Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 1 of 33
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`WEST PALM BEACH DIVISION
`
`Case No: _________________
`
`COMPLAINT FOR:
`
`1. FEDERAL COUNTERFEITING (15
`U.S.C. § 1114);
`2. FEDERAL TRADEMARK
`INFRINGEMENT (15 U.S.C. § 1114);
`3. FEDERAL UNFAIR COMPETITION (15
`U.S.C. § 1125);
`4. FEDERAL TRADEMARK DILUTION (15
`U.S.C. § 1125);
`5. FEDERAL TRADE DRESS
`INFRINGEMENT(15 U.S.C. § 1125);
`6. FEDERAL TRADE DRESS
`INFRINGEMENT(15 U.S.C. § 1114);
`7. FLORIDA TRADEMARK DILUTION
`(Fla. Sta. § 495.151);
`8. FLORIDA DECEPTIVE AND UNFAIR
`TRADE PRACTICES ACT (§ 501.201 et
`seq.); and
`9. FLORIDA UNFAIR COMPETITION.
`
`))
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`
`
`))))))))))
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`FERRARA CANDY COMPANY,
`Plaintiff,
`
`vs.
`
`AKIMOV, LLC d/b/a TOP FIVE
`WHOLESALE,
`
`Defendant.
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`COMPLAINT
`
`This is an action for counterfeiting, trademark infringement, unfair competition, dilution,
`
`and trade dress infringement in violation of federal and Florida state law.
`
`PARTIES
`
`1.
`
`Plaintiff Ferrara Candy Company is an Illinois corporation, having offices at 404
`
`West Harrison Street, Chicago, Illinois 60607 (“Ferrara”).
`
`2.
`
`Defendant Akimov, LLC is a Florida limited liability company, doing business as
`
`Top Five Wholesale, having offices at 6760 Congress Ave., Apt. 410, Boca Raton, Florida 33487
`
`(“Akimov”).
`
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`WEST PALM BEACH DIVISION
`
`Case No: _________________
`
`COMPLAINT FOR:
`
`1. FEDERAL COUNTERFEITING (15
`U.S.C. § 1114);
`2. FEDERAL TRADEMARK
`INFRINGEMENT (15 U.S.C. § 1114);
`3. FEDERAL UNFAIR COMPETITION (15
`U.S.C. § 1125);
`4. FEDERAL TRADEMARK DILUTION (15
`U.S.C. § 1125);
`5. FEDERAL TRADE DRESS
`INFRINGEMENT(15 U.S.C. § 1125);
`6. FEDERAL TRADE DRESS
`INFRINGEMENT(15 U.S.C. § 1114);
`7. FLORIDA TRADEMARK DILUTION
`(Fla. Sta. § 495.151);
`8. FLORIDA DECEPTIVE AND UNFAIR
`TRADE PRACTICES ACT (§ 501.201 et
`seq.); and
`9. FLORIDA UNFAIR COMPETITION.
`
`))
`
`
`
`))))))))))
`
`FERRARA CANDY COMPANY,
`Plaintiff,
`
`vs.
`
`AKIMOV, LLC d/b/a TOP FIVE
`WHOLESALE,
`
`Defendant.
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`COMPLAINT
`
`This is an action for counterfeiting, trademark infringement, unfair competition, dilution,
`
`and trade dress infringement in violation of federal and Florida state law.
`
`PARTIES
`
`1.
`
`Plaintiff Ferrara Candy Company is an Illinois corporation, having offices at 404
`
`West Harrison Street, Chicago, Illinois 60607 (“Ferrara”).
`
`2.
`
`Defendant Akimov, LLC is a Florida limited liability company, doing business as
`
`Top Five Wholesale, having offices at 6760 Congress Ave., Apt. 410, Boca Raton, Florida 33487
`
`(“Akimov”).
`
`
`
`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 2 of 33
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`JURISDICTION AND VENUE
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`3.
`
`This Court has jurisdiction because (1) this is an action arising under the Trademark
`
`Act of 1946, as amended, 15 U.S.C. §§ 1051, et seq. (the Lanham Act), jurisdiction being conferred
`
`in accordance with 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338, and 1367; and (2) this is a civil
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`action between a citizen of Florida on one side and a citizen of Illinois on the other side, in which
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`the value of the amount in controversy exceeds seventy-five thousand dollars ($75,000.00),
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`exclusive of interest and costs, jurisdiction being conferred in accordance with 28 U.S.C. § 1332.
`
`Jurisdiction for the claims made under Florida state law is conferred in accordance with the
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`principles of supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a).
`
`4.
`
`Venue is proper in this district under 28 U.S.C. § 1391(b) because a substantial part
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`of the events giving rise to the claims alleged herein occurred in this district, and under 28 U.S.C.
`
`§ 1391(c) because Akimov is subject to this Court’s personal jurisdiction for purposes of this
`
`case.
`
`FACTS
`FERRARA’S PRODUCTS AND FAMOUS TRADEMARKS
`
`5.
`
`Ferrara is a recognized global leader in confections, and, together with its affiliates,
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`makes, distributes, markets, and sells throughout the United States numerous well-known,
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`distinctive, and famous candy products, including under the NERDS and TROLLI brands.
`
`6.
`
`The NERDS and TROLLI candy brands have achieved enormous commercial
`
`success as reflected by their extensive sales, which have been supported by significant marketing
`
`and promotional campaigns throughout the United States, including in Florida.
`
`Ferrara’s Famous NERDS Marks and Trade Dress
`
`7.
`
`Since the 1980s, Ferrara has manufactured, marketed, and sold NERDS candy
`
`products, in different flavors and style variations, under the famous NERDS mark and NERDS
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 3 of 33
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`trade dress. The trade dress differs slightly across the different products, but consistently
`
`features, among other things, (a) the word mark NERDS in block, slanted lettering, with a capital
`
`“R” that appears to be falling, (b) in front of a predominantly blue cloud, (c) with character
`
`versions of the NERDS candies playing on the package, and (d) images of the candy itself on
`
`the bottom right-hand corner of the package (the “NERDS Trade Dress”).
`
`8.
`
`Currently, Ferrara manufactures, markets and sells four lines of NERDS products:
`
`NERDS candy; BIG CHEWY NERDS candy; NERDS ROPE candy; and its latest, NERDS
`
`GUMMY CLUSTERS candy, which all incorporate the NERDS Trade Dress. Representative
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`images of these products appear below:
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 4 of 33
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`9.
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`Ferrara owns, among many others, the following federal trademark registrations
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`issued by the United States Patent and Trademark Office for the NERDS Marks used on NERDS
`
`candy packaging:
`
`MARK
`
`NERDS
`
`REG. NO.
`
`REG. DATE
`
`RELEVANT
`GOODS
`
`2,209,131
`
`December 8, 1998 Candy
`
`4,400,174
`
`September 10, 2013 Candy
`
`4,400,153
`
`September 10, 2013 Candy
`
`4,414,355
`
`October 8, 2013
`
`Candy
`
`6,570,731
`
`November 23, 2021 Candy
`
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 5 of 33
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`6,556,724
`
`November 9, 2021 Candy
`
`6,556,722
`
`November 9, 2021 Candy
`
`6,603,978
`
`December 28, 2021 Candy
`
`10.
`
`These registrations are valid and subsisting. All of these registrations (with the
`
`exception of Reg. Nos. 6,570,731; 6,556,724; 6,556,722; and 6,603,978) are incontestable and
`
`constitute conclusive evidence of Ferrara’s exclusive right to use the NERDS Marks for the goods
`
`specified in the registrations. 15 U.S.C. §§ 1065, 1115(b). The marks shown in these federal
`
`registrations, combined with the common-law trademark rights in NERDS, are hereinafter
`
`collectively referred to as the “NERDS Marks.”
`
`11.
`
`Ferrara has manufactured, advertised, and sold an elongated rope-like form
`
`attached to which are numerous multi-colored small nuggets of candy since at least as early as
`
`January 2001. Ferrara also owns a registration on the Supplemental Register for its rope-like
`
`cluster of sugared candy (the “NERDS ROPE Trade Dress”), as shown below:
`
`MARK
`
`REG. NO.
`
`REG. DATE
`
`RELEVANT
`GOODS
`
`2,920,232
`
`January 18, 2005 Candy
`
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`Ferrara’s Famous TROLLI Marks and Trade Dress
`
`12.
`
`Ferrara and its predecessors have long marketed, distributed, and sold candy and
`
`related products under the famous TROLLI marks and trade dress. The trade dress features, among
`
`other things, (a) the word mark TROLLI in stylized, slanted white bubble lettering with a pink
`
`inner outline and a black outer outline, (b) the flavor of the TROLLI candies written in bubble
`
`letters underneath the “TROLLI” name, (c) a window-like shape with pictures of the candies
`
`inside, and (d) black on the top and the bottom of the packaging (hereinafter, the “TROLLI Trade
`
`Dress”).
`
`13.
`
`Ferrara currently markets and sells several lines of TROLLI products: TROLLI
`
`CRAWLERS candy; TROLLI unique shape candy (such as Watermelon Sharks, Strawberry Puffs,
`
`and Octopus); and TROLLI classic shape candy (such as PeachieO’s and AppleO’s).
`
`Representative images of some of these products appear below.
`
`Since long prior to Akimov’s acts complained of herein, Ferrara has made
`14.
`continuous use of the TROLLI trademarks and TROLLI Trade Dress in connection with candy
`products.
`Ferrara owns, among many others, the following federal trademark registrations
`15.
`issued by the United States Patent and Trademark Office for TROLLI marks:
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 7 of 33
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`MARK
`TROLLI
`
`TROLLI
`SQUIGGLES
`
`REG. NO.
`1,285,440
`
`REG. DATE
`July 10, 1984
`
`RELEVANT GOODS
`Candy
`
`2,146,247
`
`March 24, 1998
`
`Candy
`
`Candy
`
`Candy
`
`Candy
`
`Candy
`
`Candy
`
`Lip balm
`
`Backpacks; Apparel;
`Ornamental patches
`
`Key chains; Clothing;
`Ornamental novelty pins
`
`TROLLI OCTOPUS
`
`2,140,787
`
`March 3, 1998
`
`TROLLI
`CATERPILLARS
`
`TROLLI SODA
`POPPERS
`
`TROLLI EXTREME
`SOUR BRITES
`
`TROLLI SOUR
`BRITE
`
`2,140,788
`
`March 3, 1998
`
`3,976,070
`
`June 7, 2011
`
`4,709,231
`
`March 24, 2015
`
`4,941,337
`
`April 9, 2016
`
`TROLLI
`
`TROLLI
`
`5,004,764
`
`5,445,125
`
`July 19, 2016
`
`April 10, 2018
`
`TROLLI
`
`5,618,982
`
`November 27, 2018
`
`16.
`
`These registrations are valid and subsisting. All of these registrations (with the
`
`exception of Reg. Nos. 4,941,337; 5,004,764; 5,445,125; and 5,618,982) are incontestable and
`
`constitute conclusive evidence of Ferrara’s exclusive right to use the TROLLI Marks for the goods
`
`specified in the registrations. 15 U.S.C. §§ 1065, 1115(b). The marks shown in these federal
`
`registrations, combined with the common-law trademark rights in TROLLI, are hereinafter
`
`collectively referred to as the “TROLLI Marks.”
`
`-7-
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 8 of 33
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`The Famous Ferrara Trademarks and Ferrara Trade Dress
`
`17.
`
`Ferrara is the exclusive owner of the NERDS Marks and TROLLI Marks
`
`(collectively, the “Ferrara Trademarks”) and the NERDS Trade Dress and TROLLI Trade Dress
`
`(collectively, the “Ferrara Trade Dress”) and the NERDS ROPE Trade Dress and all of their related
`
`goodwill throughout the United States.
`
`18.
`
`Ferrara has marketed candy products bearing the Ferrara Trademarks and Ferrara
`
`Trade Dress to parents as a fun and enjoyable treat for children of all ages. Therefore, Ferrara
`
`would never condone or authorize the use of the Ferrara Trademarks and Ferrara Trade Dress in
`
`connection with products that could be harmful to children.
`
`19.
`
`The Ferrara Trademarks and Ferrara Trade Dress are strong and distinctive marks
`
`that are immediately recognized by the public as brand indicators of, and associated with, Ferrara’s
`
`products.
`
`20.
`
`As a result of Ferrara’s extensive sales, promotion, and advertising of candy
`
`products under the Ferrara Trademarks and Ferrara Trade Dress, they have become famous among
`
`the general consuming public of the United States, and represent an extraordinarily valuable
`
`goodwill owned by Ferrara.
`
`AKIMOV’S UNAUTHORIZED USE OF THE FERRARA TRADEMARKS AND
`FERRARA TRADE DRESS WITH THC-INFUSED PRODUCTS
`
`21.
`
`Akimov is engaged in the manufacturing, marketing, sale, and distribution of THC-
`
`infused candy products in packaging that bears the Ferrara Trademarks, the Ferrara Trade Dress,
`
`and the NERDS ROPE Trade Dress, or simulations thereof (“Counterfeit Products”), and in doing
`
`so is endangering consumers’ well-being.
`
`22.
`
`As of the date of this filing, Akimov is offering at least seven types of Counterfeit
`
`Products via its website located at https://topfivewholesale.com/, among other means, to
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 9 of 33
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`consumers throughout the United States, including Florida: (1) “Delta-8 Nerds Rope” (sold in six
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`flavors: Blueberry, Grape, Strawberry, Watermelon, Lemonade Wild Cherry, and Cherry); (2)
`
`“Errlli Sour Terp Crawlers Very Berry 600mg”; (3) “Trrlli Strawberry Puffs 600mg”; (4) “Errlli
`
`Sour Brite Twisted Crawlers 600mg”; (5) “Errlli Sour Glow Worms 600mg”; (6) “THC-0 Apple
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`Rings (300mg THC –0; 300mg Delta-8)”; and (7) “THC-0 Peachio’s (300mg THC –0; 300mg
`
`Delta-8).” Images of these Counterfeit Products from Akimov’s website are shown below.
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`23.
`
`The Medicated Nerds Rope packaging is highly similar to the packaging used by
`
`Ferrara for its NERDS ROPE candies, as shown below:
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`-18-
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 19 of 33
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`Ferrara’s Product
`
`Akimov’s Product
`
`24.
`
`As shown in the comparison below, Defendants’ “Medicated Nerds Rope” candy
`
`is highly similar to Ferrara’s registered trade dress for its NERDS ROPE candy:
`
`Ferrara’s Product
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`Defendants’ Product
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 20 of 33
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`25.
`
`Akimov also is using packaging nearly identical to genuine packaging for TROLLI
`
`candy for their “THC-0 Apple Rings” Counterfeit Product:
`
`Ferrara’s Product
`
`Defendant’s Product
`
`26.
`
`Akimov also has used simulations of the TROLLI mark: “Errlli” and “Trrlli” to
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`market THC-infused TROLLI candy, as shown below:
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 21 of 33
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`27.
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`As shown in the comparison below, Akimov’s “Errlli” and “Trrlli” packaging is
`
`highly similar to the packaging used by Ferrara for its TROLLI candies:
`
`Ferrara’s Product
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`Akimov’s Product
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`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 22 of 33
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`28.
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`Unsurprisingly, consumers are likely to be and, on information and belief, actually
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`have been confused as to the source of Akimov’s Counterfeit Products and have been led to
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`believe, mistakenly, that Akimov’s Counterfeit Products are authorized, endorsed by, or affiliated
`
`with Ferrara.
`
`29.
`
`Akimov knowingly and willfully uses variations on the names and packaging of
`
`Ferrara’s famous candy products, including as shown above, to trade upon the goodwill in the
`
`Ferrara Trademarks and Ferrara Trade Dress to give the Counterfeit Products a salability they
`
`would not otherwise have.
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`30.
`
`Ferrara does not produce, distribute, or sell any candy products containing
`
`THC/cannabis, nor has it authorized any other entity, including Akimov, to do so.
`
`31.
`
`Ferrara has not consented, and never would consent, to such uses of the Ferrara
`
`Trademarks and Ferrara Trade Dress, and, in fact, is actively enforcing its marks against such uses
`
`to protect consumers from inadvertent consumption of THC.
`
`32.
`
`Furthermore, as shown above, Akimov has infused its Counterfeit Products with
`
`large amounts of THC – as much as 600 milligrams – more than 60 adult servings. The sale of
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`these Counterfeit Products thus poses a health hazard to the consuming public, especially children.
`
`33.
`
`Indeed, states across the United States have recognized the hazard posed by
`
`cannabis products that are designed to appeal to children or that are packaged to look like popular
`
`candy or grocery items, and have enacted statutes restricting how such products may be labeled
`
`and packaged. In fact, the sale of marijuana in Florida for recreational purposes, or to someone
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`without a medical marijuana card, is considered “unlicensed activity” and can qualify as a felony.
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`2021 Fla. Sta. 381.986 (13).
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`FIRST CLAIM FOR RELIEF
`COUNTERFEITING OF THE FERRARA TRADEMARKS
`(IN VIOLATION OF SECTION 32 OF THE LANHAM ACT)
`
`Ferrara re-alleges paragraphs 1 through 33 as if fully set forth herein.
`
`Ferrara owns exclusive, registered rights in and to the Ferrara Trademarks for
`
`34.
`
`35.
`
`candy.
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`36.
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`Akimov manufactures, markets, sells, and distributes edible THC-infused candy
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`bearing the identical Ferrara Trademarks, and Akimov’s use of those marks in association with
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`candies constitutes trademark counterfeiting in violation of 15 U.S.C. § 1114.
`
`37.
`
`Akimov’s use of the counterfeit marks for its cannabis-infused candy products is
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`likely to cause confusion, mistake, or deception as to source, affiliation, or sponsorship of
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`Akimov’s candy.
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`38.
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`The imitation, copying, and unauthorized use of the Ferrara Trademarks causes
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`irreparable injury to Ferrara, including injury to its business reputation and the goodwill associated
`
`with these marks.
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`39.
`
`Akimov has used the Ferrara Trademarks for its counterfeit products with full
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`knowledge of, and in willful disregard of Ferrara’s rights in these trademarks, and with the intent
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`to obtain a commercial advantage that Akimov would otherwise not have. Akimov’s acts greatly
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`and irreparably damage Ferrara and will continue to so damage Ferrara unless restrained by this
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`Court; wherefore, Ferrara is without an adequate remedy at law.
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`SECOND CLAIM FOR RELIEF
`TRADEMARK INFRINGEMENT
`(IN VIOLATION OF SECTION 32 OF THE LANHAM ACT)
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`40.
`
`Ferrara re-alleges paragraphs 1 through 33 as if fully set forth herein.
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`41. Without Ferrara’s consent, Akimov has used the Ferrara Trademarks, including
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`imitations of the TROLLI Marks, in commerce in connection with the manufacturing, marketing,
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`sale, and distribution of candy infused with THC. These acts have caused or are likely to cause
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`confusion, mistake, or deception as to the source of origin, sponsorship, or approval of the
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`Counterfeit Products that Akimov sells, in that purchasers and others are likely to believe Ferrara
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`authorizes and controls Akimov’s sale of cannabis-infused candy products in the United States or
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`that Akimov is associated with or related to Ferrara.
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`42.
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`Akimov’s acts are likely to injure and, on information and belief, have injured
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`Ferrara’s image and reputation with consumers in the United States by creating confusion about
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`the source of the Counterfeit Products, and dissatisfaction with Ferrara.
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`43.
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`Akimov’s acts are likely to injure and, on information and belief, have injured
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`Ferrara’s business reputation and relations with retail accounts in the United States by causing
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`customer dissatisfaction, a diminution in value of the goodwill associated with the Ferrara
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`Trademarks, and a loss of Ferrara’s sales and market share to its competition.
`
`44.
`
`Akimov’s acts constitute an infringement of Ferrara’s trademark rights in violation
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`of Section 32 of the Lanham Act, 15 U.S.C. § 1114.
`
`45.
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`Akimov’s acts greatly and irreparably damage Ferrara and will continue to so
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`damage Ferrara unless restrained by this Court; wherefore, Ferrara is without an adequate remedy
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`at law.
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`THIRD CLAIM FOR RELIEF
`UNFAIR COMPETITION
`(IN VIOLATION OF SECTION 43(a) OF THE LANHAM ACT)
`Ferrara re-alleges paragraphs 1 through 33 as if fully set forth herein.
`
`46.
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`47. Without Ferrara’s consent, Akimov has used the Ferrara Trademarks, including
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`imitations of the TROLLI Marks, as well as the Ferrara Trade Dress associated with these products,
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`in commerce in connection with the manufacturing, marketing, sale, and distribution of candy
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`infused with THC. These acts have caused or are likely to cause confusion, mistake, or deception
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`as to the source of origin, sponsorship, or approval of the Counterfeit Products that Akimov sells,
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`in that purchasers and others are likely to believe Ferrara authorizes and controls Akimov’s sale
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`of THC-infused candy products in the United States or that Akimov is associated with or related
`
`to Ferrara.
`
`48.
`
`On information and belief, Akimov’s manufacturing, marketing, sale, and
`
`distribution of the Counterfeit Products have been committed deliberately and willfully, with
`
`knowledge of Ferrara’s exclusive rights and goodwill in the Ferrara Trademarks and with a bad
`
`faith intent to cause confusion and trade on Ferrara’s goodwill.
`
`49.
`
`Akimov’s acts constitute unfair competition in violation of Section 43(a) of the
`
`Lanham Act, 15 U.S.C. § 1125(a).
`
`50.
`
`Akimov’s acts greatly and irreparably damage Ferrara and will continue to so
`
`damage Ferrara unless restrained by this Court; wherefore, Ferrara is without an adequate remedy
`
`at law.
`
`51.
`
`52.
`
`FOURTH CLAIM FOR RELIEF DILUTION
`(IN VIOLATION OF SECTION 43(c) OF THE LANHAM ACT)
`
`Ferrara re-alleges paragraphs 1 through 33 as if fully set forth herein.
`
`The Ferrara Trademarks are inherently distinctive, famous, and are widely
`
`recognized by the general consuming public of the United States as a designation of source of
`
`Ferrara’s candy products.
`
`-25-
`
`
`
`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 26 of 33
`
`53.
`
`Akimov’s acts as described herein began after the Ferrara Trademarks became
`
`famous.
`
`54.
`
`Akimov’s acts are likely to cause and have caused dilution by tarnishment and
`
`blurring of the famous Ferrara Trademarks in violation of Section 43(c) of the Lanham Act, 15
`
`U.S.C. § 1125(c).
`
`55.
`
`On information and belief, Akimov’s manufacturing, marketing, sale, and
`
`distribution of the Counterfeit Products bearing the Ferrara Trademarks in the United States have
`
`been committed deliberately and willfully, with knowledge of Ferrara’s exclusive rights and
`
`goodwill in the Ferrara Trademarks and with a bad faith intent to cause dilution of the Ferrara
`
`Trademarks.
`
`56.
`
`Akimov’s acts greatly and irreparably damage Ferrara and will continue to so
`
`damage Ferrara unless restrained by this Court; wherefore, Ferrara is without an adequate remedy
`
`at law.
`
`57.
`
`58.
`
`FIFTH CLAIM FOR RELIEF
`TRADE DRESS INFRINGEMENT
`(IN VIOLATION OF 15 U.S.C. § 1125)
`
`Ferrara re-alleges paragraphs 1 through 33 as if fully set forth herein.
`
`For years, Ferrara has owned protectable rights in the Ferrara Trade Dress, which
`
`is inherently distinctive and not functional.
`
`59.
`
`Prior to Akimov’s conduct that forms the basis for this Complaint, consumers had
`
`come to associate the distinctive “look and feel” of the packaging for the candies sold under the
`
`Ferrara Trademarks with the Ferrara Trade Dress.
`
`-26-
`
`
`
`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 27 of 33
`
`60. Without Ferrara’s consent or authorization, Akimov has manufactured, marketed,
`
`sold, and distributed the Counterfeit Products in packaging that bears imitations of the Ferrara
`
`Trade Dress in the United States, including through its website.
`
`61.
`
`The colors, stylized wording, and elements of the packaging used with Counterfeit
`
`Products were intentionally designed to simulate Ferrara’s packaging for its NERDS and TROLLI
`
`candies in that the colors and words are displayed in the substantially identical layout and position,
`
`providing the immediate commercial impression that the Counterfeit Products emanate from or
`
`are associated with Ferrara and its genuine candy products.
`
`62.
`
`Akimov’s use of imitations of the Ferrara Trade Dress for the packaging of its
`
`Counterfeit Products is intentionally designed to deceive consumers into believing that the
`
`Counterfeit Products are manufactured or authorized by Ferrara, thereby causing confusion as to
`
`the source and origin of the Counterfeit Products, which constitutes trade dress infringement under
`
`15 U.S.C. § 1125.
`
`63.
`
`Akimov’s acts greatly and irreparably damage Ferrara and will continue to so
`
`damage Ferrara unless restrained by this Court; wherefore, Ferrara is without an adequate remedy
`
`at law.
`
`SIXTH CLAIM FOR RELIEF
`TRADE DRESS INFRINGEMENT OF NERDS ROPE TRADE DRESS
`(IN VIOLATION OF 15 U.S.C. § 1114)
`
`64.
`
`Ferrara re-alleges paragraphs 1 through 11, 17 through 24 and 28 through 33 as if
`
`fully set forth herein.
`
`65.
`
`For years, Ferrara has owned protectable rights in the NERDS ROPE Trade Dress,
`
`which is distinctive and not functional.
`
`-27-
`
`
`
`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 28 of 33
`
`66.
`
`Prior to Akimov’s conduct that forms the basis for this Complaint, consumers had
`
`come to associate the distinctive “look and feel” of the rope-like cluster of sugared candies sold
`
`under the Ferrara Trademarks with the NERDS ROPE Trade Dress and the Ferrara Trade Dress.
`
`67. Without Ferrara’s consent or authorization, Akimov has manufactured, marketed,
`
`sold, and distributed the Counterfeit Products, which bear imitations of the NERDS ROPE Trade
`
`Dress in the United States, including through its website.
`
`68.
`
`The cluster of candies in a rope-like fashion used with Counterfeit Products and the
`
`Ferrara Trademarks were intentionally designed to simulate Ferrara’s NERDS ROPE candy in that
`
`the Counterfeit Products look identical, providing the immediate commercial impression that the
`
`Counterfeit Products emanate from or are associated with Ferrara and its genuine candy products.
`
`69.
`
`Akimov’s use of imitations of the NERDS ROPE Trade Dress for the Counterfeit
`
`Products is intentionally designed to deceive consumers into believing that the Counterfeit
`
`Products are manufactured or authorized by Ferrara, thereby causing confusion as to the source
`
`and origin of the Counterfeit Products, which constitutes trade dress infringement under 15 U.S.C.
`
`§ 1125.
`
`70.
`
`Akimov’s acts greatly and irreparably damage Ferrara and will continue to so
`
`damage Ferrara unless restrained by this Court; wherefore, Ferrara is without an adequate remedy
`
`at law.
`
`SEVENTH CLAIM FOR RELIEF
`UNFAIR COMPETITION
`(IN VIOLATION OF FLORIDA’S
`DECEPTIVE AND UNFAIR TRADE PRACTICES ACT § 501.201 et seq.)
`
`71.
`
`Ferrara re-alleges paragraphs 1 through 33 as if fully set forth herein.
`
`72. Without Ferrara’s consent, Akimov has appropriated for its own use the Ferrara
`
`Trademarks and Ferrara Trade Dress.
`
`-28-
`
`
`
`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 29 of 33
`
`73.
`
`On information and belief, Akimov’s manufacturing, marketing, sale, and
`
`distribution of the Counterfeit Products in the state of Florida have been committed deliberately
`
`and willfully, with knowledge of Ferrara’s exclusive rights and goodwill in the Ferrara Trademarks
`
`and Ferrara Trade Dress and with a bad faith intent to cause confusion and trade on Ferrara’s
`
`goodwill.
`
`74.
`
`75.
`
`Akimov’s acts could adversely affect consumers in Florida.
`
`Akimov’s acts constitute unfair trade practices in violation of the Florida Deceptive
`
`and Unfair Trade Practices Act (“FDUTPA”), Section § 501.204 et seq.
`
`76.
`
`Akimov’s acts greatly and irreparably damage Ferrara and will continue to so
`
`damage Ferrara unless restrained by this Court; wherefore, Ferrara is without an adequate remedy
`
`at law.
`
`77.
`
`78.
`
`EIGHTH CLAIM FOR RELIEF
`DILUTION
`(IN VIOLATION OF FLORIDA STATUTE § 495.151)
`
`Ferrara re-alleges paragraphs 1 through 33 as if fully set forth herein.
`
`The Ferrara Trademarks are inherently distinctive, famous, and are widely
`
`recognized by the general consuming public of the United States and Florida as a designation of
`
`source of Ferrara’s confectionery products.
`
`79.
`
`Akimov’s acts as described herein began after the Ferrara Trademarks became
`
`famous.
`
`80.
`
`Akimov’s acts are likely to cause and have caused dilution by tarnishment and
`
`blurring of the famous Ferrara Trademarks in violation of Florida Statute § 495.151.
`
`81.
`
`On information and belief, Akimov’s manufacturing, marketing, sale, and
`
`distribution of the Counterfeit Products bearing the Ferrara Trademarks in Florida have been
`
`-29-
`
`
`
`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 30 of 33
`
`committed deliberately and willfully, with knowledge of Ferrara’s exclusive rights and goodwill
`
`in the famous Ferrara Trademarks and with a bad faith intent to cause dilution of the Ferrara
`
`Trademarks.
`
`82.
`
`Akimov’s acts greatly and irreparably damage Ferrara and will continue to so
`
`damage Ferrara unless restrained by this Court; wherefore, Ferrara is without an adequate remedy
`
`at law.
`
`NINTH CLAIM FOR RELIEF
`(UNFAIR COMPETITION
`IN VIOLATION OF FLORIDA COMMON LAW)
`
`83.
`
`Ferrara re-alleges paragraphs 1 through 33 as if fully set forth herein.
`
`84. Without Ferrara’s consent, Akimov has appropriated for its own use the Ferrara
`
`Trademarks and Ferrara Trade Dress.
`
`85.
`
`Akimov has used the Ferrara Trademarks and Ferrara Trade Dress in commerce in
`
`connection with the sale, offering for sale, distribution, and/or advertising of several cannabis-
`
`infused candy products. These acts have caused or are likely to cause confusion, mistake, or
`
`deception as to the source of origin, sponsorship, or approval of Akimov’s products that Akimov
`
`sells in that purchasers and others are likely to believe Ferrara authorizes and controls Akimov’s
`
`sale of the Infringing Products in Florida or that Akimov is associated with or related to Ferrara.
`
`86.
`
`Akimov’s acts are likely to injure and, on information and belief, have injured
`
`Ferrara’s image and reputation with consumers in the United States by creating confusion about
`
`the Counterfeit Products.
`
`87.
`
`On information and belief, Akimov’s manufacturing, marketing, sale, and
`
`distribution of the Counterfeit Products bearing the Ferrara Trademarks and Ferrara Trade Dress
`
`in Florida have been committed deliberately and willfully, with knowledge of Ferrara’s exclusive
`
`-30-
`
`
`
`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 31 of 33
`
`rights and goodwill in the Ferrara Trademarks and Ferrara Trade Dress and with a bad faith intent
`
`to cause confusion and trade on Ferrara’s goodwill.
`
`88.
`
`89.
`
`Akimov’s acts constitute unfair competition in violation of Florida common law.
`
`Akimov’s acts greatly and irreparably damage Ferrara and will continue to so
`
`damage Ferrara unless restrained by this Court; wherefore, Ferrara is without an adequate remedy
`
`at law.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Ferrara prays that this Court:
`
`1.
`
`Enter judgment that Akimov has violated the Lanham Act, 15 U.S.C. §§ 1114,
`
`1125; Florida Statutes §§ 491.151 and 501.201 et seq.; and Florida common law, and that such
`
`violations were willful and intentional, making this an exceptional case;
`
`2.
`
`Issue a permanent injunction enjoining and restraining Akimov, its successors,
`
`assigns, affiliates, subsidiaries, officers, employees, agents, representatives, and all others in
`
`active concert or participation with it, from directly or indirectly engaging in (a) any further
`
`counterfeiting of the Ferrara Trademarks; (b) any further trademark infringement, trademark
`
`dilution, trade dress infringement, unfair competition, or deceptive business practices, including
`
`making, offering for sale, distributing, or selling any products that feature the Ferrara Trademarks
`
`and/or Ferrara Trade Dress or colorable imitations thereof; and (c) doing any other act calculated
`
`or likely to induce or cause confusion or the mistaken belief that Akimov or its products are in
`
`any way affiliated, connected, or otherwise associated with Ferrara and its products;
`
`3.
`
`Require Akimov, and all others holding by, through or under Akimov, be
`
`required, jointly and severally, to:
`
`a.
`
`account for and pay over to Ferrara all profits derived by Akimov from its
`-31-
`
`
`
`Case 9:22-cv-80768-RAR Document 1 Entered on FLSD Docket 05/23/2022 Page 32 of 33
`
`acts of trademark counterfeiting, trademark infringement, trade dress
`
`infringement, dilution, and unfair competition in accordance with 15 U.S.C.
`
`§ 1117(a) and Florida Statute § 495.141, and Ferrara asks that this award be
`
`trebled in accordance with 15 U.S.C. § 1117(a);
`
`b.
`
`pay statutory damages in the amount of $2,000,000 per counterfeit mark
`
`per type of good sold, offered for sale, or distributed for Akimov’s willful
`
`counterfeiting of the Ferrara Trademarks, in accordance with 15 U.S.C.
`
`§ 1117(c)(2);
`
`c.
`
`pay to Ferrara the costs of this action, together with reasonable attorneys’
`
`fees and disbursements, in accordance with 15 U.S.C. § 1117(a) and
`
`Florida Statute § 495.141;
`
`d.
`
`e.
`
`pay to Ferrara any pre-judgment interest on all damages;
`
`destroy all of the Counterfeit Products in their possession, including
`
`packaging, and any advertising, marketing, or promotional materials for
`
`the Infringing Products, in accordance with 15 U.S.C. § 1118 and Florida
`
`Statute § 495.141;
`
`f.
`
`send a notice to any existing customers that the importation, dealing in,
`
`sale, marketing, or distribution of the Counterfeit Products, is unlawful and
`
`that Akimov has been enjoined by a United States District Court from
`
`doing so; and
`
`g.
`
`file with the Court and serve on Ferrara an affidavit setting forth in
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