throbber
Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 1 of 24 PageID 1
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`PUBLIX ASSET MANAGEMENT COMPANY
`AND
`PUBLIX SUPER MARKETS, INC.
`
`Plaintiffs,
`
`
`v.
`
`PHARMAPACKS, LLC AND
`PACKABLE HOLDINGS, LLC
`
` Defendants.
`
`
`
`
`
`
`
`
`CASE NO.: ______
`
`INJUNCTIVE RELIEF REQUESTED
`
`DEMAND FOR A JURY TRIAL
`
`
`
`
`
`COMPLAINT
`
`Plaintiffs Publix Asset Management Company and Publix Super Markets, Inc.
`
`(collectively, “Publix”) file this Original Complaint against Defendants Pharmapacks,
`
`LLC and Packable Holdings, LLC for trademark infringement, unfair competition,
`
`and trademark dilution. Publix owns the federally registered Publix family of Single-
`
`P Marks (as that term is defined below), which proximately feature the letter “P” in
`
`sans serif typeface. Defendants have been and continue to infringe on Publix’s
`
`trademarks through their use of a confusingly similar mark, as shown below:
`
`Publix’s Registered Trademark
`
`Defendants’ Infringing Mark
`
`
`
`
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 2 of 24 PageID 2
`
`Publix files this Complaint against Defendants for trademark infringement,
`
`unfair competition, and trademark dilution. Publix seeks injunctive relief and
`
`damages.
`
`PARTIES
`
`1.
`
`Publix Asset Management Company and Publix Super Markets, Inc. are
`
`corporations duly organized and existing under the laws of the State of Florida. Their
`
`principal place of business is in Lakeland, Florida.
`
`2.
`
`Upon information and belief, Defendant Pharmapacks, LLC is a New
`
`York company with an address of 1516 Motor Pkwy, Hauppauge, NY 11788.
`
`3.
`
`Upon information and belief, Defendant Packable Holdings, LLC is a
`
`Delaware company with an address of 1516 Motor Pkwy, Hauppauge, NY 11788.
`
`JURISDICTION AND VENUE
`
`4.
`
`This is a trademark infringement action brought pursuant to the
`
`trademark laws of the United States, known as the Lanham Act, Title 15, United States
`
`Code § 1051 et seq. with a supplemental state law claim
`
`5.
`
`This Court has jurisdiction over the subject matter of this action pursuant
`
`to 15 U.S.C. § 1121, and 28 U.S.C. §§ 1331 and 1338. Further, this Court has
`
`supplemental jurisdiction over the state law claim pursuant to 28 U.S.C. §§ 1338(b)
`
`and 1367.
`
`6.
`
`This Court has personal
`
`jurisdiction over Defendants because
`
`Defendants regularly transact and conduct business in the State of Florida and this
`
`2
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 3 of 24 PageID 3
`
`District and Defendants’ contacts with the State of Florida and this District have been
`
`continuous, systematic, and substantial.
`
`7.
`
`On information and belief, Defendants advertise and market their goods
`
`and services to those within the State of Florida and in this District.
`
`8.
`
`Furthermore, on information and belief, Defendants import, sell, and
`
`distribute their products in the State of Florida and in this District.
`
`9.
`
`This Court’s exercise of jurisdiction over Defendants does not offend
`
`traditional notions of fair play and substantial justice.
`
`10. Pursuant to 28 U.S.C. § 1391(c), Defendants are deemed to reside within
`
`this District for purposes of venue.
`
`11. Venue is proper within this District pursuant to 28 U.S.C. § 1391(b)
`
`because Defendants reside and are doing business in this District. Defendants are using
`
`the infringing marks to advertise their goods and services to individuals and companies
`
`within this District, and a substantial part of the events giving rise to the claims of this
`
`action occurred in this District. Venue is also proper under 28 U.S.C. § 1391(c) because
`
`Defendants are corporate defendants that are subject to personal jurisdiction in this
`
`forum.
`
`PUBLIX AND ITS SINGLE-P TRADEMARKS
`
`12. Founded in 1930 in Winter Haven, Florida, Publix Super Markets, Inc.
`
`is the largest and fastest-growing employee-owned company in the United States.
`
`13. Publix has grown into a Fortune 500 company with more than 1,250
`
`stores, and has more than 225,000 employees.
`
`3
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 4 of 24 PageID 4
`
`14. Publix has over 800 stores across Florida.
`
`15. Publix also has stores in Alabama (81 stores), Georgia (193 stores), North
`
`Carolina (49 stores), South Carolina (64 stores), Tennessee (50 stores), and Virginia
`
`(19 stores).
`
`16. Publix is currently planning to open new stores in Kentucky as well.
`
`17. Publix is one of the 10 largest-volume supermarket chains in the country
`
`with 2019 retail sales of over $38 billion.
`
`18. Publix Asset Management Company is related to Publix Super Markets,
`
`Inc. and owns and manages trademarks that are licensed to Publix Super Markets, Inc.
`
`19. Publix Asset Management Company owns the following design marks
`
`that prominently feature the letter “P” in sans serif type:
`
`Registration Nos.
`
`Mark
`
`1,794,016
`
`4,355,392
`4,844,271
`4,682,412
`4,685,090
`
`4
`
`
`
`
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 5 of 24 PageID 5
`
`Registration Nos.
`
`Mark
`
`4,509,543
`4,851,084
`5,027,224
`
`5,214,253
`
`5,548,835
`
`
`
`
`
`
`
`
`
`20. Copies of the registration certificates for these federally registered marks
`
`are attached as Exhibit A to this Complaint.
`
`21. Each of these registrations for these federally registered marks is and has
`
`been in full force and effect and is valid in all respects.
`
`22. Registration Nos. 1,794,016; 4,355,392; 4,844,271; 4,682,412; 4,685,090;
`
`4,509,543; and 4,851,084 are incontestable under 15 U.S.C. § 1065.
`
`23.
`
`In addition, Publix has common law rights in these and other marks
`
`featuring a single P in sans serif typeface (collectively, the “Single-P Marks”), such as
`
`the following:
`
`5
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 6 of 24 PageID 6
`
`
`
`24. Publix has used and uses the Single-P Marks extensively in connection
`
`with Publix’s goods and services.
`
`25. For example, Publix uses the Single-P Marks in connection with over-
`
`the-counter medicine, health products, vitamins, minerals, herbs, nutritional
`
`supplements, homeopathic remedies, foods and beverages, sundries, cosmetics, skin
`
`and hair products, toiletries, fragrances, personal care products, and medical supplies
`
`for personal use.
`
`26. Publix also uses the Single-P Marks in connection with its pharmacies
`
`and pharmacy-related services, including prescription pharmaceuticals, vaccinations,
`
`“body care specialists” to advise customers on health/wellness supplements, and walk-
`
`in-care.
`
`27. Products and services are offered under the Single-P Marks in more than
`
`1,250 retail grocery stores.
`
`28. Publix also uses the Single-P marks in connection with its ecommerce
`
`operations via its website and mobile apps, including offering home delivery of
`
`products under the Single-P Marks.
`
`6
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 7 of 24 PageID 7
`
`29. The Single-P Marks are the subject of extensive marketing and
`
`advertising in print, television, online, and outdoor advertising and marketing
`
`materials
`
`30. Publix’s Single-P Marks are strong, especially in the states where Publix
`
`has stores. The first of the Single-P Marks was used at least as early as 1972.
`
`31. Publix’s Single-P Marks are registered for (among other things) retail
`
`pharmacy services and retail grocery store services.
`
`32. The products available through Publix’s retail pharmacy and retail
`
`grocery store services under the Single-P marks include over-the-counter medicines,
`
`health products, vitamins, minerals, herbs, nutritional supplements, homeopathic
`
`remedies, foods and beverages, sundries, cosmetics, skin and hair care products,
`
`toiletries, fragrances, personal care products and medical supplies for personal use.
`
`33. Customers are able to shop for these products online using Publix’s
`
`website (at www.publix.com), and home delivery of these products is available.
`
`34. Publix has devoted substantial time, money, and resources marketing,
`
`advertising, and promoting the Single-P Marks. As a result of these efforts and years
`
`of use, Publix has acquired extraordinary goodwill and customer recognition in the
`
`Single-P Marks in connection with Publix’s goods, including health and beauty
`
`products.
`
`35. Publix’s Single-P Marks are valuable financial assets to its business.
`
`Publix has consistently used the Single-P Marks and is entitled to broad and exclusive
`
`rights to use the marks nationwide, including in the State of Florida and this District.
`
`7
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 8 of 24 PageID 8
`
`DEFENDANTS’ UNLAWFUL ACTIVITIES
`
`36. Defendants describe themselves as an enablement platform and retail
`
`seller.
`
`37. Defendants own
`
`and operate
`
`an
`
`ecommerce website
`
`at
`
`www.pharmapacks.com where they offer health and beauty products to consumers.
`
`Below is an image of the home page of their website:
`
`38. Defendants, via their website at www.pharmapacks.com, market and sell
`
`goods directly to consumers, including Florida residents.
`
`39. Defendants are also a third-party seller of products through companies
`
`
`
`such as Amazon.
`
`40. Pharmapacks has stated that it is the largest third-party seller on Amazon.
`
`8
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 9 of 24 PageID 9
`
`41. The Chief Strategy Officer of Pharmapacks describes Defendants as “a
`
`large marketplace seller.”1
`
`42. Via their website at www.pharmapacks.com, and via third-party websites
`
`such as Amazon, Defendants compete with Publix—marketing and selling many of
`
`the same goods to the same consumers.
`
`43. Defendants and Publix offer health and beauty products directly to
`
`consumers.
`
`44.
`
`In fact, Defendants offer many of the same goods to consumers that are
`
`sold in Publix stores.
`
`45. On information and belief, Defendants purchase health and beauty
`
`products wholesale, and then sell those products at a markup via various ecommerce
`
`channels, such as their own website, Amazon, Walmart, and others.
`
`46. Both Defendants and Publix sell their goods directly to consumers
`
`through online channels and provide home delivery.
`
`47. Not only do Defendants compete with Publix via their own website, but
`
`Defendants also compete with Publix by selling products directly to consumers via the
`
`website of Publix competitors, such as Walmart, Amazon, Target, and Kroger, as
`
`illustrated below from page 19 of Defendants’ investor presentation:2
`
`
`1 https://www.youtube.com/watch?v=aT8_LpnNJqI
`2 https://www.sec.gov/Archives/edgar/data/0001828817/000114036121030752/brhc10028753_ex99-
`2.htm
`
`9
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 10 of 24 PageID 10
`
`48.
`
`In connection with its business, Defendants use a logo prominently
`
`featuring a single “P” in sans serif typeface within a circle (the “Infringing Marks”).
`
`49. For example, Defendants use at least the following Infringing Marks:
`
`
`
`
`
`
`
`
`
`10
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 11 of 24 PageID 11
`
`
`
`
`
`
`
`50. The Infringing Marks are used in connection with products such as over-
`
`the-counter medicine, health products, vitamins, minerals, herbs, nutritional
`
`supplements, homeopathic remedies, foods and beverages, sundries, cosmetics, skin
`
`and hair products, toiletries, fragrances, personal care products, and medical supplies
`
`for personal use.
`
`51. Defendants also use the Infringing Marks on their delivery boxes:
`
`11
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 12 of 24 PageID 12
`
`
`
`52. On information and belief, there has been actual confusion caused by
`
`Defendants’ use of the Infringing Marks.
`
`53. On information and belief, Publix and Defendants have received
`
`feedback from consumers commenting on how Defendants’ Infringing Marks are
`
`nearly identical to Publix’s Single-P Marks.
`
`54. Defendants are using the Infringing Marks in connection with the sale,
`
`offering for sale, distribution, and advertising of their goods and services, including
`
`goods and services covered by Publix many of the federal registrations for Publix’s
`
`Single-P Marks.
`
`55. Defendants use the Infringing Marks to market and sell health and beauty
`
`products to consumers, such via their storefront through Amazon’s website:
`
`12
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 13 of 24 PageID 13
`
`56. The Infringing Marks are confusingly similar to Publix’s Single-P Marks,
`
`which are well-established and are used to identify a variety of Publix’s goods and
`
`
`
`services.
`
`57.
`
`In November of 2019, Defendant Pharmapacks filed trademark
`
`application serial no. 88700985 for the following design mark featuring one of the
`
`Infringing Marks (“the ’985 Application”):
`
`
`
`58. While Defendants have filed other trademark applications, the ’985
`
`Application is the first to include a single P within a circle.
`
`59. The ’985 Application was filed in international class 35 for “[o]nline
`
`retail store services featuring over-the-counter medicine, health products, vitamins,
`
`minerals, herbs, nutritional supplements, homeopathic remedies, foods and beverages,
`
`13
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 14 of 24 PageID 14
`
`sundries, cosmetics, skin and hair care products,, toiletries, fragrances, personal care
`
`products and medical supplies for personal use.”
`
`60. Publix, using the Single-P Marks, was and continues to offer the same
`
`goods and services as identified in the ’985 Application, namely “online retail store
`
`services featuring over-the-counter medicine, health products, vitamins, minerals,
`
`herbs, nutritional supplements, homeopathic remedies, foods and beverages, sundries,
`
`cosmetics, skin and hair care products,, toiletries, fragrances, personal care products
`
`and medical supplies for personal use.”
`
`61. Because registration of the mark at issue in the ’985 Application is likely
`
`to harm Publix by causing consumer confusion, Publix opposed registration of the ’985
`
`Application in the Trademark Trial and Appeal Board, Proceeding No. 91264177
`
`(“the Opposition”).
`
`62.
`
`In connection with the Opposition, Publix commissioned a consumer
`
`survey to measure the amount of potential consumer confusion between one of the
`
`Infringing Marks and one of the Publix Single-P Marks.
`
`63.
`
`Specifically, the survey conducted in connection with the Opposition
`
`asked participants questions about the following two logos:
`
`14
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 15 of 24 PageID 15
`
`
`
`64. This survey showed that almost half of the survey participants that were
`
`exposed to these two logos (over 45%) were likely to confuse the Pharmapacks logo
`
`with the Publix Single-P Mark, even though the Pharmapacks logo included the
`
`Pharmapacks name and tag line.
`
`65. When asked why they believed that these two logos were of the same
`
`company, survey participants provided the following explanations:
`
`“They are the same.”
`
`“The p looks similar”
`
`“Because the ‘P’ is the same on both logos”
`
`“While different the logos are basically the same.”
`
`“They both have the P logo”
`
`“They are both publix”
`
`“The ‘P’ is similar”
`
`“The ‘P’ was the same. Just different color”
`
`15
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 16 of 24 PageID 16
`
`“they both look like Publix”
`
`“The P is representative of Publix chain and the second logo simulated
`
`that”
`
`66. On information and belief, Defendants have not conducted their own
`
`consumer survey regarding any of their Infringing Marks as compared to any of
`
`Publix’s Single-P Marks.
`
`67. On information and belief, Defendant Pharmapacks was aware of
`
`Publix’s Single-P Marks before they adopted and began using their Infringing Marks.
`
`68. Defendants are not endorsed by, sponsored by, or affiliated with Publix
`
`any way.
`
`69. Defendants do not have Publix’s permission to use any of the Single-P
`
`Marks.
`
`70. Defendants’ continued unauthorized use of marks that are confusingly
`
`similar to the Single-P Marks is willful and intentional.
`
`71.
`
`In 2021, Defendants have expanded their use of the Infringing Marks by
`
`deciding to continue using a confusingly similar P logo with their new brand name
`
`Packable.
`
`72. As a result of Defendants’ unauthorized use of the Infringing Marks, and
`
`their refusal to cease use, Publix has suffered and will continue to suffer damages and
`
`irreparable harm to its goodwill and reputation, as well as its ability to distinguish its
`
`products and services from those of Defendants in the minds of consumers.
`
`16
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 17 of 24 PageID 17
`
`COUNT I
`FEDERAL TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT
`
`73. Publix incorporates by reference the allegations in paragraphs 1 through
`
`72.
`
`74. Defendants’ use of the Infringing Marks in connection with their business
`
`is likely to cause confusion, deception, and mistake by creating the false and
`
`misleading impression that Defendants’ goods are made by or distributed by Publix,
`
`or that Defendants’ are associated or connected with Publix, or Defendants’ have the
`
`sponsorship, endorsement, or approval of Publix.
`
`75. Defendants’ unauthorized use in commerce of the Infringing Marks
`
`violates Section 32 of the Lanham Act (15 U.S.C. § 1114).
`
`76. Defendants’ activities of marketing, distributing, and selling products
`
`and/or services in connecting with the Infringing Marks are causing and, unless
`
`enjoined by this Court, will continue to cause a likelihood of confusion and deception
`
`of members of the trade and public, and, additionally, injury to Publix’s goodwill and
`
`reputation as symbolized by Publix’s Single-P Marks, for which Publix has no
`
`adequate remedy at law.
`
`77. Defendants’ actions demonstrate an intentional, willful, and malicious
`
`intent to cause confusion and/or trade on the goodwill associated with Publix’s Single-
`
`P Marks.
`
`78. Defendants’ infringement is causing and will continue to cause great and
`
`irreparable harm to Publix.
`
`17
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 18 of 24 PageID 18
`
`79. Defendants caused and are likely to continue causing substantial injury
`
`to the public and to Publix.
`
`80. Publix is entitled to injunctive relief and to recover Defendants’ profits,
`
`actual damages, enhanced profits and damages, costs, and reasonable attorneys’ fees
`
`under 15 U.S.C. §§ 1114, 1116, and 1117.
`
`COUNT II
`FEDERAL UNFAIR COMPETITION
`
`81. Publix incorporates by reference the allegations in paragraphs 1 through
`
`72.
`
`82. Defendants’ unauthorized use in commerce of the Infringing Marks as
`
`alleged herein is likely to deceive consumers as to the origin, source, sponsorship, or
`
`affiliation of Defendants’ goods and/or services, and is likely to cause consumers to
`
`believe, contrary to facts, that Defendants’ goods and/or services are sold, authorized,
`
`endorsed, or sponsored by Publix, or that Defendants are in some way affiliated with
`
`or sponsored by Publix.
`
`83. Upon information and belief, Defendants’ conduct is willful and is
`
`intended to and is likely to cause confusion, mistake, or deception as to the affiliation,
`
`connection, or association of Defendants with Publix.
`
`84. Defendants’ conduct as alleged herein constitutes unfair competition in
`
`violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`85. Defendants’ activities have caused and, unless enjoined by this Court,
`
`will continue to cause a likelihood of confusion and deception of members of the trade
`
`18
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 19 of 24 PageID 19
`
`and public, and, additionally, injury to Publix’s goodwill and reputation as symbolized
`
`by Publix’s Single-P Marks, for which Publix has no adequate remedy at law.
`
`86. Publix is entitled to injunctive relief and to recover Defendants’ profits,
`
`actual damages, enhanced profits and damages, costs, and reasonable attorneys’ fees
`
`under 15 U.S.C. §§ 1125(a), 1116, and 1117.
`
`COUNT III
`COMMON-LAW TRADEMARK INFRINGEMENT
`
`87. Publix incorporates by reference the allegations in paragraphs 1 through
`
`72.
`
`88. Publix owns all rights (including all common-law rights), title, and
`
`interest in and to the Single-P Marks.
`
`89. Defendants’ use of the Infringing Marks in connection with its goods and
`
`services in Florida and elsewhere creates a likelihood of confusion and has caused or
`
`will cause actual confusion in the minds of the consuming public as to the source of
`
`the goods and/or services.
`
`90. Defendants’ use of the Infringing marks is likely to deceive consumers as
`
`to the origin, source, sponsorship, or affiliation of Defendants’ goods and/or services,
`
`and is likely to cause consumers to believe, contrary to facts, that Defendants’ goods
`
`and/or services are sold, authorized, endorsed, or sponsored by Publix, or that
`
`Defendants are in some way affiliated with or sponsored by Publix.
`
`91. Defendants’ acts constitute trademark infringement in violation of the
`
`common law of the State of Florida.
`
`19
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 20 of 24 PageID 20
`
`92. Defendants’ actions demonstrate an intentional, willful, and malicious
`
`intent to trade on the goodwill associated with Publix’s Single-P Marks.
`
`93. On information and belief, Defendants intend to continue and expand
`
`their infringing actions, unless restrained by this Court. The actual and/or likely
`
`confusion resulting from Defendants’ use of the Infringing Marks in connection with
`
`Defendants’ goods and services causes irreparable harm to Publix that cannot be
`
`adequately compensated with damages. Publix is therefore entitled to preliminary and
`
`permanent injunctive relief as requested herein.
`
`94. Publix has sustained damage as a direct and proximate result of
`
`Defendants’ infringement in an amount to be proven at trial.
`
`COUNT IV
`DILUTION UNDER SECTION 43(C)THE LANHAM ACT
`
`95. Publix incorporates by reference the allegations in paragraphs 1 through
`
`72.
`
`96. Based at least on the distinctiveness of Publix’s Single-P Marks, the
`
`duration and extent of use of the Single-P Marks, the duration and extent of advertising
`
`featuring the Single-P Marks, the geographic area in which Publix advertises and offers
`
`its goods and services under the Single-P Marks, the nature of the trade channels used
`
`to market the Publix’s goods and services under the Single-P Marks compared to the
`
`trade channels through which Defendants’ sell, intend to sell, and are likely to sell their
`
`products and services, the degree of public recognition of the Single-P Marks, and
`
`Publix’s numerous federal registrations for the Single-P Marks, the Single-P Marks
`
`20
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 21 of 24 PageID 21
`
`have become famous, as that term is used in Section 43(c) of the Lanham Act, and
`
`have been famous for years.
`
`97. Defendants’ actions described above, all occurring after the Single-P
`
`Marks became famous, including Defendants’ proposed rebranding and expansion of
`
`use of the Infringing Marks, are likely to cause dilution of the famous Single-P Marks
`
`in violation of Section 43(c) of the Lanham Act, 15 U.S.C.A. § 1125(c).
`
`98. Publix has sustained damage as a direct and proximate result of
`
`Defendants’ dilution in an amount to be proven at trial.
`
`DEMAND FOR JURY TRIAL
`
`99. Publix demands a jury trial of all issues so triable.
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, Publix respectfully requests that this Court enter an order
`
`awarding Publix the following relief:
`
`a.
`
`A judgment that Defendants’ along with their officers, agents, servants,
`
`affiliates, employees, related companies, attorneys, and those in privity
`
`or acting in concert with Defendants, be preliminarily and permanently
`
`enjoined from the following:
`
`1.
`
`Using the Infringing marks and any confusing and deceptively
`
`similar mark to the Single-P Marks alone or in combination with
`
`any words, names, or symbols, to offer products and/or services
`
`similar to those provided by Publix;
`
`21
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 22 of 24 PageID 22
`
`2.
`
`3.
`
`4.
`
`5.
`
`Using any confusingly similar mark or engaging in any other
`
`conduct that is likely to cause confusion, cause mistake, deceive,
`
`or otherwise mislead the public into believing that Defendants or
`
`their products or services are in some way connected to Publix;
`
`Engaging in any activity that infringes Publix’s rights in its Single-
`
`P Marks;
`
`Engaging in any activity that further dilutes Publix’s rights in its
`
`Single-P Marks; and
`
`Engaging in any activity constituting unfair competition with
`
`Publix;
`
`b.
`
`That pursuant to the powers granted this Court under 15 U.S.C. § 1118,
`
`the Court issue an order directing Defendants to cease all use of the
`
`Infringing Marks, including by removing all Infringing Marks from all
`
`websites, social media accounts, and also destroying all products,
`
`promotional
`
`items, clothing, displays,
`
`labels,
`
`signs, circulars,
`
`packages/packaging, wrappers, advertisements, signs, catalogs, and
`
`other materials in Defendants’ possession, custody, or control that
`
`display or use the Infringing Marks;
`
`c.
`
`That Publix recovers
`
`its damages resulting
`
`from Defendants’
`
`infringement, unfair competition, and other wrongful conduct described
`
`herein;
`
`22
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 23 of 24 PageID 23
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`i.
`
`That Publix recovers its damages for injury to the Single-P Marks
`
`resulting from Defendants’ use of the Infringing Marks;
`
`That Publix recovers Defendants’ wrongful profits, if any, from
`
`Defendants’ infringement, unfair competition, and other wrongful
`
`conduct described herein;
`
`That Defendants be directed to file with this Court within thirty (30) days
`
`after the entry of any injunction in this cause a written statement under
`
`oath setting forth in detail the manner in which Defendants have
`
`complied with the injunction;
`
`That, pursuant to the provisions of 15 U.S.C. §1117, reasonable
`
`attorneys’ fees be awarded to Publix.
`
`That Publix recovers its costs in this action as well as pre- and post-
`
`judgment interest; and
`
`That Publix recovers such other and further relief as the Court may deem
`
`appropriate.
`
`
`
`
`
`23
`
`

`

`Case 8:21-cv-02404-MSS-TGW Document 1 Filed 10/13/21 Page 24 of 24 PageID 24
`
`
`
`
`
`October 13, 2021
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`HOLLAND & KNIGHT LLP
`
` /s/ Anthony J. Palermo
`Justin S. Cohen
` PHV application forthcoming
` State Bar No. 24078356
` Justin.Cohen@hklaw.com
`Lead Counsel (per Local Rule 2.02)
`Dina W. McKenney
` PHV application forthcoming
` State Bar No. 24092809
`Dina.McKenney@hklaw.com
`HOLLAND & KNIGHT LLP
`One Arts Plaza
`1722 Routh St., Suite 1500
`Dallas, Texas 75201
`214.969.1700
`214.969.1751 (Fax)
`
`
`Anthony J. Palermo
`Florida Bar No. 98716
`anthony.palermo@hklaw.com
`HOLLAND & KNIGHT LLP
`100 North Tampa Street, Suite 4100
`Tampa, FL 33602
`Telephone: (813) 227-8500
`Facsimile: (813) 229-0134
`
`ATTORNEYS FOR PLAINTIFFS
`PUBLIX ASSET MANAGEMENT
`COMPANY AND PUBLIX SUPER
`MARKETS, INC.
`
`
`24
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket