throbber
Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 1 of 24
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`CASE No.
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`v.
`
`Plaintiff,
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`Hard Rock Café International (USA), Inc.
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`
`
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`Hard Rock Hemp, LLC and Myra Suzan
`Chapman,
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`
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`Defendant.
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`COMPLAINT AND DEMAND FOR TRIAL BY JURY
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`Plaintiff Hard Rock Café International (USA), Inc., through its counsel, hereby
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`submits this Complaint against Defendants Hard Rock Hemp, LLC and Myra Suzan
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`Chapman, an individual, and alleges as follows:
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`JURISDICTION AND VENUE
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`1.
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`This is an action in which the Plaintiff is seeking pecuniary and injunctive
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`relief from acts of Defendants arising under the trademark and unfair competition laws of
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`the United States and the State of Florida, including (1) Trademark Infringement under 15
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`U.S.C. § 1114 of the Lanham Act; (2) Trademark Infringement, False Designation of
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`Origin and Unfair Competition under 15 U.S.C. § 1125(a) of the Lanham Act;
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`(3) Trademark Dilution under 15 U.S.C. § 1125(c) of the Lanham Act; (4) Violation of the
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`Florida Deceptive and Unfair Trade Practices Act (Fla. Stat. § 501.204 et seq.); and
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`(5) Violation of the Florida Anti-Dilution Statute (Fla. Stat. § 495.151 et seq.). Plaintiff
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`seeks, among other things, damages, enhanced monetary relief, attorneys’ fees and costs,
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 2 of 24
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`and injunctive relief to enjoin Defendants from engaging in the unlawful acts
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`described herein.
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`2.
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`Jurisdiction is proper in this District pursuant to 28 U.S.C. §§ 1331, 1332 and
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`1338(a) and (b), and 15 U.S.C. §§ 1116 and 1121. The matter in controversy exceeds the
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`sum of $75,000, exclusive of interest and costs, and is between citizens of different States.
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`This Court also has supplemental jurisdiction over the state law claims asserted herein
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`under 28 U.S.C. § 1367(a).
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`3.
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`This Court has personal jurisdiction over the Defendants because Defendants
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`advertise and offer good and services, including the goods at issue in this Complaint, to the
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`State of Florida and this District, and derive substantial revenue from interstate or
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`international commerce. In addition, Defendants have committed tortious acts causing
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`injury within the State while regularly doing or soliciting business in the State, and/or
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`should reasonably expect its tortious acts to have consequences in the State.
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`4.
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`Jurisdiction is proper in this Court because, among other things, upon
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`information and belief it will likely that after a reasonable opportunity for further
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`investigation or discovery, the evidence will show that Defendants conduct purposeful
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`activity directed at or within the state of Florida, and it has contacts with, customers in, or
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`does business in this District.
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`5.
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`Further, Plaintiff’s valuable marks and good will are being injured in this
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`District, and upon information and belief, residents in this District are likely to be confused
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`by the acts of Defendants.
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 3 of 24
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`6.
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`Venue is proper in the Southern District of Florida pursuant to 28
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`U.S.C. §§ 1391(b) and (c) because Defendants are subject to personal jurisdiction in
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`this District.
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`PARTIES
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`7.
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`Plaintiff Hard Rock Café International (USA), Inc. (hereinafter “Plaintiff” or
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`“Hard Rock”), is a Florida corporation with its principal place of business located at 5701
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`Stirling Road, Davie, Florida, 33314. Hard Rock is one of the most well-known brands
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`operating in this District, including its world-famous Seminole Hard Rock Hotel & Casino
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`in Hollywood, Florida.
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`8.
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`Upon
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`information and belief, Defendant Hard Rock Hemp, Inc.
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`(hereinafter “Defendant” or “Hard Rock Hemp”), is a South Carolina company, with its
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`principal place of business at 683 W. Gate Road, Pickens, South Carolina 29671.
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`9.
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`Upon information and belief, Defendant Myra Suzan Chapman is an
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`individual and owner of Hard Rock Hemp, and in her individual capacity, applied to
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`register with the United States Patent and Trademark Office (“USPTO”) the mark HARD
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`ROCK HEMP, discussed in more detail below. Defendant Chapman is a citizen and
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`resident of South Carolina.
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`10. Defendant Hard Rock Hemp, Inc. and Defendant Myra Suzan Chapman may
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`herein collectively be referred to as “Defendants.”
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`PLAINTIFF AND ITS FAMOUS MARKS
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`11. Hard Rock operates, manages, licenses, and/or franchises a diverse portfolio
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`of restaurants, hotels, resorts, casinos, and live entertainment venues internationally. There
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 4 of 24
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`are over 200 Hard Rock properties in over 70 countries, which includes 178 Hard Rock
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`Cafés, 24 Hard Rock Hotels, 10 Hard Rock Casinos, and 7 Hard Rock Live entertainment
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`venues.
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`12. Hard Rock expends substantial sums in advertising and promotional efforts
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`for its products and services in promotion of the Hard Rock brand. Hard Rock also benefits
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`from an extraordinary degree of unsolicited media coverage in the United States. On top
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`of this, Hard Rock’s internet and social media marketing is extensive, including use on
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`Hard Rock websites, as well as posts on social media such as Facebook, Twitter, and
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`Instagram, amongst others.
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`13.
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`For 50 years, Hard Rock has been one of the most iconic and famous brands
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`in the world. The first Hard Rock restaurant was opened on June 14, 1971, in London by
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`two Americans, Peter Morton and Isaac Tigrett, as a tribute to the many unique and varied
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`musicians since the rock ‘n roll era began in the 1940s and 1950s. The restaurant was
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`hugely successful and new locations opened regularly all over the world.
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`14.
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`In the 1990s, Hard Rock began opening hotels, casinos, and further
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`expanding in the hospitality space, becoming an industry leader and ubiquitous as an
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`exciting destination for its guests. At these locations and on-line, Hard Rock offers Hard
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`Rock-branded clothing and accessories, and many other goods and services.
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`15. Hard Rock operates, maintains, licenses, and/or franchises a variety of
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`restaurants, hotels, casinos, and entertainment venues such as the Seminole Hard Rock
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`Hotel & Casino, the Hard Rock Stadium, and Hard Rock Live concert and event venues.
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`4
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 5 of 24
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`16. Hard Rock owns one of the most universally recognized brands in the world,
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`including trademarks for HARD ROCK, HARD ROCK CAFE, HARD ROCK HOTEL,
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`HARD ROCK CASINO, HARD ROCK LIVE, ROCK SPA, and many other registered
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`marks (collectively referred to as the “HARD ROCK Marks”).
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`17.
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`The HARD ROCK Marks consist of over 2,000 U.S. and international
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`registered trademarks, and all of Hard Rock’s restaurants, hotels, casinos, websites, spas,
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`and related goods include one or more of HARD ROCK Marks. Hard Rock owns the entire
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`portfolio of intellectual property relating to the term “Hard Rock,” including, but not
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`limited to, trademarks related to the words “Hard Rock,” the iconic logo and various
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`variations of the term “Hard Rock”. Many of the marks are incontestable under 15 U.S.C.
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`§ 1065.
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`18.
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`Such marks include the following registered United States trademarks:
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`Mark
`HARD ROCK CAFE
`
`Reg. No.
`1397180
`
`Registered
`June 10, 1986
`
`Goods/Services
`Class 42: restaurant services
`
`HARD ROCK CAFE
`
`1504904
`
`September 20, 1988
`
`Class: 25: t-shirts, sweatshirts, polo
`shirts, sport shirts, jackets, hats, caps,
`belts
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`HARD ROCK HOTEL
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`1909483
`
`August 1, 1995
`
`Class: 42: hotel services
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`HARD ROCK HOTEL
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`2029855
`
`January 14, 1997
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`HARD ROCK HOTEL
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`2029870
`
`January 14, 1997
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`Class 9: sunglasses and decorative
`magnets
`Class: 21: beverage glassware
`Class: 34: cigarette lighters not of
`precious metal and matchbooks
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`Class: 03: hair shampoo, hair conditioner
`and bath gel
`Class: 24: beach towels
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`HARD ROCK HOTEL
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`2031803
`
`January 21, 1997
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`Class: 41: casino services
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 6 of 24
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`Mark
`HARD ROCK HOTEL
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`Reg. No.
`2038394
`
`Registered
`February 18, 1997
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`HARD ROCK LIVE
`
`2349579 May 16, 2000
`
`HARD ROCK LIVE
`
`2373803
`
`August 1, 2000
`
`HARD ROCK
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`2478328
`
`August 14, 2001
`
`Goods/Services
`Class: 25: sweatshirts, T-shirts, tank tops,
`jackets, suspenders, bathrobes, dresses,
`socks, hats, shorts, pants, nightshirts,
`bandannas, boxer shorts, bolo ties,
`bathing suits, and belts
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`Class: 41: entertainment, namely, live
`music concerts
`
`Class: 42: Food preparation, restaurants
`and contract food services
`
`Class: 25: clothing, namely, t-shirts, polo
`shirts, sweatshirts, sport shirts, caps, hats
`and jackets, belts
`Class: 35: retail store services featuring
`clothing, pins, photographs, artwork and
`jewelry
`Class: 41: entertainment, namely, live
`music concerts
`Class: 42: restaurant, bar and take-out
`food services
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`HARD ROCK LIVE
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`2561989
`
`April 16, 2002
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`Class: 25: apparel, namely-t-shirts
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`HARD ROCK HOTEL
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`3520591
`
`October 21, 2008
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`HARD ROCK HOTEL &
`CASINO
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`3601548
`
`April 7, 2009
`
`Class: 35: Real estate marketing services
`in the field of condominium hotels
`
`Class: 41: Casino and gaming services;
`entertainment services, namely, the
`presentation of live music performances
`and recorded music
`Class: 43: Restaurant, bar and prepared
`food take-out restaurant services; hotel
`services; resort lodging services; cocktail
`lounge services
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`HARD ROCK COUTURE
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`3753187
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`February 23, 2010
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`Class: 25: T-shirts
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`HARD ROCK HOTEL &
`CASINO
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`3787984 May 11, 2010
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`Class: 25: Caps; Hats; Jackets; Polo
`shirts; T-shirts
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`HARD ROCK RISING
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`4227440
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`October 16, 2012
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`HARD ROCK REWARDS
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`4343279 May 28, 2013
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`Class: 41: Entertainment services in the
`nature of arranging and staging music
`contests
`
`Class: 36: Customer loyalty program
`services for commercial, promotional and
`advertising purposes featuring rewards in
`the form of coupons, discounts, credits,
`and vouchers for food, lodging,
`merchandise and other products and
`services offered at or through any Hard
`Rock branded location
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 7 of 24
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`Mark
`HARD ROCK RECORDS
`
`Reg. No.
`4369222
`
`Registered
`July 16, 2013
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`HARD ROCK ROCKSINO
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`4506556
`
`April 1, 2014
`
`Goods/Services
`Class: 35: Promotion of performing
`artists, musical bands and musical artists
`Class: 41: Entertainment, namely, live
`performances by musical bands and
`musical artists; Entertainment, namely,
`live music concerts
`
`Class: 41: Entertainment services in the
`nature of lottery slot gaming services;
`casino services
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`HARD ROCK ENERGY
`DRINK
`
`4606455
`
`September 16, 2014
`
`Class: 32: Energy drinks
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`HARD ROCK
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`5129135
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`January 24, 2017
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`Class: 04: Candles
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`HARD ROCK HEALS
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`5167804 March 21, 2017
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`Class: 36: Charitable fundraising services
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`HARD ROCK STADIUM
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`5188352
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`April 18, 2017
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`HARD ROCK
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`5277635
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`August 29, 2017
`
`HARD ROCK KAZOO
`PANDA
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`6081443
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`June 16, 2020
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`HARD ROCK CELLAR
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`6246267
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`January 12, 2021
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`HARD ROCK'N DICE
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`6296280 March 16, 2021
`
`HARD ROCK ONLINE
`SPORTSBOOK
`
`6325569
`
`April 20, 2021
`
`Class: 35: Promoting sports competitions
`and events for others
`Class: 43: Arena services, namely,
`providing general purpose facilities for
`sports, concerts, conventions and
`exhibitions
`
`Class: 35: Promoting sports competitions
`and events for others
`Class: 43: Arena services, namely,
`providing general purpose facilities for
`sports, concerts, conventions and
`exhibitions
`
`Class: 14: Jewelry; Ornamental lapel pins
`Class: 28: Plush toys
`
`Class: 35: Retail store services featuring
`wine and spirits
`
`Class: 41: Entertainment services,
`namely, casino gaming featuring a
`modified craps game; entertainment
`services, namely, casino gaming; betting
`services
`
`Class: 41: Entertainment services,
`namely, providing games of chance via
`the Internet; Entertainment in the nature
`of providing transactional sports betting
`and wagering services, whether for bets
`placed in advance of a sporting event or
`during the sporting event games; Gaming
`services in the nature of casino gaming
`and online sports betting services;
`Providing an on-line computer game in
`the field of sports
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 8 of 24
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`
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`19.
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`The HARD ROCK Marks are protected by federal statute and state common
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`law and are strongly associated with Hard Rock due to their lengthy and prominent use.
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`20. As a result of decades of continuous and exclusive use, extensive amounts of
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`advertising, publicity, and unsolicited media coverage, the HARD ROCK Marks have
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`become famous among the general consuming public of the United States as a whole, and
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`have become symbols of vast consumer goodwill uniquely associated with Hard Rock, and
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`are of inestimable value.
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`21. Hard Rock has used its HARD ROCK Marks continuously and exclusively
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`since 1984 in the United States, both on its own behalf and through its licensees.
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`22.
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`The HARD ROCK Marks are at the heart of Hard Rock’s business. The
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`HARD ROCK Marks identify high-quality goods and services originating exclusively from
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`Hard Rock, and Hard Rock has expended significant efforts to control how its Hard Rock
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`Marks are offered.
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`23.
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`For example, Hard Rock carefully limits who operates its Hard Rock Hotels,
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`and it demands a certain standard of quality from itself and its partners who operate those
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`hotels. Hard Rock is very concerned about anyone who imitates the HARD ROCK marks
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`or who misleads the public to believe that they are staying at a Hard Rock Hotel or property,
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`or using or otherwise engaging with a Hard Rock product or service that can dilute and
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`tarnish the valuable HARD ROCK Marks.
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`24. Members of the public and media associate the HARD ROCK Marks
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`exclusively with Hard Rock and the quality goods and services provided. As a result, the
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`HARD ROCK Marks have become an important asset of Hard Rock, and have come to
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`represent Hard Rock’s goodwill, reputation, and success.
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`DEFENDANT’S WRONGFUL ACTS
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`25.
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`Through a website located at www.hardrockhemp.com, Defendants offer and
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`sell various products and provides information for music festivals and musicians.
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`26. Defendants’ website is accessible to residents of Florida and this District.
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`27. A screenshot of its website is below:
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 10 of 24
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`28. On such website, defendants offer various hemp and CBD-based products,
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`including salves, gummies, creams, oils, dog treats, coffee, and lollipops. Below, for
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`example, is a cream offered for sale by Defendants.
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`
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`29. Upon information and belief, such goods do, or would be likely to cause,
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`confusion with the goods sold by Hard Rock.
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`30. Hard Rock Hemp also promotes bands and music venues. See the following
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`screen shots from Defendants’ website promoting musical venues and artists:
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`31. Hard Rock Hemp’s goods and services are similar to or related to the goods
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`and services offered by Hard Rock, and sold by Hard Rock at its spas and gift shops. For
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`12
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 13 of 24
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`example, the following are Hard Rock-branded soap, shampoo, conditioner, gel,
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`and lotion:
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`32. One of the drop-down menus of Defendants website is for “Yesterdaze
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`Records”. It is not clear what association there is between Yesterdaze Records and Hard
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`Rock Hemp. However, the “Yesterdaze Records” drop-down on Hard Rock Hemp’s
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`13
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 14 of 24
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`website promotes “One of the Largest Collections of Retail & Private Music Memorabilia
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`on the East Coast”.
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`
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`33.
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`The promotion of music and artists also come within the scope of Hard
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`Rock’s business and reputation.
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`34. Hard Rock Hemp’s promotion of memorabilia collections creates even
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`further confusion with Hard Rock.
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`35. Hard Rock’s music memorabilia archive includes over 80,000 items, and is
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`the
`
`largest private collection of Rock and Roll memorabilia
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`in
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`the world
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`(https://en.wikipedia.org/wiki/Hard_Rock_Cafe). Indeed, the late pop artist Andy Warhol
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 15 of 24
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`is said to have commented that the Hard Rock Café is known as the “Smithsonian of Rock
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`’N Roll”.
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`36. Hard Rock’s skin and haircare products, and music promotion services, are
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`the subject of United States trademark registrations, including, for example the following:
`
`Mark
`
`Registration
`No:
`
`HARD ROCK HOTEL
`
`2,029,870
`
`2,029,866
`
`
`
`HARD ROCK RECORDS 4,369,222
`
`HARD ROCK
`
`2,478,328
`
`Goods
`Class 3: hair shampoo, hair
`conditioner and bath gel
`Class 24: beach towels.
`Class 3: hair shampoo, hair
`conditioner and bath gel
`Class 24: beach towels
`Class: 35: Promotion of
`performing artists, musical
`bands and musical artists
`Class: 41: Entertainment,
`namely, live performances by
`musical bands and musical
`artists; Entertainment, namely,
`live music concerts
`Class: 25, 35, 42 [miscellaneous
`goods and services]
`Class: 41: entertainment,
`namely, live music concerts
`
`
`37. Defendants’ advertisements of products and services in the same class as
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`those of Hard Rock is likely to confuse the public as to the origin of Defendants’ products
`
`and services, or the connection, association, or sponsorship of Defendants’ products and
`
`services with those offered by Hard Rock.
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`38. On or about June 10, 2019, Defendant Chapman filed an application with the
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`USPTO (the “Application”) to register the mark HARD ROCK HEMP for the following
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`goods and/or services:
`
`Hard Rock Hemp is a music themed company selling and promoting quality
`hemp products for medicinal, health, and well being with an emphasis on
`working with doctors and scientists to further the study of hemp products for
`medicinal use as well as healthy supplements.
`
`39.
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`In such Application, Defendant Chapman stated that she was the owner of
`
`the HARD ROCK HEMP mark.
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`40. Defendant Chapman stated in the Application that the first use of the HARD
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`ROCK HEMP mark anywhere was “at least as early as April 29, 2019”.
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`41.
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`The Application was examined at the USPTO, and the goods were amended
`
`to the following:
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`Non-medicated skin and body lotions containing CBD and ingredients solely
`derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration
`of not more than 0.3 percent on a dry weigh basis.
`
`42. On or about March 16, 2021, the HARD ROCK HEMP mark was published
`
`under Rule 12(a) of the USPTO procedures. Such procedures provide the opportunity for
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`the public and trademark owners to oppose to the registration of a mark. As noted in court
`
`decisions, “[t]he opposition procedure is intended to remedy oversight or error.” In re Shell
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`Oil Co., 992 F.2d 1204, 1209 (Fed. Cir. 1993); “[I]nter parties proceedings are intended to
`
`be a backstop for the examination process.” In re Viterra Inc., 671 F.3d 1358, 1365 (Fed.
`
`Cir. 2012); Miss Universe L.P. v. Community Marketing Inc., 82 U.S.P.Q. 2d 1562, 1571
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`16
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 17 of 24
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`T.T.A.B. 2007) (holding that the decision of the trademark attorney during the application
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`“is not dispositive or even relevant” to whether the mark should be registered).
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`43. Accordingly, Hard Rock timely requested extensions of time to oppose the
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`HARD ROCK HEMP application, which requests were granted.
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`44. On March 19, 2021, Hard Rock wrote to the counsel for Defendant Chapman
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`and demanded that Defendants cease and desist from use of the HARD ROCK HEMP
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`mark, and withdraw the application.
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`45. While there were subsequent discussions between counsel, no agreement was
`
`reached concerning Defendants’ use of the HARD ROCK HEMP mark. And to date,
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`Defendants have continued to sell goods and offer services under the HARD ROCK HEMP
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`trademark.
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`46. Hard Rock Hemp has provided a disclaimer on its website that states, “Hard
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`Rock Hemp is Independently Owned & Operated and is not affiliated with any other Hard
`
`Rock companies”. Upon information and belief, such a disclaimer is likely to cause some
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`consumers to be confused as to the affiliation of Hard Rock Hemp and Hard Rock. This
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`disclaimer also acknowledges that Defendants are aware of “other Hard Rock companies”
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`and that consumers may question the affiliation.
`
`47. Defendants also state on their website that, “Hard Rock Hemp was approved
`
`a trademark by the United States Patent & Trademark Office, Washington, D.C. (March
`
`2021)”. Such a statement is not correct, and may confuse consumers that the United States
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`Patent & Trademark Office has approved the use of the HARD ROCK HEMP mark. As
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`noted above, all that occurred on March 2021 is that the United States Patent & Trademark
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`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 18 of 24
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`Office published the HARD ROCK HEMP mark for opposition. The United States Patent
`
`& Trademark Office has not approved the mark; and it is still subject to whatever
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`proceeding may arise in the opposition process.
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`FIRST CLAIM FOR RELIEF
`Trademark Infringement
`(Violation of 15 U.S.C. § 1114 of the Lanham Act)
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`48. Hard Rock repeats and realleges the allegations set forth in the foregoing
`
`paragraphs as if fully set forth herein.
`
`49.
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`In connection with its advertising and sale of products, Defendants uses the
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`mark HARD ROCK HEMP.
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`50. Defendants use the mark HARD ROCK HEMP in connection with
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`advertising and sale of goods that overlap with the goods and services that Hard Rock
`
`provides in association with the HARD ROCK Marks.
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`51. Defendants’ goods and services are provided through the same channels of
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`trade and to the same classes of customers as are the goods and services that Hard Rock
`
`provides in connection with the HARD ROCK Marks.
`
`52. Defendants began use of the mark HARD ROCK HEMP long after Hard
`
`Rock had established rights to the HARD ROCK trademarks.
`
`53. Upon information and belief, Defendants’ advertisement using the mark
`
`HARD ROCK HEMP creates confusion to the public as to the source or association of
`
`Defendants’ products.
`
`54. Defendants’ use of the HARD ROCK HEMP mark is likely to cause
`
`confusion, mistake, and deception among the general purchasing public as to the origin of
`
`18
`
`

`

`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 19 of 24
`
`Defendants’ goods and services, and is likely to deceive the public into believing that the
`
`goods and services being offered by Defendants originate from, are associated with, or are
`
`otherwise authorized by Hard Rock.
`
`55. Defendants’ conduct has caused and will continue to cause substantial
`
`damage to Hard Rock including its businesses in Florida and within this District, unless
`
`enjoined by this Court.
`
`56. Defendants’ conduct as set forth above constitutes infringement of Hard
`
`Rock’s federally registered trademarks under 15 U.S.C. § 1114.
`
`57. Upon information and belief, Defendants’ conduct, including continuing
`
`infringement with knowledge of Hard Rock’s trademark, and continuing such use after
`
`notice of actual confusion, constitutes knowing, purposeful and willful infringement of
`
`Hard Rock’s trademark rights.
`
`58. Hard Rock is without adequate remedy at law.
`
`SECOND CLAIM FOR RELIEF
`Trademark Infringement, False Designation of Origin and Unfair Competition
`(Violation of 15 U.S.C. § 1125(a) of the Lanham Act)
`
`59. Hard Rock repeats and realleges the allegations set forth in the foregoing
`
`paragraphs as if fully set forth herein.
`
`60. Defendants’ use of the HARD ROCK HEMP mark in connection with
`
`offering its goods and services constitutes false designation of origin and false description
`
`or representation that tends to falsely describe and represent its services as in some way
`
`sponsored, authorized, approved, or affiliated with those of Hard Rock.
`
`19
`
`

`

`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 20 of 24
`
`61. Upon information and belief, current and future customers of Hard Rock,
`
`viewing Defendants’ website, are likely to be confused that Hard Rock Hemp is sponsored,
`
`authorized, approved, or affiliated with Hard Rock, and/or the goods and services provided
`
`by Defendants have the same quality, recognition, experience, and success as the Hard
`
`Rock companies and properties.
`
`62. Defendants’ false misrepresentation constitutes acts of unfair competition in
`
`violation of Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)).
`
`63. Upon information and belief, discovery will show that the aforesaid acts of
`
`Defendants were committed willfully, knowingly, maliciously, and/or in conscious
`
`disregard of its legal obligations to Hard Rock.
`
`64.
`
`The aforesaid conduct of Defendants has caused, and unless restrained by
`
`this Court will continue to cause, immediate, great, and irreparable injury to Hard Rock’s
`
`property and business.
`
`65. Hard Rock has no adequate remedy at law and, if Defendants’ activities are
`
`not enjoined, Hard Rock will continue to suffer irreparable harm and injury to its goodwill
`
`and reputation.
`
`THIRD CLAIM FOR RELIEF
`Trademark Dilution
`(Violation of 15 U.S.C. § 1125(c) of the Lanham Act)
`
`66. Hard Rock repeats and realleges the allegations set forth in the foregoing
`
`paragraphs as if fully set forth herein.
`
`20
`
`

`

`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 21 of 24
`
`67.
`
`Plaintiff’s HARD ROCK Marks were famous long before Defendant’s first
`
`use of Plaintiff’s HARD ROCK Marks, and have been in use continuously by Hard Rock
`
`and its licensees since 1971.
`
`68.
`
`Plaintiff’s HARD ROCK Marks have received extensively publicity and
`
`third-party recognition, and are famously recognized throughout the world.
`
`69.
`
`The Hard Rock brand is universally known both globally and locally, where
`
`it is the sponsor of Hard Rock Stadium and the Seminole Hard Rock Hotel & Casino; two
`
`of the most well-known establishments in South Florida.
`
`70.
`
`Plaintiff licenses the HARD ROCK Marks only to licensees who agree to use
`
`it properly and in a certain manner, and any dilution of that use is harmful to Plaintiff,
`
`which derives enormous revenue based on the goodwill associated with the HARD
`
`ROCK Marks.
`
`71. Defendants have willfully sought to trade on Hard Rock’s reputation and
`
`cause dilution of the HARD ROCK Marks.
`
`72. Defendant’s use of Plaintiff’s HARD ROCK Marks is likely to cause dilution
`
`of Plaintiff’s famous HARD ROCK Marks.
`
`73. Defendant’s dilution of Plaintiff’s famous HARD ROCK Marks is knowing
`
`and willful.
`
`74. Hard Rock has no adequate remedy at law and, if Defendants’ activities are
`
`not enjoined, Hard Rock will continue to suffer irreparable harm and injury to its goodwill
`
`and reputation.
`
`21
`
`

`

`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 22 of 24
`
`FOURTH CLAIM FOR RELIEF
`Florida Deceptive and Unfair Trade Practices Act
`(Violation of Fla. Stat. § 501.204 et seq.)
`
`75. Hard Rock repeats and realleges the allegations set forth in the foregoing
`
`paragraphs as if fully set forth herein.
`
`76. Upon information and belief, Defendants have violated Fla. Stat. § 501.204
`
`et seq. by using Plaintiff’s HARD ROCK Marks in order to mislead the public into
`
`believing that Defendants’ goods and services have been sponsored by or are associated
`
`with Hard Rock.
`
`77. Defendants’ willful and intentional acts are likely to cause confusion,
`
`mistake, or deception as to the origin, connection, association, sponsorship, or approval of
`
`Defendants’ goods and services by or with Hard Rock and Hard Rock’s own goods and
`
`services.
`
`78. As a direct and proximate result of Defendants’ unlawful acts, Plaintiff has
`
`suffered and will continue to suffer monetary damages and irreparable harm.
`
`79. Defendants’ conduct has caused and will continue to cause irreparable injury
`
`to Hard Rock unless enjoined by this Court.
`
`80. Hard Rock is without adequate remedy at law.
`
`FIFTH CLAIM FOR RELIEF
`Florida Anti-Dilution Act
`(Violation of Fla. Stat. § 495.151 et seq.)
`
`81. Hard Rock repeats and realleges the allegations set forth in the foregoing
`
`paragraphs as if fully set forth herein.
`
`22
`
`

`

`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 23 of 24
`
`82.
`
`Plaintiff’s HARD ROCK Marks have received extensively publicity through
`
`third-party recognition and is famously recognized throughout the world, including in the
`
`State of Florida.
`
`83. Defendants’ willful and intentionally unauthorized use of the HARD ROCK
`
`HEMP mark is likely to dilute the distinctive quality of Plaintiff’s HARD ROCK Marks.
`
`84. As a direct and proximate result of Defendants’ unlawful acts, Defendants
`
`have violated Fla. Stat. § 495.151 et seq., and Plaintiff has suffered and will continue to
`
`suffer monetary damages and irreparable harm from such.
`
`85. As a direct and proximate result of Defendants’ conduct, Hard Rock has
`
`suffered damage to its valuable trademark in an amount to be ascertained at trial.
`
`86. Hard Rock does not have an adequate remedy at law, and will continue to be
`
`damaged by Defendants’ sale of the infringing services unless this Court enjoins
`
`Defendants from its unlawful conduct.
`
`PRAYER FOR RELIEF
`WHEREFORE, Hard Rock requests the following relief:
`
`A.
`
`a permanent injunction enjoining Defendants and their officers, employees,
`
`servants, and agents, and all persons in active concert or participation with them, from
`
`using the HARD ROCK Marks or any other phrase or trademark that would be confusingly
`
`similar to the HARD ROCK Marks trademarks;
`
`B.
`
`an award of compensatory damages arising out of Defendants’ infringement
`
`and a trebling of such award as provided by 15 U.S.C. § 1117;
`
`23
`
`

`

`Case 0:21-cv-61395-AHS Document 1 Entered on FLSD Docket 07/08/2021 Page 24 of 24
`
`C.
`
`an award of compensatory damages arising out of Defendants’ infringement
`
`and a trebling or enhancing of such award as provided by applicable laws;
`
`D.
`
`a direction to Defendants to deliver up to Hard Rock for destruction all
`
`physical or electronic materials that contain any use of the trademark;
`
`E.
`
`An injunction directing Defendants to abandon, with prejudice, the
`
`Application for the HARD ROCK HEMP mark, and not seek registration for any mark
`
`confusingly similar
`
`to
`
`the HARD ROCK Marks
`
`in any place or with any
`
`administrative body;
`
`F.
`
`an award to Hard Rock of its reasonable attorney fees and costs in the
`
`action; and
`
`G.
`
`such other and further relief as the Court may deem just and necessary.
`
`JURY DEMAND
`Pursuant to Fed. R. Civ. P. 38(b), plaintiff hereby demands a trial on all issues so
`
`triable herein.
`
`
`
`CARLSON & ASSOCIATES, P.A.
`
`
`By: /s/ Curtis Carlson
`Curtis Carlson, Fla.Bar.No. 236640
`1200 Suntrust International Center
`One Southeast Third Avenue
`Miami, Florida 33131
`Telephone: 305.372.9700
`Facsimile: 305.372.8265
`E-mail: carlson@carlson-law.net
`
`Dated: July 8, 2021
`
`OF COUNSEL:
`Stephen F. Roth
`LERNER DAVID LLP
`20 Commerce Drive
`Cranford, New Jersey 07016
`Telephone: 908.518.6362
`E-mail: sroth@lernerdavid.com
`
`24
`
`

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