Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 1 of 52 Page ID #:1
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`KILPATRICK TOWNSEND & STOCKTON LLP
`
`KOLLIN J. ZIMMERMANN (Bar No. 273092)
`Kzimmermann@kilpatricktownsend.com
`1801 Century Park East, Suite 2300
`Los Angeles, CA 90067
`Telephone: 310-248-3830
`Facsimile: 310-860-0363
`
`SARAH EDWARDS HOLLAND (pending pro hac vice application)
`seholland@kilpatricktownsend.com
`1100 Peachtree Street N.E., Suite 2800
`Atlanta, GA 30345
`Telephone: 404-815-6500
`Facsimile: 404-815-6555
`
`Attorneys for Plaintiff
`DOLE PACKAGED FOODS, LLC
`
`
`UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`DOLE PACKAGED FOODS, LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`KELLY CARTTER D/B/A HULA
`GIRLS SHAVE ICE and JASON
`LAUDERDALE,
`
`
`Defendants.
`
`
`COMPLAINT
`
`
`Case No. _____________________
`
`COMPLAINT FOR:
`
`(1) TRADEMARK INFRINGEMENT
`UNDER 15 U.S.C. § 1114(1);
`
`(2) UNFAIR COMPETITION AND
`FALSE DESIGNATION OF ORIGIN
`UNDER 15 U.S.C. § 1125(a);
`
`(3) TRADEMARK DILUTION
`UNDER 15 U.S.C. § 1125(C);
`
`(4) COMMON LAW
`TRADEMARK INFRINGEMENT
`AND UNFAIR COMPETITION;
`
`(5) STATUTORY UNFAIR
`COMPETITION UNDER CAL. BUS.
`& PROF. CODE § 17200;
`
`(6) STATUTORY DILUTION
`UNDER CAL. BUS. & PROF. CODE
`§ 14247
`
`
`[DEMAND FOR JURY TRIAL]
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`- 1 -
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`2:21-CV-009195
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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 2 of 52 Page ID #:2
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`Plaintiff Dole Packaged Foods, LLC (“Dole”) states the following for its
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`Complaint against Defendant Kelly Cartter d/b/a Hula Girls Shave Ice and Defendant
`
`Jason Lauderdale (collectively, “Hula Girls”):
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`NATURE OF THE ACTION
`
`1.
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`This is an action at law and in equity for trademark infringement,
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`dilution, and unfair competition in violation of the Trademark Act of 1946, 15 U.S.C.
`
`§§ 1051 et seq. (“Lanham Act”) and the common law of the State of California, as
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`well as violations of the California statutory unfair competition law, Cal. Bus. & Prof.
`
`Code § 17200, and California statutory dilution law, Cal. Bus. & Prof. Code. §
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`14247.
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`THE PARTIES
`
`2.
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`Plaintiff Dole Packaged Foods, LLC is a California limited liability
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`company with a place of business at 3059 Townsgate Road, Suite 400, Westlake
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`Village, California 91361. Dole is the record owner, in its own right or by assignment
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`from its predecessors-in-interest, of the United States registered trademarks at issue in
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`this dispute, which are identified below.
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`3.
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`Upon information and belief, Defendant Kelly Cartter d/b/a Hula Girls
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`Shave Ice is an individual with a principal place of business at 16556 Bolsa Chica
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`Street, Huntington Beach, California 92649, and resides in this District.
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`4.
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`Upon information and belief, Defendant Jason Lauderdale is the co-
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`founder of Hula Girls Shave Ice and is an individual who resides in this District. On
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`further information and belief, Mr. Lauderdale knowingly authorized, directed, and/or
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`substantially participated in the infringing activity described in this Complaint.
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction over the federal claims alleged
`
`herein pursuant to § 39 of the Lanham Act, 15 U.S.C. § 1121, and pursuant to 28
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`U.S.C. §§ 1331 and 1338(a). As to the claims under state law, this Court has subject
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`COMPLAINT
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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 3 of 52 Page ID #:3
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`matter jurisdiction pursuant to 28 U.S.C. § 1338(b), and supplemental jurisdiction
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`pursuant to 28 U.S.C. § 1367.
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`6.
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`This Court has personal jurisdiction over Hula Girls because, on
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`information and belief, Hula Girls (a) resides and is located in the State of California;
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`(b) distributes, offers for sale, and sells goods in connection with a trademark that
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`infringes Dole’s intellectual property within the State of California; (c) regularly
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`transacts and conducts business within the State of California; and (d) has otherwise
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`made or established contacts with the State of California sufficient to permit the
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`exercise of personal jurisdiction.
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`7.
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`Venue is proper under 28 U.S.C. § 1391(a) and (b) because the acts
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`giving rise to the claims in this case occurred in this District, and upon information
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`and belief, Hula Girls has a principal place of business and resides in this District.
`
`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`DOLE’S TRADEMARKS
`
`8.
`
`Dole is a world leader in growing, sourcing, distributing, and marketing
`
`fruit and better-for-you snacks, offering a full line of canned, jarred, pouch, dried,
`
`frozen, and aseptic fruit products. For more than 170 years, Dole’s mission has been
`
`to deliver high-quality packaged fruit with a positive impact on people, planet, and
`
`prosperity. Dole also has an unwavering commitment to customers’ needs in the
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`critical areas of quality assurance, food safety, traceability, environment
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`responsibility, and social accountability.
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`9.
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`Dole is the owner of a federal registration for the mark DOLE (Reg. No.
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`4,587,365) (the “DOLE Mark”), which issued in 2014 for “Frozen confections;
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`Grain-based snack foods.” Since at least as early as 1985, Dole, through its own use
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`and/or its predecessor’s use, has continuously used, and presently uses, the DOLE
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`Mark in interstate commerce throughout the United States in connection with its
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`high-quality dessert-related goods and frozen confections. A copy of the Certificate
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`of Registration for the DOLE Mark is attached as Exhibit 1.
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`COMPLAINT
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`- 3 -
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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 4 of 52 Page ID #:4
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`10. Dole is also the owner of a federal registration for the mark DOLE
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`WHIP (Reg. No. 5,169,269) (the “DOLE WHIP Mark”), which issued in 2017 for
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`“Frozen confections; Non-dairy frozen confections; Pre-processed mixes for making
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`non-dairy frozen confections.” Since at least as early as 1984, Dole has continuously
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`used, and presently uses, the DOLE WHIP Mark in interstate commerce throughout
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`the United States in connection with its high-quality dessert-related goods and frozen
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`confections. A copy of the Certificate of Registration for the DOLE WHIP Mark is
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`attached as Exhibit 2.
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`11. As a result of Dole’s widespread and extensive advertising and use of
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`the DOLE Mark and DOLE WHIP Mark (collectively, the “DOLE and DOLE WHIP
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`Marks”), consumers throughout the United States, and indeed the world, have come
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`to recognize and associate the DOLE and DOLE WHIP Marks as indicators of source
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`or affiliation with Dole’s high-quality food and beverage products. Due to the high
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`degree of inherent distinctiveness of the DOLE and DOLE WHIP Marks, the length
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`of time and extent to which Dole has used the DOLE and DOLE WHIP Marks, the
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`vast advertising and publicity of which the DOLE and DOLE WHIP Marks have
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`been subject, and the high degree of consumer recognition of the DOLE and DOLE
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`WHIP Marks, the DOLE and DOLE WHIP Marks are well-known and famous
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`trademarks widely recognized by the general consuming public of the United States
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`as a designation of source of Dole’s goods and deserving of a broad scope of legal
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`protection prior to Hula Girls’ unlawful use.
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`12. Dole is also the owner of numerous other federal trademark registrations
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`for marks sharing a common characteristic, namely, the DOLE formative. Copies of
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`the Certificates of Registration for the below marks are attached as Exhibit 3.
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`
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`Mark
`
`Reg. No.
`
`Dates
`
`DOLE
`
`4,587,364
`
`Filing date:
`Aug. 13, 2013
`
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`COMPLAINT
`
`Goods and Services
`
`Class 29: Canned or
`bottled fruits; Dried
`fruits; Frozen fruits; Fruit
`- 4 -
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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 5 of 52 Page ID #:5
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`
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`Mark
`
`Reg. No.
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`4,587,385
`
`
`
`
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`DOLE SOFT
`SERVE
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`5,832,264
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`DOLE BANANA
`DIPPERS
`
`4,032,617
`
`Goods and Services
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`purees; Nut and seed-
`based snack bars;
`Processed edible seeds
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`Class 30: Frozen
`confections; Grain-based
`snack foods
`
`Class 30: Frozen
`confections; non-dairy
`frozen confections; pre-
`processed mixes for
`making non-dairy frozen
`confections
`
`Class 30: Frozen
`confections
`
`
`
`Dates
`
`
`First use date:
`Dec. 31, 1927
`
`Registration
`date:
`Aug. 19, 2014
`Filing date:
`Aug. 18, 2013
`
`First use date:
`Apr. 30, 2011
`
`Registration
`date:
`Aug. 19, 2014
`Filing date:
`Nov. 30, 2018
`
`First use date:
`Jan. 1, 2002
`
`Registration
`date:
`Aug. 13, 2019
`Filing date:
`Aug. 12, 2010
`
`First use date:
`Mar. 31, 2011
`
`Registration
`date:
`Sept. 27, 2011
`
`
`
`13. Dole publishes and distributes brand guidelines, which are available
`
`online at https://www.appslibrary.com/assets/MFR457/DOC/Dole-Brand-
`
`202061052520.pdf (the “Brand Guidelines”). Dole’s Brand Guidelines outline the
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`proper use of Dole’s trademarks by retailers who distribute and sell dessert-related
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`goods and frozen confections that are prepared using Dole’s soft serve mix. Per the
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`COMPLAINT
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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 6 of 52 Page ID #:6
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`Brand Guidelines, retailers may “use DOLE SOFT SERVE® on [their] store menus
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`and point of sale materials,” but may “[n]ever refer to DOLE Whip®.” A copy of the
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`Brand Guidelines is attached as Exhibit 4.
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`HULA GIRLS’ UNLAWFUL CONDUCT
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`14. Hula Girls is engaged in the business of selling, and/or offering for sale,
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`and advertising, marketing, and promoting dessert-related goods and frozen
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`confections.
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`15. Hula Girls uses Dole’s DOLE and DOLE WHIP Marks on signage and
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`menus at its store in connection with its dessert-related goods and frozen confections.
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`A photo of one of Hula Girls’ signs incorporating the DOLE and DOLE WHIP Marks
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`is attached as Exhibit 5.
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`16. Upon information and belief, Hula Girls owns and operates the websites
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`https://my-site-100228-102576.square.site/ and
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`http://myweb.students.wwu.edu/birde/360/project-2/index.html, through which it
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`advertises, markets, and promotes its dessert-related goods and frozen confections
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`under Dole’s DOLE and DOLE WHIP Marks. Copies of screenshots from https://my-
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`site-100228-102576.square.site/ and
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`http://myweb.students.wwu.edu/birde/360/project-2/menu.html are attached as
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`Exhibits 6 and 7, respectively.
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`17. Hula Girls also advertises, markets, and promotes its dessert-related
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`goods and frozen confections under Dole’s DOLE and DOLE WHIP Marks
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`throughout its Facebook, Twitter, and Instagram pages. Copies of screenshots from
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`Hula Girls’ Facebook, Twitter, and Instagram pages are attached as Exhibits 8, 9,
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`and 10, respectively.
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`18. Dole’s licensee, Kent Precision Foods Group, Inc. (“Kent Precision”),
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`sent Hula Girls a demand letter via overnight delivery on July 22, 2020, informing
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`Hula Girls of its unauthorized use of Dole’s DOLE and DOLE WHIP Marks. Kent
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`Precision requested that Hula Girls cease and desist its unauthorized use of the DOLE
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`COMPLAINT
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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 7 of 52 Page ID #:7
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`and DOLE WHIP Marks within five (5) days of receipt of the letter. A copy of the
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`demand letter sent to Hula Girls is attached as Exhibit 11.
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`19.
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`In subsequent correspondence between the parties’ counsel, Dole offered
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`to work with Hula Girls on a reasonable timeline to rebrand from DOLE WHIP to
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`DOLE SOFT SERVE, so Hula Girls could market and sell authorized DOLE SOFT
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`SERVE product in compliance with Dole’s Brand Guidelines. But Hula Girls refused
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`to cooperate.
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`20. Despite being put on actual notice of Dole’s rights in the DOLE and
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`DOLE WHIP Marks, and despite Dole’s offer to work with Hula Girls to rebrand to
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`DOLE SOFT SERVE on a reasonable timeline, Hula Girls continues to use Dole’s
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`DOLE and DOLE WHIP Marks on its store signage and menus, as well as on its
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`website materials and social media pages, in connection with dessert-related goods
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`and frozen confections.
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`21. Hula Girls does not have permission to use the DOLE and DOLE WHIP
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`Marks, and its use of the DOLE WHIP Marks violates Dole’s Brand Guidelines.
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`22. Upon information and belief, Hula Girls is using the DOLE and DOLE
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`WHIP Marks for dessert-related goods and frozen confections in a deliberate and
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`willful attempt to draw on the goodwill and commercial magnetism of Dole’s brand.
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`23. Hula Girls’ conduct is causing immediate and irreparable injury to Dole
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`and to its goodwill and reputation, and will continue to both damage Dole and
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`deceive the public unless enjoined by this Court.
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`FIRST CLAIM FOR RELIEF
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`(Federal Trademark Infringement, 15 U.S.C. § 1114(1))
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`24. Dole repeats, realleges, and incorporates the preceding paragraphs as
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`though fully set forth herein.
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`25. Hula Girls’ unauthorized use in commerce of the DOLE and DOLE
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`WHIP Marks in the United States is likely to cause confusion, mistake, or deception
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`as to the source, affiliation, or sponsorship of Hula Girls’ goods. The consuming
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`COMPLAINT
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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 8 of 52 Page ID #:8
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`public is likely to believe that Dole has authorized Hula Girls’ use of the DOLE and
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`DOLE WHIP Marks, when such is not the case.
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`26. Hula Girls’ conduct is willful, intended to reap the benefit of the
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`goodwill of Dole, and violates Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
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`27. Hula Girls’ conduct is causing, and is likely to cause, substantial injury
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`to the public and to Dole, and Dole is entitled to permanent injunctive relief and to
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`recover Dole’s actual damages, an award of Hula Girls’ profits, costs, and reasonable
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`attorneys’ fees under 15 U.S.C. §§ 1116 and 1117. In view of Hula Girls’ willful
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`infringement, the award of such damages or profits should be trebled pursuant to 15
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`U.S.C. § 1117(a).
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`SECOND CLAIM FOR RELIEF
`(Federal Unfair Competition and False Designation of Origin,
`15 U.S.C. § 1125(a))
`28. Dole repeats, realleges, and incorporates the preceding paragraphs as
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`though fully set forth herein.
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`29. Hula Girls’ unauthorized use in commerce of the DOLE and DOLE
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`WHIP Marks in the United States is likely to cause confusion, mistake, or deception
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`as to the source, affiliation, or sponsorship of Hula Girls’ goods. The consuming
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`public is likely to believe that Dole has authorized Hula Girls’ use of the DOLE and
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`DOLE WHIP Marks, when such is not the case.
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`30. Hula Girls’ conduct is willful, intended to reap the benefit of Dole’s
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`goodwill, and violates Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. §
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`1125(a)(1)(A).
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`31. Hula Girls’ conduct is causing, and is likely to cause, substantial injury
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`to the public and to Dole, and Dole is entitled to permanent injunctive relief and to
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`recover Dole’s actual damages, an award of Hula Girls’ profits, costs, and reasonable
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`attorneys’ fees under 15 U.S.C. §§ 1116 and 1117. In view of Hula Girls’ willful
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`infringement, the award of such damages or profits should be trebled pursuant to 15
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`U.S.C. § 1117(a).
`COMPLAINT
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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 9 of 52 Page ID #:9
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`THIRD CLAIM FOR RELIEF
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`(Federal Trademark Dilution, 15 U.S.C. § 1125(c))
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`32.
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` Dole repeats, realleges, and incorporates the preceding paragraphs as
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`though fully set forth herein.
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`33. The DOLE and DOLE WHIP Marks are famous under 15 U.S.C. §
`
`1125(c)(2)(A), in that they are widely recognized by the general consuming public of
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`the United States as a designation of source of Dole’s goods. The DOLE and DOLE
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`WHIP Marks became famous before Hula Girls began making unlawful use in the
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`United States of the DOLE and DOLE WHIP Marks.
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`34. Hula Girls’ unauthorized use of the DOLE and DOLE WHIP Marks is
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`diluting and is likely to dilute by blurring the famous DOLE and DOLE WHIP
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`Marks, in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), by
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`lessening the marks’ capacity to identify and distinguish Dole exclusively as the
`
`source of goods bearing or provided under the famous DOLE and DOLE WHIP
`
`Marks.
`
`35. Hula Girls’ trademark dilution has injured and will continue to injure
`
`Dole in that Dole has suffered and will continue to suffer damages to its reputation
`
`and customer goodwill as a direct and proximate result of Hula Girls’ unlawful
`
`conduct, unless such unlawful conduct is enjoined by this Court. In addition, Hula
`
`Girls has been unjustly enriched by reason of its acts of trademark dilution because it
`
`has obtained the opportunity to earn future sales and profits, as a direct and proximate
`
`result of its unlawful conduct.
`
`36. Dole is entitled to recover all damages sustained by Hula Girls’ actions,
`
`all profits realized by Hula Girls through its unlawful use of the DOLE and DOLE
`
`WHIP Marks, treble damages and/or profits, and an award of reasonable attorney’s
`
`fees and costs against Hula Girls.
`
`//
`
`//
`
`COMPLAINT
`
`- 9 -
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`

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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 10 of 52 Page ID #:10
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`FOURTH CLAIM FOR RELIEF
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`(Common Law Trademark Infringement and Unfair Competition)
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`37. Dole repeats, realleges, and incorporates the preceding paragraphs as
`
`though fully set forth herein.
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`38. Hula Girls’ unauthorized use in commerce of the DOLE and DOLE
`
`WHIP Marks in the United States is likely to cause confusion, mistake, or deception
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`as to the source, affiliation, or sponsorship of Hula Girls’ goods. The consuming
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`public is likely to believe that Dole has authorized Hula Girls’ use of the DOLE and
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`DOLE WHIP Marks, when such is not the case.
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`39. Hula Girls acted with full knowledge of Dole’s use of, and statutory and
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`common law rights to, the DOLE and DOLE WHIP Marks and without regard to the
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`likelihood of confusion of the public created by Hula Girls’ activities.
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`40. Hula Girls’ actions demonstrate an intentional, willful, and malicious
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`intent to trade on the goodwill associated with Dole’s DOLE and DOLE WHIP
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`Marks, and with full knowledge and in conscious disregard of Dole’s rights, to the
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`great and irreparable injury of Dole.
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`41. As well as harming the public, Hula Girls’ conduct as alleged herein has
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`caused and will continue to cause Dole irreparable harm for which there is no
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`adequate remedy at law, and is also causing damage to Dole in an amount which
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`cannot be accurately computed at this time but will be proven at trial.
`
`FIFTH CLAIM FOR RELIEF
`
`(Violation of California Business & Professions Code § 17200)
`
`42. Dole repeats, realleges, and incorporates the preceding paragraphs as
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`though fully set forth herein.
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`43. Hula Girls is making unauthorized commercial use of Dole’s DOLE and
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`DOLE WHIP Marks in a deliberate, willful, intentional and wrongful attempt to trade
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`on Dole’s goodwill, reputation and financial investments in the DOLE and DOLE
`
`WHIP Marks.
`
`COMPLAINT
`
`- 10 -
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`

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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 11 of 52 Page ID #:11
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`44. By reason of Hula Girls’ conduct as alleged herein, Hula Girls has
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`engaged in unlawful, unfair and/or fraudulent ongoing business practices in violation
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`of California Business & Professions Code § 17200.
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`45. As a direct result of Hula Girls’ unfair competition with regard to its
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`unauthorized use of Dole’s DOLE and DOLE WHIP Marks, Hula Girls has
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`unlawfully acquired, and continues to acquire on an ongoing basis, an unfair
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`competitive advantage and has engaged in, and continues to engage in, wrongful
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`business conduct to Hula Girls’ monetary advantage and to the detriment of Dole.
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`46. Hula Girls’ conduct as alleged herein has been undertaken willfully,
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`maliciously, and with full knowledge and in conscious disregard of Dole’s rights.
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`47. Hula Girls’ illegal and unfair business practices are continuing, and
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`injunctive relief pursuant to California Business and Professions Code § 17203 is
`
`necessary to prevent and restrain further violations by Hula Girls.
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`SIXTH CLAIM FOR RELIEF
`
`(California Statutory Trademark Dilution,
`
`California Business & Professions Code § 14247 et seq.)
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`48. Dole repeats, realleges, and incorporates the preceding paragraphs as
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`though fully set forth herein.
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`49. The DOLE and DOLE WHIP Marks are famous in that they are widely
`
`recognized by the general consuming public of California as a designation of the
`
`source of Dole’s goods. The DOLE and DOLE WHIP Marks became famous before
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`Hula Girls’ unlawful use of the DOLE and DOLE WHIP Marks.
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`50. Hula Girls’ willful and knowing use of the DOLE and DOLE WHIP
`
`Marks is diluting and is likely to dilute the distinctive quality of the DOLE and
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`DOLE WHIP Marks, in violation of CAL. BUS. & PROF. CODE § 14247 et seq., by
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`lessening the marks’ capacity to identify and distinguish Dole exclusively as the
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`source of goods bearing or provided under the famous DOLE and DOLE WHIP
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`Marks.
`
`COMPLAINT
`
`- 11 -
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`

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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 12 of 52 Page ID #:12
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`51. Hula Girls’ trademark dilution has injured and will continue to injure
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`Dole in that Dole has suffered and will continue to suffer damage to its reputation and
`
`customer goodwill as a direct and proximate result of Hula Girls’ unlawful conduct,
`
`unless such unlawful conduct is enjoined by this Court. In addition, Hula Girls has
`
`been unjustly enriched by reason of its acts of trademark dilution because it has
`
`obtained the opportunity to earn future sales and profits, as a direct and proximate
`
`result of its unlawful conduct.
`
`52. Dole is entitled to recover all damages sustained by Hula Girls’ actions,
`
`all profits realized by Hula Girls through its unlawful use of the DOLE and DOLE
`
`WHIP Marks, treble damages and/or profits, and an award of reasonable attorneys’
`
`fees and costs against Hula Girls.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Dole requests a permanent injunction, damages, Hula Girls’
`
`profits, costs, attorneys’ fees, and any other appropriate relief, and prays as follows:
`
`1.
`
`That Hula Girls and all of its agents, officers, employees,
`
`representatives, successors, assigns, attorneys, and all other persons acting for, with,
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`by, through, or under authority from Hula Girls, or in concert or participation with
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`Hula Girls and each of its agents, officers, employees, representatives, successors,
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`assigns, or attorneys, be permanently enjoined from:
`
`a.
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`Using Dole’s DOLE and DOLE WHIP Marks, or any other copy,
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`reproduction, or colorable imitation of Dole’s DOLE and DOLE
`
`WHIP Marks, in connection with any goods or services;
`
`b.
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`Using any trademark, trade dress, service mark, name, logo,
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`design or source of designation of any kind on or in connection
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`with any goods or services that are likely to cause confusion,
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`mistake, deception, or public misunderstanding that such goods
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`or services are produced or provided by Dole, are sponsored or
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`authorized by Dole, or are in any way connected or related to
`
`COMPLAINT
`
`- 12 -
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 13 of 52 Page ID #:13
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`Dole;
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`Passing off, palming off, or assisting in palming off, any goods
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`c.
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`or services as those of Dole, or otherwise continuing any and all
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`acts of unfair competition as alleged in this Complaint;
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`d.
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`Effecting any assignments or transfers, forming new entities or
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`associations or utilizing any other device for the purpose of
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`circumventing or otherwise avoiding the prohibitions set forth
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`herein.
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`2.
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`That Hula Girls be ordered to turn over or destroy all advertising and
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`promotional materials, signage, menus, stationery, envelopes, business cards,
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`invoices, and similar materials bearing Dole’s DOLE Mark or DOLE WHIP Marks;
`
`3.
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`That an accounting be ordered and judgment rendered against Hula Girls
`
`for all profits received from its unauthorized use of Dole’s DOLE and DOLE WHIP
`
`Marks or from its unfair competition;
`
`4.
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`That Dole recovers from Hula Girls monetary damages consistent with
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`applicable federal and state law including without limitation, compensation for
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`Dole’s damages, Hula Girls’ profits, or other financial benefits from its actions, all in
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`amounts to be determined at trial;
`
`5.
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`That based on Hula Girls’ knowing, willful, and intentional use of
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`Dole’s DOLE and DOLE WHIP Marks without permission, the damages awarded be
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`trebled and the award of Hula Girls’ profits be enhanced as provided for by 15 U.S.C.
`
`§ 1117(a);
`
`6.
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`That the costs of this action, including Dole’s reasonable attorneys’ fees,
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`be taxed against Hula Girls;
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`7.
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`8.
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`That Dole be awarded pre- and post-judgment interest; and
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`That the Court grant Dole such other and further relief, both general and
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`specific, as the Court may deem just and proper.
`
`//
`
`COMPLAINT
`
`- 13 -
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 14 of 52 Page ID #:14
`
`
`
`DEMAND FOR JURY TRIAL
`
`Dole demands a trial by jury on all issues so triable.
`
`
`
`
`
`DATED: November 23, 2021 Respectfully submitted,
`
`KILPATRICK TOWNSEND & STOCKTON
`LLP
`
`By:
`
`
`/s/ Kollin J. Zimmermann
`Kollin J. Zimmermann, Esq.
`
`Attorneys for Plaintiff
`DOLE PACKAGED FOODS, LLC
`
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`COMPLAINT
`
`- 14 -
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`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 15 of 52 Page ID #:15
`Case 2:21-cv-09195 Document1 Filed 11/23/21 Page 15o0f52 Page ID#:15
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`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 16 of 52 Page ID #:16
`Case 2:21-cv-09195 Document1 Filed 11/23/21 Page 16of52 Page ID#:16
`
`qauited States of Amery,
`Antted States Patent and Trademark Office
`lly
`
`DOLE
`
`Reg. No. 4,587,365
`Registered Aug. 19, 2014
`
`DOLE PACKAGED FOODS, LLC (CALIFORNIA LIMITED LIABILITY COMPANY)
`ONE DOLEDRIVE
`WESTLAKE VILLAGE, CA 91362
`
`Int. Cl.: 30
`
`FOR: FROZEN CONFECTIONS; GRAIN-BASED SNACK FOODS, IN CLASS 30 (US. CL.
`46).
`
`TRADEMARK
`
`TIRST USE 4-30-2011; INCOMMERCE4-30-2011.
`
`PRINCIPAL REGISTER
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIMTO ANY PAR-
`TICULAR FONT, STYLE,SIZE, OR COLOR.
`
`OWNEROF USS. REG. NOS. 1,509,411, 3,375,262 AND OTHERS.
`
`SER. NO. 86-037.074, FILED 8-13-2013.
`
`HEATHER BIDDULPH, EXAMINING ATTORNEY
`
`
`
`Vitctth, Ko Lo
`Deputy Director of the United States
`Patent and Trademark Office
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 17 of 52 Page ID #:17
`Case 2:21-cv-09195 Document1 Filed 11/23/21 Page 17 of52 PageID#:17
`
`
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`
`EXHIBIT 2
`EXHIBIT 2
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 18 of 52 Page ID #:18
`
`Reg. No. 5,169,269
`Registered Mar. 28, 2017
`Int. Cl.: 30
`Trademark
`Principal Register
`
`Dole Packaged Foods, LLC (CALIFORNIA LIMITED LIABILITY COMPANY)
`Suite 400
`3059 Townsgate Road
`Westlake Village, CA 91361
`
`CLASS 30: Frozen confections; Non-dairy frozen confections; Pre-processed mixes for
`making non-dairy frozen confections
`
`FIRST USE 1-1-1997; IN COMMERCE 1-1-1997
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`OWNER OF U.S. REG. NO. 4587365, 4587364, 1509411
`
`SER. NO. 86-760,008, FILED 09-17-2015
`DONALD OLVIN JOHNSON, EXAMINING ATTORNEY
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 19 of 52 Page ID #:19
`Case 2:21-cv-09195 Document1 Filed 11/23/21 Page 19o0f52 Page ID#:19
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
`
`
`
`
`EXHIBIT 3
`EXHIBIT 3
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 20 of 52 Page ID #:20
`Case 2:21-cv-09195 Document1 Filed 11/23/21 Page 20 o0f52 Page ID #:20
`
`ev States of F
`GNwit GnitedStatesPatentandTrademarkMerrylay
`
`DOLE
`
`Reg. No. 4,587,364
`Registered Aug. 19, 2014
`
`DOLE PACKAGED FOODS, LLC (CALIFORNIA LIMITED LIABILITY COMPANY)
`ONE DOLEDRIVE
`WESTLAKE VILLAGE, CA 91362
`
`Int. Cl: 29
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FOR: CANNED OR BOTTLEDFRUITS; DRIED FRUITS; FROZEN FRUITS; FRUIT PUREES;
`NUT AND SEED-BASED SNACK BARS; PROCESSED EDIBLE SEEDS, IN CLASS 29 (US.
`CL. 46).
`
`FIRST USE 12-31-1927; IN COMMERCE 12-31-1927.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIMTO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`OWNEROF U.S. REG. NOS. 1,509,411, 3,375,262 AND OTHERS.
`
`SER. NO. 86-037,054, FILED 8-13-2013.
`
`IEATITER BIDDULPIL EXAMINING ATTORNEY
`
`
`
`Vitctth, Ko Lo
`Deputy Director of the United States
`Patent and Trademark Office
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 21 of 52 Page ID #:21
`Case 2:21-cv-09195 Document1 Filed 11/23/21 Page 210f52 Page ID#:21
`
`ited States of Amery,
`Antted States Patent and Trademark Office
`lly
`
`
`Reg. No. 4,587,385
`Registered Aug. 19, 2014
`
`DOLE PACKAGED FOODS, LLC (CALIFORNIA LIMITED LIABILITY COMPANY)
`ONE DOLEDRIVE
`WESTLAKE VILLAGE, CA 91362
`
`Int. CL: 30
`
`FOR: FROZEN CONFECTIONS; GRAIN-BASED SNACK FOODS, IN CLASS 30 (U.S. CL.
`46).
`
`TRADEMARK
`
`FIRST USE 4-30-2011; IN COMMERCE4-30-2011.
`
`PRINCIPAL REGISTER
`
`OWNEROFU.S. REG. NOS. 1,509,411, 1,568,638, AND 3,375,262.
`
`THE COLOR(S) RED, YELLOW AND BLUEIS/ARE CLAIMED AS A FEATURE OF THE
`MARK.
`
`THE MARK CONSISTS OF THE WORD "DOLE" IN RED LETTERS WITH A YELLOW
`SUNBURST ENCAPSULATED IN THE LEVTER "O" AND A BLUE BAR UNDER ‘THE WORD
`AND EXTENDING THE LENGTH OF THE WORD. THE COLOR WHITE IS USED FOR
`BACKGROUND PURPOSES AND IS NOTA PART OF TITE MARK.
`
`SER. NO. 86-041,014, FILED 8-18-2013.
`
`HEATHER BIDDULPH, EXAMINING ATTORNEY
`
`
`
`Deputy Director of the United States
`Patent and Trademark Office
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 22 of 52 Page ID #:22
`
`Reg. No. 5,832,264
`Registered Aug. 13, 2019
`Int. Cl.: 30
`Trademark
`Principal Register
`
`Dole Packaged Foods, LLC  (CALIFORNIA LIMITED LIABILITY COMPANY)
`Suite 400
`3059 Townsgate Road
`Westlake Village, CALIFORNIA 91361
`
`CLASS 30: frozen confections; non-dairy frozen confections; pre-processed mixes for
`making non-dairy frozen confections
`
`FIRST USE 1-1-2002; IN COMMERCE 1-1-2002
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`No claim is made to the exclusive right to use the following apart from the mark as shown:
`"SOFT SERVE"
`
`SER. NO. 88-213,046, FILED 11-30-2018
`
`

`

`Case 2:21-cv-09195 Document 1 Filed 11/23/21 Page 23 of 52 Page ID #:23
`Case 2:21-cv-09195 Document1 Filed 11/23/21 Page 23 0f52 Page ID #:23
`
`ev States of F
`GNwit GnitedStatesPatentandTrademarkMerrylay
`
`DOLE BANANADIPPERS
`
`Reg. No. 4,032,617
`Registered Sep. 27, 2011
`
`DOLE [FOOD COMPANY, INC. (DELAWARE CORPORATION)
`ONE DOLEDRIVE
`WESTLAKE VILLAGE, CA 91362
`
`Int. CL: 30
`
`FOR: FROZEN CONFECTIONS, IN CLASS 30 (U.S. CL. 46).
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FIRST USE 5