Case 1:14-cv-01564-WYD-MJW Document 1 Filed 06/03/14 USDC Colorado Page 1 of 22
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
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`Civil Action No. ___________________________
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`THE HERSHEY COMPANY and
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`HERSHEY CHOCOLATE & CONFECTIONERY CORPORATION,
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`
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` Plaintiffs,
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`
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` v.
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`TINCTUREBELLE, LLC and
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`TINCTUREBELLE MARIJUANKA LLC,
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` Defendants.
`
`
`
`COMPLAINT FOR MONEY DAMAGES AND EQUITABLE RELIEF
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`
`
`ACTION FOR TRADEMARK INFRINGEMENT, TRADEMARK DILUTION, FALSE
`DESIGNATION OF ORIGIN, UNFAIR COMPETITION AND PASSING OFF
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`Plaintiffs The Hershey Company and its subsidiary, Hershey Chocolate & Confectionery
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`Corporation (together referred to as “Hershey”), for their complaint against defendants
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`TinctureBelle, LLC and TinctureBelle Marijuanka LLC (together, “TinctureBelle” or
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`“defendants”) for trademark infringement, trademark dilution, false designation of origin, unfair
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`competition and passing off, state as follows:
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`INTRODUCTION
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`1.
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`This action is brought by Hershey to stop the unauthorized use of a number of
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`famous and well-known Hershey trademarks to sell chocolate candy that contains cannabis
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`and/or tetrahydrocannabinol. Hershey’s REESE’S®, HEATH®, ALMOND JOY® and YORK®
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`
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`1
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
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`Civil Action No. ___________________________
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`
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`THE HERSHEY COMPANY and
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`
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`HERSHEY CHOCOLATE & CONFECTIONERY CORPORATION,
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`
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` Plaintiffs,
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`
`
`
`
`
`
` v.
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`TINCTUREBELLE, LLC and
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`TINCTUREBELLE MARIJUANKA LLC,
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` Defendants.
`
`
`
`COMPLAINT FOR MONEY DAMAGES AND EQUITABLE RELIEF
`
`
`
`ACTION FOR TRADEMARK INFRINGEMENT, TRADEMARK DILUTION, FALSE
`DESIGNATION OF ORIGIN, UNFAIR COMPETITION AND PASSING OFF
`
`Plaintiffs The Hershey Company and its subsidiary, Hershey Chocolate & Confectionery
`
`Corporation (together referred to as “Hershey”), for their complaint against defendants
`
`TinctureBelle, LLC and TinctureBelle Marijuanka LLC (together, “TinctureBelle” or
`
`“defendants”) for trademark infringement, trademark dilution, false designation of origin, unfair
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`competition and passing off, state as follows:
`
`INTRODUCTION
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`1.
`
`This action is brought by Hershey to stop the unauthorized use of a number of
`
`famous and well-known Hershey trademarks to sell chocolate candy that contains cannabis
`
`and/or tetrahydrocannabinol. Hershey’s REESE’S®, HEATH®, ALMOND JOY® and YORK®
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`
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`1
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`products are among the top-selling candy brands in the United States, and both the brand names
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`and the trade dresses used in connection with these brands are extremely famous and well-known
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`among United States consumers. Defendants, who are well aware of the fame and popularity of
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`these Hershey products and marks, are manufacturing and selling cannabis- and/or
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`tetrahydrocannabinol-laced chocolate and candy products using names, marks and designs that
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`are knock-offs of Hershey’s famous REESE’S, HEATH, ALMOND JOY and YORK trademarks
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`and trade dresses, in order to increase sales of defendants’ cannabis and tetrahydrocannabinol
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`candy products, draw additional attention to their products, confuse consumers as to the source
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`of their products, call to consumers’ minds Hershey’s famous and beloved brands, and otherwise
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`to trade on the goodwill of Hershey and its brands.
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`2.
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`In doing so, defendants are not merely causing a likelihood of consumer
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`confusion with Hershey’s marks and products, and diluting and tarnishing Hershey’s marks by
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`creating an association in consumers’ minds with products containing cannabis and/or
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`tetrahydrocannabinol. Defendants’ unauthorized conduct also creates a genuine safety risk with
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`regard to consumers, including children, who may not distinguish between Hershey’s candy
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`products and defendants’ cannabis- and/or tetrahydrocannabinol-based products, and may
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`inadvertently ingest defendants’ products thinking that they are ordinary chocolate candy.
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`NATURE AND BASIS OF THE ACTION
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`3.
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`This is an action for trademark infringement, trademark dilution, false designation
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`of origin, unfair competition and other unlawful conduct under the Lanham Act, 15 U.S.C.
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`§§ 1051 et seq., and state law, seeking preliminary and permanent injunctive relief, disgorgement
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`of profits, compensatory damages, punitive damages and other relief relating to defendants’
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`2
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`manufacture, distribution and sale of products that infringe and dilute certain well-known
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`trademarks owned or licensed by Hershey.
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`4.
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`Hershey is a leading manufacturer of chocolate and confectionery products in the
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`United States and worldwide. For many years, Hershey has manufactured and sold REESE’S,
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`HEATH, ALMOND JOY and YORK candy and confections using the trademarks and trade
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`dresses alleged herein.
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`5.
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` As set forth more fully below, Hershey owns or licenses the exclusive rights to
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`use the various REESE’S, HEATH, ALMOND JOY and YORK trademarks and trade dresses
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`alleged herein. Notwithstanding Hershey’s exclusive rights, defendants manufacture, distribute
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`and sell cannabis and cannabis-related products using packaging, trademarks, and terminology
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`that infringe those trademarks and trade dresses. Defendants are intentionally trading on the
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`established goodwill of Hershey and its various products and brands in order to enhance the sales
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`and profits associated with their Infringing Products.
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`6.
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`Defendants’ actions have caused, and will continue to cause, consumer confusion
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`as to the source, sponsorship, and/or affiliation of their goods and services as being connected
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`with Hershey. Moreover, defendants’ actions have caused, and will continue to cause, the
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`dilution of Hershey’s trademarks and trade dresses, including, but not limited to, the Hershey
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`Trademarks.
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`7.
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`Unless such acts of trademark infringement, trademark dilution, false designation
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`of origin, unfair competition and passing off are enjoined, plaintiffs will suffer irreparable injury
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`for which there is no adequate remedy at law.
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`3
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`PARTIES
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`8.
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`Plaintiff The Hershey Company is a Delaware corporation with an address at 100
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`Crystal A Drive, Hershey, PA 17033. The Hershey Company is a major manufacturer and seller
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`of chocolate, confectionery and snack products, which are sold throughout the United States and
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`this judicial district. The Hershey Company is the exclusive United States licensee or
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`sublicensee of the trademarks and trade dresses asserted by plaintiffs in this lawsuit.
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`9.
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`Plaintiff Hershey Chocolate & Confectionery Corporation (“HCCC”) is a
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`Delaware corporation with an address at 4860 Robb Street, Suite 204, Wheat Ridge, CO 80033.
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`HCCC is a wholly-owned subsidiary of The Hershey Company, the owner of the REESE’S-
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`related trademarks and trade dresses asserted by plaintiffs in this lawsuit and the exclusive
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`United States licensee of the HEATH-related trademarks and trade dresses asserted by plaintiffs
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`in this lawsuit.
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`10.
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`Hershey is informed and believes that defendant TinctureBelle, LLC is a
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`Colorado limited liability corporation, doing business in Colorado, with a registered address at
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`62 Mount View Lane, Unit B, Colorado Springs, CO 80907.
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`11.
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`Hershey is informed and believes that defendant TinctureBelle Marijuanka LLC is
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`a Colorado limited liability corporation, doing business in Colorado, with a registered address at
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`36 North Fabrication #C, Pueblo West, CO 81007.
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`12.
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`On information and belief, TinctureBelle Marijuanka LLC and TinctureBelle,
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`LLC are affiliated companies and/or are under common ownership and control, and are acting in
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`concert with one another in connection with the conduct described herein.
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`4
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`JURISDICTION AND VENUE
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`13.
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`The Court has subject matter jurisdiction over Hershey’s federal law claims for
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`trademark and trade dress infringement, trademark and trade dress dilution, false designation of
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`origin, and unfair competition under Section 39 of the Lanham Act, 15 U.S.C. § 1121, and under
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`28 U.S.C. §§ 1331 and 1338(a) & (b). The Court has subject matter jurisdiction over Hershey’s
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`state law claims under 28 U.S.C. § 1367.
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`14.
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`The Court has personal jurisdiction over defendants because, upon information
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`and belief, defendants are present and doing business in the State of Colorado and this judicial
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`district either directly or through their agents, and have distributed their infringing products to,
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`and offered their infringing products for sale in, the State of Colorado and this judicial district.
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`15.
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`Venue is appropriate in this Court pursuant to 28 U.S.C. § 1391 because
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`defendants are subject to personal jurisdiction in this judicial district and because a substantial
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`part of the events giving rise to plaintiffs’ claims occurred in this judicial district.
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`ALLEGATIONS COMMON TO ALL CLAIMS
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`HERSHEY AND ITS FAMOUS AND VALUABLE BRANDS AND TRADEMARKS
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`16.
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`The Hershey Company is a world famous producer of, among other things,
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`chocolate, candy, and snack products.
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`17.
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`Founded in 1894, Hershey is one of the oldest and largest chocolate
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`manufacturers in the United States and the largest chocolate manufacturer in North America.
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`18.
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`Since its founding, Hershey has had a commitment to quality and safety. As a
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`result of this commitment, individuals and families the world over trust Hershey and its various
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`brands as signifying safe and delicious treats for people of all ages. No product manufactured,
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`5
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`distributed or sold by Hershey contains, or has ever contained, cannabis and/or
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`tetrahydrocannabinol.
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`19.
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`Among Hershey’s famous and well-known brands in the United States are the
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`following:
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`The REESE’S
`Peanut Butter Cup
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`The HEATH Bar
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`The ALMOND JOY
`Bar
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`The YORK
`Peppermint Patty
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`20.
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`Hershey is the owner or exclusive licensee of numerous federally registered
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`trademarks relating to the foregoing brands, including ALMOND JOY, REESE’S, HEATH and
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`YORK, as well as registered and unregistered design marks and trade dresses for use in
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`6
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`connection with candy as well as other goods and services.
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`21.
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`The following is a non-exhaustive list of federally-registered Hershey trade
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`dresses and trademarks owned by or exclusively licensed to Hershey, including the relevant dates
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`of first use and covered goods:
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`Reg. No.
`(Date of
`First use)
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`3601728
`(12-31-1958)
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`0925609
`(12-15-1969)
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`3631320
`(02-28-2003)
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`4,330,229
`(2008)
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` 2,256,226
`(12-15-1969)
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`Mark
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`Goods and Services
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`
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`Peanut butter, peanut butter toppings
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`Candy, candy bars, confectionery
`chips for baking, peanut butter
`confectionery chips
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`Peanut butter cups
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`Candy, confectionery chips for baking
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`Candy
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`
`
`
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`(orange-colored background
`covering the entirety of the
`packaging for the goods)
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`candy and confectionery chips for
`baking with peanut butter as the
`characterizing flavor or one of various
`characterizing flavors
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`7
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`0443802
`(12-10-1945)
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`4125366
`(05-31-2005)
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`1404302
`(03-01-1932)
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`3840907
`(01-23-1989)
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` 564,557
`(01-28-1922)
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`1,644,557
`(01-28-1922)
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`Candy
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`Candy
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`HEATH
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`HEATH
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`Candy and ice cream
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`Candy for use as an ingredient in ice
`cream and baked products
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`PEPPERMINT PATTIE MINT
`(CANDY)
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`candy
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`(See Exhibit A, registration certificates.) The foregoing federally registered trademarks, along
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`with the unregistered trademarks and trade dresses owned by or exclusively licensed to Hershey
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`pertaining to these brands (including without limitation the trademarks and trade dresses depicted
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`in Paragraph 19, supra) are individually and collectively referred to herein as the “Hershey
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`Trademarks.”
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`22.
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`Each of the Hershey Trademarks has been continuously used in commerce in the
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`United States since at least as early as 2006, and in some cases as early as 1922.
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`23.
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`Each of the Hershey Trademarks was used in United States commerce prior to
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`any infringing use that is the subject of this litigation. Hershey has priority of use over
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`defendants with respect to the Hershey Trademarks.
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`24.
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`Each of the Hershey Trademarks has been extensively advertised and used
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`throughout the United States. The Hershey Company has spent hundreds of millions of dollars
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`on advertising for products sold under these marks, and has sold billions of dollars of products
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`under the Hershey Trademarks.
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`25.
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`Through substantial use, sales and promotion of products bearing the Hershey
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`Trademarks by Hershey and its predecessors in interest, each of the Hershey Trademarks has
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`become extremely well known and famous for use in connection with candy and confectionery
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`products, has become distinctive of these products and has come to identify and indicate the
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`source of these products to consumers and the trade.
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`26.
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`In light of the distinctiveness of the Hershey Trademarks, as well as the duration
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`and extent of Hershey’s sales, marketing and use of these marks throughout the United States,
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`the Hershey Trademarks are distinctive and famous among consumers in the State of Colorado
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`and throughout the United States.
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`27.
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`Each of the federally registered Hershey Trademarks is incontestable and in full
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`force and effect.
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`28.
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`The Hershey Trademarks have become immensely valuable due, at least in part,
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`to the significant goodwill and recognition earned as a result of Hershey’s long history of sales
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`and successful advertising efforts under these marks.
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`DEFENDANTS’ UNLAWFUL AND INFRINGING USE OF THE
`HERSHEY TRADEMARKS TO SELL CANNABIS PRODUCTS
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`29.
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`Upon information and belief, defendants are engaged in the business of, among
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`other things, manufacturing, packaging, distributing and selling chocolate and confectionery
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`products that include, contain, or incorporate cannabis and/or tetrahydrocannabinol, including
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`under the Hershey Trademarks or marks that constitute confusingly similar and dilutive
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`imitations of the Hershey Trademarks, throughout the State of Colorado.
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`30.
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` Upon
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`information and belief, defendants have manufactured, packaged,
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`distributed and sold several lines of the Infringing Products described in the foregoing paragraph
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`since at least as early as January 2014.
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`31.
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`Defendants’ Infringing Products include, but are not limited to the following
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`products shown in the left column of the following table (with examples of some corresponding
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`Example of Hershey Products
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`Hershey’s products shown in the right column):
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`Defendants’ Infringing
`Marks and Products
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`Examples of online advertising and promotion of some of defendants’ Infringing Products are
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`attached as Exhibit B.
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`32.
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`Defendants have not received permission from Hershey to use the Hershey
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`Trademarks, or marks confusingly similar to the Hershey Trademarks.
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`33.
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`Defendants openly and intentionally have offered for sale and sold the Infringing
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`Products in commerce.
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`34.
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`Defendants’ trademarks and trade dresses for their Infringing Products are
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`extremely similar to the Hershey Trademarks, as shown above, and are used by defendants in
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`connection with chocolate and confectionery products, the same products on which the Hershey
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`Trademarks are used.
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`35.
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`Accordingly, defendants’ sale of the Infringing Products inevitably will cause
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`confusion among consumers as to the origin, source or sponsorship of the products offered by
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`defendants, and cause many potential purchasers to mistakenly believe that such products are the
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`same as those offered by Hershey, or that they are in some way authorized or licensed by the
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`source of the products sold under the Hershey Trademarks.
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`36.
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`Upon information and belief, defendants have willfully and intentionally engaged
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`in the foregoing activities with the knowledge that the Hershey Trademarks were used, owned,
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`registered and/or licensed by Hershey and that the advertisement, sale and marketing of the
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`Infringing Products was unauthorized.
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`37.
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`Upon information and belief, defendants’ unauthorized advertisement, sale and
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`marketing of products using the Hershey Trademarks, or marks confusingly similar to the
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`Hershey Trademarks, is, and has been, a deliberate attempt to trade on the valuable trademark
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`rights and goodwill established by Hershey in the Hershey Trademarks.
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`38.
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`Upon information and belief, defendants engaged in the foregoing actions with
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`the intent that defendants’ use of the Hershey Trademarks, or marks confusingly similar to the
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`Hershey Trademarks, would cause confusion, mistake or deception among members of the
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`general public.
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`39.
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`Defendants have improperly traded on, and profited from, the goodwill and
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`reputation established by Hershey in the Hershey Trademarks.
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`COUNT I: TRADEMARK INFRINGEMENT
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`40.
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`Hershey incorporates by reference the allegations contained in paragraphs 1-39
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`above as if separately repeated here.
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`41.
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`The marks and designs used by defendants, as described above, are confusingly
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`similar to, and are colorable imitations of, the federally registered and unregistered Hershey
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`Trademarks, and infringe those respective trademarks.
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`42.
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`Defendants’ unauthorized use of the aforementioned marks and designs is likely
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`to cause confusion and mistake and to deceive the public as to the approval, sponsorship, license,
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`source or origin of defendants’ products.
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`43.
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`Defendants’ conduct as described herein violates 15 U.S.C. § 1114(1), which
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`specifically forbids defendants to:
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`use in commerce any reproduction, counterfeit, copy, or colorable
`a.
`imitation of a registered mark in connection with the sale, offering for sale,
`distribution, or advertising of any goods or services on or in connection with
`which use is likely to cause confusion, or to cause mistake, or to deceive, or
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`b.
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`reproduce, counterfeit, copy, or colorably imitate a registered mark and
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`13
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`apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs,
`prints, packages, wrappers, receptacles or advertisements intended to be used in
`commerce upon or in connection with the sale, offering for sale, distribution, or
`advertising of goods or services on or in connection with which such use is likely
`to cause confusion, or to cause mistake, or to deceive.
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`Defendants’ conduct also constitutes common law trademark infringement and
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`44.
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`trade dress infringement.
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`45.
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`Defendants’ wrongful acts were committed with knowledge that such imitation,
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`as described herein, was intended to cause confusion, reverse confusion, mistake, or deception.
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`46.
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`As a result of defendants’ conduct, Hershey has been damaged and is entitled to
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`damages, including but not limited to, defendants’ profits from the sale of all infringing goods,
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`actual damages, statutory damages, treble damages, corrective advertising damages, costs of
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`litigation, and attorneys’ fees.
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`47.
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`Hershey has been, and will continue to be, damaged by defendants’ infringement
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`of the Hershey Trademarks, damage that cannot fully be measured or compensated in economic
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`terms. Such irreparable harm will continue unless defendants’ acts are restrained and/or enjoined
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`during the pendency of this action and thereafter.
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`COUNT II: FALSE DESIGNATION OF ORIGIN
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`48.
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`Hershey incorporates by reference the allegations contained in paragraphs 1-39
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`above as if separately repeated here.
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`49.
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`By their unauthorized use of the marks and designs described above, defendants
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`have infringed the Hershey Trademarks, falsely designated the origin of their products, and
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`competed unfairly with plaintiffs, all in violation of Section 43(a) of the Lanham Act, 15 U.S.C.
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`§ 1125(a).
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`50.
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`Hershey has been damaged and/or is likely to be damaged by the wrongful
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`conduct of defendants.
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`51.
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`Defendants’ violations of 15 U.S.C. § 1125(a) entitle Hershey to recover
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`damages, including but not limited to, defendants’ profits from the sale of all infringing goods,
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`actual damages, treble damages, corrective advertising damages, litigation costs, and attorneys’
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`fees.
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`52.
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`Hershey has been, and will continue to be, damaged by defendants’ actions of
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`false designation of origin, damage that cannot fully be measured or compensated in economic
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`terms. Such irreparable harm will continue unless defendants’ acts are restrained and/or enjoined
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`during the pendency of this action and thereafter.
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`COUNT III: DILUTION
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`53.
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`Hershey incorporates by reference the allegations contained in paragraphs 1-39
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`above as if separately repeated here.
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`54.
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`As a result of many decades of use, promotion, advertising, and sales, the Hershey
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`Trademarks are distinctive and famous within the meaning of Section 43(c) of the Lanham Act,
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`15 U.S.C. § 1125(c), are famous in the State of Colorado, and were distinctive and famous prior
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`to the date of defendants’ conduct challenged herein.
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`55.
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`Defendants’ conduct, as described above, is likely to dilute and is diluting the
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`distinctive quality of the famous Hershey Trademarks, in that defendants’ challenged marks and
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`trade dresses are likely to create and have created an association between defendants’ marks and
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`trade dresses and the famous Hershey Trademarks, which impairs the distinctiveness of those
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`famous marks and lessens the capacity of those famous marks to identify and distinguish
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`products marketed and sold by plaintiffs under those marks.
`
`56.
`
`Defendants’ actions also have tarnished and are likely to tarnish the Hershey
`
`Trademarks and the goodwill associated therewith.
`
`57.
`
`Upon information and belief, defendants willfully intended to trade on Hershey’s
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`reputation and to cause the dilution of the Hershey Trademarks in violation of the Lanham Act,
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`15 U.S.C. § 1125.
`
`58.
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`Hershey has been, and will continue to be, damaged by defendants’ dilution of the
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`Hershey Trademarks, damage that cannot fully be measured or compensated in economic terms.
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`Defendants’ actions have damaged, and will continue to damage, Hershey’s business, market,
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`reputation, and goodwill, and may discourage current and potential customers from dealing with
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`Hershey. Such irreparable harm will continue unless defendants’ acts are restrained and/or
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`enjoined during the pendency of this action and thereafter.
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`COUNT IV: UNFAIR COMPETITION
`
`59.
`
`Hershey incorporates by reference the allegations contained in paragraphs 1-39
`
`above as if separately repeated here.
`
`60.
`
`Defendants’ unlawful and unauthorized use of the Hershey Trademarks, or marks
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`confusingly similar to the Hershey Trademarks, constitutes unfair competition with Hershey in
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`violation of state law. Defendants’ conduct was, and continues to be, designed to cause
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`confusion in the public mind as to the source and origin of the Infringing Products.
`
`61.
`
`Defendants’ conduct was, and continues to be, calculated to cause damage to
`
`Hershey in its lawful business and has been done with the unlawful purpose of causing such
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`damage without right or justifiable cause.
`
`
`
`16
`
`
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`Case 1:14-cv-01564-WYD-MJW Document 1 Filed 06/03/14 USDC Colorado Page 17 of 22
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`
`
`62.
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`Defendants’ conduct as described herein has directly and proximately caused
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`Hershey to incur substantial monetary damages.
`
`63.
`
`Defendants have acted willfully and maliciously and with full knowledge of the
`
`adverse effect of their wrongful conduct upon Hershey and with conscious disregard for the
`
`rights of Hershey.
`
`64.
`
`Defendants’ unfair competition entitles Hershey to recover damages including,
`
`but not limited to, defendants’ profits from the sale of the infringing products, actual damages,
`
`corrective advertising damages, costs of suit, and attorneys’ fees.
`
`65.
`
`Hershey has been, and will continue to be, damaged by defendants’ actions of
`
`unfair competition, damage that cannot fully be measured or compensated in economic terms.
`
`Such irreparable harm will continue unless defendants’ acts are restrained and/or enjoined during
`
`the pendency of this action and thereafter.
`
`COUNT V: COLORADO CONSUMER PROTECTION
`C.R.S. §§ 6-1-101 ET SEQ
`
`Hershey incorporates by reference the allegations contained in paragraphs 1-39
`
`66.
`
`above as if separately repeated here.
`
`67.
`
`Defendants, in the course of their regular business, have knowingly passed off the
`
`Infringing Products as originating from, having been sourced from, or being affiliated with
`
`Hershey.
`
`68.
`
`Defendants, in the course of their regular business, have, by selling, promoting,
`
`advertising, and marketing the Infringing Products, knowingly made a false representation as to
`
`the source, sponsorship, or approval of the Infringing Products by Hershey.
`
`69.
`
`Defendants, in the course of their regular business, have, by selling, promoting,
`
`
`
`17
`
`
`
`Case 1:14-cv-01564-WYD-MJW Document 1 Filed 06/03/14 USDC Colorado Page 18 of 22
`
`
`
`advertising, and marketing the Infringing Products, knowingly made a false representation as to
`
`their affiliation, connection, or association with Hershey, thereby significantly and negatively
`
`impacting the general consuming public and potential purchasers of Hershey’s goods.
`
`70.
`
`Absent injunctive relief, defendants are likely to continue offering for sale,
`
`selling, advertising, and promoting the Infringing Products. Such acts will cause continued and
`
`irreparable harm to Hershey.
`
`71.
`
`72.
`
`The aforementioned conduct was, and is currently being, carried out in bad faith.
`
`Defendants’ violations of C.R.S. §§ 6-1-101 et seq. entitle Hershey to recover
`
`damages including, but not limited to, actual damages, attorneys’ fees, and treble damages.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Hershey seeks the following relief:
`
`a.
`
`A judgment that defendants have:
`
`
`
`(i)
`
`Violated 15 U.S.C. § 1114 and other statutory and common law authority
`
`
`
`
`
`
`
`by infringing upon the Hershey Trademarks; and
`
`
`
`
`
`(ii)
`
`Violated 15 U.S.C. § 1125(a) and other statutory and common law
`
`authority by falsely designating the origin of goods or engaging in false or misleading
`
`descriptions or representations of fact with respect to the origin of goods in a manner likely to
`
`cause confusion, mistake or deception among consumers as to the affiliation, connection or
`
`association of defendants and the Infringing Products with Hershey; and
`
`
`
`
`
`(iii) Violated 15 U.S.C. § 1125(c) and other statutory and common law
`
`authority by diluting the Hershey Trademarks and damaging Hershey and its associated brands,
`
`and
`
`
`
`18
`
`
`
`Case 1:14-cv-01564-WYD-MJW Document 1 Filed 06/03/14 USDC Colorado Page 19 of 22
`
`
`
`(iv)
`
`Engaged in unfair competition by causing confusion in the minds of
`
`consumers and general public as to the source and sponsorship of goods sold by
`
`defendants; and
`
`
`
`
`
`(iv)
`
`Engaged in violations of C.R.S. §§ 6-1-101 and other statutory and
`
`common law authority by unfairly competing with Hershey; and
`
`
`
` b.
`
`That, pursuant to 15 U.S.C. § 1116, defendants and their owners, members,
`
`partners, officers, directors, agents, servants, employees, representatives, licensees, subsidiaries,
`
`manufacturers and distributors, jointly and severally, be enjoined throughout the world during
`
`the pendency of this action, and permanently thereafter from:
`
`
`
`
`
`
`
`
`
`(i)
`
`Infringing on the Hershey Trademarks in any manner;
`
`(ii) Manufacturing, marketing, advertising, selling, promoting, licensing,
`
`exhibiting or displaying any product or service using the Hershey Trademarks, the marks, and
`
`trade dresses and designs of defendants described herein, or any confusingly similar marks, trade
`
`dresses or designs; and
`
`
`
`
`
`(iii) Using any false description, representation, or designation, or otherwise
`
`engaging in conduct that is likely to create an impression that defendants’ goods are endorsed or
`
`authorized by Hershey or any related company, are sponsored by Hershey or any related
`
`company, or are connected in any way with Hershey or any related company; and
`
`
`
`
`
`(iv) Using the Hershey Trademarks, the marks, and trade dresses and designs
`
`of defendants described herein, or any confusingly similar marks, trade dresses or designs, in
`
`promotional literature or materials, including those posted on the Internet.
`
`
`
`
`
`
`
`(v)
`
`Holding themselves out as a licensee or otherwise authorized users of the
`
`19
`
`
`
`Case 1:14-cv-01564-WYD-MJW Document 1 Filed 06/03/14 USDC Colorado Page 20 of 22
`
`
`
`Hershey Trademarks; and
`
`
`
`
`
`(vi) Using the Hershey Trademarks, or any marks, trade dresses or designs
`
`confusingly similar to the Hershey Trademarks, in any manner whatsoever;
`
`
`
`c.
`
`That, pursuant to 15 U.S.C. § 1117 and state law, Hershey be awarded such
`
`damages as are available under the Lanham Act and state law, including but not limited to actual
`
`damages, statutory damages, defendants’ profits and treble damages;
`
`
`
`d.
`
`Ordering an accounting of all gains, profits, savings and advantages realized by
`
`defendant from its aforesaid acts of trademark infringement, trademark dilution, false
`
`designation of origin, and unfair competition and other violations of federal and state law, and
`
`awarding treble profits pursuant to 15 U.S.C. § 1117(a) on the ground that defendants engaged in
`
`its wrongful acts with knowledge or bad faith or under other circumstances warranting treble
`
`profits;
`
`
`
`e.
`
`That this case be declared an exceptional case pursuant to 15 U.S.C. § 1117 and
`
`state law, because of the willful and deliberate nature of defendants’ acts of trademark and trade
`
`dress infringement, trademark and trade dress dilution, false designation of origin, and unfair
`
`competition, entitling plaintiffs their reasonable attorneys’ fees;
`
`
`
`f.
`
`That plaintiffs be awarded their costs and expenses of this action;
`
`g.
`
`Awarding plaintiffs punitive damages in an amount to be determined by the trier
`
`of fact for defendants’ willful and knowing trademark infringement and unfair competition,
`
`pursuant to the common law; and
`
`
`
`h.
`
`Ordering defendants to recall from all chains of distribution all goods, product
`
`packaging, product displays, promotional materials, advertisements, commercials, infomercials
`
`
`
`20
`
`
`
`Case 1:14-cv-01564-WYD-MJW Document 1 Filed 06/03/14 USDC Colorado Page 21 of 22
`
`
`
`and other items, the dissemination by defendant of which would violate the injunction herein
`
`requested;
`
`i.
`
`Ordering defendants to deliver up for destruction any and all goods, product
`
`packaging, product displays, promotional materials, advertisements, commercials and other
`
`items in the possession, custody or control of defendants which, if sold, displayed, or used,
`
`would violate the injunction herein granted, and to disable all web sites to the extent they contain
`
`any content, the display or use of which would violate the injunction herein requested;
`
`
`
`j.
`
`That defendants be required to assign and transfer to Hershey the rights to any
`
`domain name that includes or is confusingly similar to or dilutive of any of the Hershey
`
`Trademarks;
`
`
`
`k.
`
`That Hershey be awarded its corrective advertising damages and all other
`
`damages arising from the unlawful and unauthorized advertisements and publications related to
`
`the Infringing Products;
`
`
`
`l.
`
`Ordering defendants to pay for and cause to be disseminated to each distributor
`
`and reseller of defendants’ Infringing Products a notice advising said persons of defendants’ acts
`
`of trademark infringement and dilution, false designation of origin, and unfair competition and
`
`advising of the issuance and content of the injunction herein requested;
`
`
`
`m.
`
`Ordering that, pursuant to Section 34(a) of the Lanham Act, 15 U.S.C. § 1116(a),
`
`defendants shall serve upon plaintiffs within thirty (30) days after service on defendants of an
`
`order granting an injunction, or
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