
Dark Chocolate Nuts &
Sea Salt
Dark Chocolate Nuts &
Sea Salt
Ragstone also highlights unique nutritional benefits and attributes that match the imitated
KIND flavor. For example, on its Cranberry Almond flavor, Ragstone calls out the
addition of "50% Daily Value of Antioxidant Vitamins A, C & E," which directly
matches the supplement and prominent "50% DV Antioxidants Vitamins A, C and E"
claim for the corresponding KIND bar.
36. Notwithstanding Flagstone's clear intention to compete directly with
KIND, its products are not equivalent, as they use less expensive and lower quality
sweetening agents, use considerably more sodium, and retail for substantially less per
bar.
37. Relatively low-cost snack items, including KIND bars (about $2 per bar),
are often impulse purchases. In that setting, deceptively similar trade dress is likely to
cause confusion. Confusion is further likely because consumers of these products are
more likely to rely on signals of familiarity contained in a product's trade dress and are
unlikely to exercise a great deal of care to ensure the source of the product before making
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a purchase, risks that are particularly acute where a competitor seeks to mimic so many of
the signals consumers use as shortcuts in identifying a favored brand.
IRREPARABLE HARM
38. Ragstone has adopted a trade dress for its NATURE'S HARVEST bar
products that is likely to confuse consumers into thinking they are buying a product that
comes from or is associated with KIND as the maker of KIND bars.
39. If Ragstone is permitted to continue or expand sales of its NATURE'S
HARVEST bars in their infringing trade dress, KIND will suffer irreparable harm. A
material proportion of consumers will mistakenly believe they are buying a KIND
product, or a private label product made, sponsored or approved by KIND, when they are
actually buying a Ragstone product. The goodwill that KIND has spent considerable
time, effort and resources to cultivate will be eroded. Existing KIND customers may be
disappointed with the quality of products that they mistakenly believe are made by
KIND, and therefore may turn away from KIND products. Potential new customers,
mistakenly thinking they are buying KIND products, may also be disappointed and
decide not to buy KIND bars in the future.
40. Exacerbating these harms is the fact that, as a self-proclaimed leader in the
private label market, Flagstone already enjoys broad distribution among many of the
nation's largest food retailers and, unless enjoined, has the apparent ability to flood
market channels with its confusingly similar product.
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COUNT ONE
(Trade Dress Infringement and False Designation of OriginUnder Section 43(a) of the Lanham Act)
41. KIND repeats and realleges each and every allegation in the foregoing
paragraphs as if fully set forth herein.
42. As noted above, the NATURE'S HARVEST snack bar products feature
trade dress that is confusingly similar to the KIND Trade Dress (including the KIND
Shared Trade Dress, the KIND Registered Trade Dress, the KIND A&A Trade Dress, the
KIND A&C Trade Dress, the KIND CA+ Trade Dress, and the KIND PBDC+ Trade
Dress).
43. Defendants' acts of trade dress infringement, unless restrained, will cause
great and irreparable injury to KIND and to the business and goodwill represented by the
KIND Trade Dress, in an amount that cannot be ascertained at this time, leaving KIND
with no adequate remedy at law.
44. Defendants' deceptive marketing and sales practices in connection with
their NATURE'S HARVEST bar products in the present packaging constitutes false
designation of origin and infringement of the KIND Trade Dress in violation of Section
43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
45. By reason of the foregoing, KIND is entitled to injunctive relief against
Defendants, restraining them from any further acts of trade dress infringement, false
designation of origin and unfair competition, and, after trial, recovery of any damages (to
the extent calculable) proven to have been caused by reason of Defendants' aforesaid
acts.
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COUNT TWO
(Trade Dress Infringement Under New York Law)
46. KIND repeats and realleges each and every allegation in the foregoing
paragraphs as if fully set forth herein.
47. Defendants' acts, as described above, constitute trade dress infringement
under N.Y. Gen. Bus. Law § 360-k.
COUNT THREE
(Registered Trade Dress InfringementUnder Section 32 of the Lanham Act)
48. KIND repeats and realleges each and every allegation in the foregoing
paragraphs as if fully set forth herein.
49. The trade dress of KIND bars is federally registered with the United States
Patent and Trademark Office as Trademark Registration No. 3,882,221 (below on the
left) and Registration No. 4,097,493 (below on the right).
KIND
50. The packaging trade dress of KIND bars is cunently used in commerce, is
non-functional, is inherently distinctive, and also has acquired substantial secondary
meaning in the marketplace.
51. Flagstone's NATURE'S HARVEST bar product features a trade dress that
is confusingly similar to the trade dress of KIND bars, and Flagstone has already
commenced selling the NATURE'S HARVEST product in the market.
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52. Flagstone's manufacture, distribution, sale and promotion of its
NATURE'S HARVEST bar products thus is likely to cause confusion and mistake and to
deceive retailers and consumers as to the source, origin or sponsorship of these products.
Consumers seeing NATURE'S HARVEST bar products in the marketplace likely will
believe that they are sponsored by, associated with, or otherwise affiliated with KIND or
vice versa.
53. Any confusion stemming from the NATURE'S HARVEST bar's
confusingly similar trade dress would cause irreparable injury to both the sales and
reputation of KIND as well as the goodwill developed by KIND bar's trade dress. The
extent of this harm cannot be ascertained at this time, leaving KIND no adequate remedy
at law.
54. As such, Ragstone's deceptive marketing and sales practices in
connection with its NATURE'S HARVEST bar products constitute infringement of the
Registered KIND Trade Dress in violation of Section 32 of the Lanham Act, 15 U.S.C.
§1114.
55. By reason of the foregoing, KIND is entitled to injunctive relief against
Defendants, restraining them from any further acts of trade dress infringement and, after
trial, recovery of any damages (to the extent calculable) proven to have been caused by
reason of Defendants' aforesaid acts.
COUNT FOUR
(Deceptive Acts and Practices Under New York Law)
56. KIND repeats and realleges each and every allegation in the foregoing
paragraphs as if fully set forth herein.
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57. The acts of Defendants as described above constitute deceptive acts and
practices in violation of N.Y. Gen. Bus. Law § 349-50.
COUNT FIVE
(Unfair Competition under New York Law)
58. KIND repeats and realleges each and every allegation in the foregoing
paragraphs as if fully set forth herein.
59. The acts of Defendants as described above constitute unfair competition in
violation of KIND's rights under the New York State common law, as preserved by N.Y.
Gen. Bus. Law § 360-O.
COUNT SIX
(Trade Dress Dilution under New York Law)
60. KIND repeats and realleges each and every allegation in the foregoing
paragraphs as if fully set forth herein.
61. The KIND Trade Dress is used in commerce, is non-functional, is
inherently distinctive, and has acquired substantial secondary meaning in the
marketplace.
62. Defendants' distribution, sale and promotion of products employing the
challenged trade dress is likely to dilute and detract from the distinctiveness of the KIND
Trade Dress.
63. Defendants' acts of trade dress dilution, unless restrained, will cause great
and irreparable injury to KIND and to the business and goodwill represented by the
KIND Trade Dress, in an amount that cannot be ascertained at this time, leaving KIND
with no adequate remedy at law.
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64. The acts of Defendants as described above constitute trade dress dilution
in violation of N.Y. Gen. Bus. Law § 360-1.
PRAYER FOR RELIEF
WHEREFORE, KIND respectfully prays:
A. That Defendants and all those in active conceit or participation
with them (including, but not limited to, their officers, directors, agents, servants,
wholesalers, distributors, retailers, employees, representatives, attorneys, subsidiaries,
related companies, successors, assigns and contracting parties) be temporarily,
preliminarily and permanently enjoined and restrained from:
i. manufacturing, distributing, shipping, advertising,
marketing, promoting, selling or otherwise offering for sale NATURE'S
HARVEST or any other bar products in the challenged trade dress or any
other trade dress that is confusingly similar to that of KIND bars or any of
KIND's other products;
ii. representing, by any means whatsoever, that any products
manufactured, distributed, advertised, offered or sold by Defendants are
KIND's products or vice versa, and from otherwise acting in a way likely
to cause confusion, mistake or deception on the part of purchasers or
consumers as to the origin or sponsorship of such products; and
B. That Defendants and all those in active conceit or participation
with them (including, but not limited to, their officers, directors, agents, servants,
wholesalers, distributors, retailers, employees, representatives, attorneys, subsidiaries,
related companies, successors, assigns and contracting parties) take affirmative steps to
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dispel such false impressions that heretofore have been created by their use of the
challenged trade dress, including, but not limited to, recalling from any and all channels
of distribution any and all infringing products and promotional materials.
C. That Defendants account to KIND for their profits and any
damages sustained by KIND, to the extent calculable, arising from the foregoing acts of
trade dress infringement and dilution, false designation of origin and deceptive acts and
practices.
D. That, in accordance with such accounting, KIND be awarded
judgment for three times such profits or damages (whichever is greater), pursuant to
15 U.S.C. § 1117 and N.Y. Gen. Bus. Law § 349(h).
E. That KIND have and recover its costs, including its reasonable
attorneys' fees and disbursements in this action, pursuant to 15 U.S.C. § 1117 and
N.Y. Gen. Bus. Law § 349(h).
F. That KIND be awarded punitive damages pursuant to the law of
the State of New York in view of Defendants' intentional and willful trade dress and
trademark infringement and other conduct.
G. That Defendants deliver up for destruction all infringing products
in their possession or control and all means of making the same in accordance with 15
U.S.C. § 1118.
H. That Defendants file with the Court and serve on counsel for
KIND within thirty (30) days after entry of any injunction issued by the Court in this
action, a sworn written statement pursuant to 15 U.S.C. § 1116(a) setting forth in detail
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the manner and form in which Defendants have complied with any injunction which the
Court may enter in this action.
I. That KIND have such other and further relief as the Court may
deem just and proper.
JURY TRIAL DEMAND
KIND demands a trial by jury on all claims as to which a jury trial may be had.
Dated: New York, New YorkFebruary 23, 2015
DEBEVOISE & PLIMPTON LLP
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Ivid H. Bernstein
(dhbernstein @debevoise.com)Jyotin Hamid([email protected])Charles W. Baxter
([email protected])919 Third Avenue
New York, New York 10022
(212) 909-6696 (telephone)(212) 521-7696 (facsimile)
Attorneysfor PlaintiffKIND LLC