Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 1 of 24 Page ID #1
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF ILLINOIS
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`JOY DOG FOOD, INC.
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`Plaintiff,
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`vs.
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`JOY FOOD COMPANY
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`Defendant.
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`Case No. 3:20-cv-00600
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`JURY TRIAL DEMANDED
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`COMPLAINT
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`Plaintiff Joy Dog Food, Inc. (“Joy Dog Food”), for its Complaint against Defendant Joy
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`Food Company (“Joy Food Company”), alleges as follows:
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`NATURE OF THE LAWSUIT
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`1.
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`This is an action to stop the defendant, Joy Food Company, from confusing the
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`public by infringing Joy Dog Food’s superior rights in the JOY mark. Plaintiff Joy Dog Food
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`and its predecessors have sold JOY dog food for more than 50 years. Defendant Joy Food
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`Company started selling JOY dog food in 2019.
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`2.
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`Since the 1950s, Joy Dog Food and its predecessors have continuously and
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`exclusively sold JOY dog and cat food. Through decades of investment, stewardship, and
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`promotion, the JOY marks have accumulated significant fame and goodwill.
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`3.
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`Pet owners recognize JOY as a source identifier for Joy Dog Food’s thriving
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`family of dog and cat food products. Here are some of Joy Dog Food’s products featuring JOY:
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 2 of 24 Page ID #2
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`4.
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`The JOY brand is so famous that Joy Dog Food has featured in a major motion
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`picture, and Joy Dog Food memorabilia can fetch high prices at auction:
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 3 of 24 Page ID #3
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`5.
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`Defendant Joy Food Company was formed in 2019. Joy Food Company sells
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`JOY-branded dog food, with utter disregard for Joy Dog Food’s long-standing rights in JOY.
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`6.
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`In fact, Joy Food Company flagrantly promotes its product as “Joy Dog Food”:
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`7.
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`Industry professionals confusedly refer to Joy Food Company’s products as “Joy
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`
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`Dog Food”:
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`8.
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`Joy Food Company is well aware of Joy Dog Food’s superior rights. In April
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`2019, the U.S. Patent and Trademark Office (USPTO) rejected Joy Food Company’s attempt to
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`register JOY as a trademark for dog food, finding that it would likely cause confusion with Joy
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`Dog Food’s registered JOY mark. But Joy Food Company refuses to stop its willful
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 4 of 24 Page ID #4
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`infringement.
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`9.
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`Joy Food Company’s infringing use of JOY is likely to cause confusion among
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`consumers and potential consumers, and it threatens to harm Joy Dog Food’s business
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`reputation.
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`10.
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`This threat of harm is magnified by Joy Food Company’s lack of experience with
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`manufacturing, selling, or shipping pet food. In the words of Tom Arrix, Joy Food Company’s
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`founder and CEO, “We don’t come from a pet food background. We come from tech, we come
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`from media.”1
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`11.
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`At any moment, Joy Food Company could commit an error that damages the JOY
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`brand in the minds of pet owners. As long as Joy Food Company is using JOY, Joy Dog Food’s
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`reputation will be at the mercy of Joy Food Company.
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`12. With flagrant disregard for Joy Dog Food’s rights and a complete lack of concern
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`for public confusion, Joy Food Company has simply taken JOY for itself. As a result, Joy Dog
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`Food is forced to take on the expense and disruption of a lawsuit. Joy Dog Food brings this
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`action to protect the public from confusion and to protect its own business reputation from the
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`harms that Joy Food Company is willfully inflicting.
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`PARTIES
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`13.
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`Plaintiff Joy Dog Food is an Illinois corporation with its principal place of
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`business within this District, at 1102 Kennedy Dr., Pinckneyville, IL 62274.
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`14.
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`On information and belief, Defendant Joy Food Company is a Delaware
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`corporation with a principal place of business at 22 Elizabeth St., Norwalk, CT 06854.
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`
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`1 Audio recording titled “Tom Arrix Joy Pet Food,” The Flea Circus (podcast Mar. 13, 2020), available at
`https://christophergreen1981.podbean.com/e/the-flea-circus-997-kttr-episode-43-tom-arrix-joy-pet-food/
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 5 of 24 Page ID #5
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`JURISDICTION AND VENUE
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`15.
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`This is a civil action seeking damages and injunctive relief for trademark
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`infringement and unfair competition arising under the Trademark Act of 1946, 15 U.S.C. §§
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`1051, et seq., as amended (the “Lanham Act”), and under Illinois law.
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`16.
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`The Court has original subject matter jurisdiction under 28 U.S.C. §§ 1331 and
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`1338. The Court has supplemental jurisdiction over the state law claims under 28 U.S.C. § 1367,
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`as those claims form part of the same case and controversy.
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`17.
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`The Court has personal jurisdiction over Joy Food Company, at least because Joy
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`Food Company is exploiting the market in Illinois and this District. On information and belief,
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`Joy Food Company is intentionally promoting its products in Illinois under its infringing marks,
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`including to residents of this District; Joy Food Company is offering its products for sale under
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`its infringing marks to Illinois residents, including residents of this District; Joy Food Company
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`is selling products labeled with its infringing marks into Illinois, including this District; and Joy
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`Food Company has registered with the relevant Illinois regulatory agencies in order to be
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`permitted to sell its dog food products into Illinois, including this District.
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`18.
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`Venue is proper in this District under 28 U.S.C. § 1391 because Joy Food
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`Company is deemed to reside in this District and a substantial part of the events giving rise to the
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`claims, including Joy Food Company’s promotion and sales of infringing goods, have occurred
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`in this District.
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`GENERAL ALLEGATIONS
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`Plaintiff’s Long and Continuous Use Has Established
`Strong Trademark Rights in JOY.
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`19.
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`JOY is a strong, venerable, and famous mark that serves as a source identifier of
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`
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`Joy Dog Food’s high-quality dog and cat food products.
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 6 of 24 Page ID #6
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`20.
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`Since the 1950s, Joy Dog Food and its predecessors have used JOY marks
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`continuously and exclusively throughout the United States in connection with pet food. Joy Dog
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`Food’s JOY marks are immediately recognizable to the public and distinguish Joy Dog Food’s
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`high-quality pet food products from others.
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`21.
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`Joy Dog Food is managed by Wade Graskewicz of Pinckneyville, IL. Mr.
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`Graskewicz first entered the pet food industry in 1988, when he left a job in the coal mines to
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`open a small hunting and dog supply store in Pinckneyville. In 2011, the company had grown so
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`much that Mr. Graskewicz was able to acquire the valuable JOY brand. Since then, Joy Dog
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`Food has invested a large amount of money in the JOY family of pet foods, which currently
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`includes more than 20 different dog and cat food products.
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`22.
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`JOY dog foods and JOY cat foods are sold throughout the United States and
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`internationally through a variety of trade channels, including Internet websites and “brick-and-
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`mortar” retail stores.
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`23.
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`For decades, JOY has been widely recognized among the consuming public as a
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`distinctive symbol of high-quality dog and cat food products.
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`24.
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`Indeed, JOY has gained a level of recognition and fame that few brands enjoy.
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`For example, there is a robust market for memorabilia featuring JOY, from matchbooks to
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`clothing to vintage advertisements. Joy Dog Food memorabilia can fetch hundreds of dollars at
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`auction.
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`25.
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`Here are some examples of memorabilia sold or offered for sale by sellers in
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`various U.S. states, all featuring famous and venerable JOY marks:
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 7 of 24 Page ID #7
`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 7 of 24 Page ID #7
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`Vintage JOY DOG FOOD Trucker Hat K
`Products USA With Logo Patch Black DOGS
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`Condition: New with defects
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`Price: US $69.99
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 8 of 24 Page ID #8
`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 8 of 24 Page ID #8
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 9 of 24 Page ID #9
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`26.
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`JOY Dog Food was even featured in a famous scene from M. Night Shyamalan’s
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`
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`hit movie Signs (2002), as seen here:
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 10 of 24 Page ID #10
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`
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`Joy Dog Food Owns an Incontestable Federal Trademark Registration for JOY.
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`27.
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`Joy Dog Food owns a valid and subsisting U.S. Trademark Registration No.
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`1,605,849 for JOY in connection with cat food (“the ‘849 Registration”). A copy of the ‘849
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`Registration is attached as Exhibit 1.
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`28.
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`The ‘849 Registration is incontestable. Thus, under Sections 15 and 33(b) of the
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`Lanham Act (15 U.S.C. §§ 1065, 1115(b)), the ‘849 Registration is conclusive evidence of Joy
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`Dog Food’s exclusive right to use JOY in commerce in connection with cat food.
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`29.
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`Accordingly, Joy Dog Food owns valid and long-established common law rights
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`in JOY marks for dog food and cat food, and Joy Dog Food also owns incontestable federally
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`registered rights in JOY for cat food.
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`30.
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`JOY has achieved, and currently enjoys, a high level of distinctiveness, fame, and
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`recognition as a result of decades of investment and stewardship. JOY had achieved this status
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`long before Joy Food Company began its infringing use of JOY.
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`31.
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`JOY is a strong mark that deserves the greatest degree of protection.
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 11 of 24 Page ID #11
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`Joy Food Company is Willfully Infringing Joy Dog Food’s Rights
`by Selling and Promoting JOY Dog Food.
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`Instead of competing fairly, Joy Food Company has engaged in a continued
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`32.
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`pattern of willful, deliberate infringement and unfair competition, with flagrant disregard for Joy
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`Dog Food’s rights.
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`33.
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`34.
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`Joy Food Company makes prolific use of JOY as a trademark for dog food.
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`Joy Food Company falsely advertises its dog food as “Joy Dog Food.” Here are
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`examples from Joy Food Company’s Pinterest site:
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`35.
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`Joy Food Company offers dog food products with names like “Joy Topper” and
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`“Joy Simple,” as seen in these examples from Joy Food Company’s website:
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`11
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 12 of 24 Page ID #12
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`36.
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`Joy Food Company often refers to itself simply as JOY.
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`Joy Food Company’s Infringing Use of JOY is Already Causing
`Confusion among Professionals in the Pet Industry.
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`37.
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`As a result of Joy Food Company’s infringing use of JOY, professionals in the pet
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`
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`industry have adopted the practice of mistakenly referring to Joy Food Company as “Joy Dog
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`Food.”
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`38.
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`For example, in a recent review of Joy Food Company on the well-known “Woof
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`Whiskers” site, a professional reviewer mistakenly referred to Joy Food Company as “Joy Dog
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`Food” throughout the review, as seen for example in this image:2
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`2 https://woofwhiskers.com/joy-dog-food-review
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`12
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 13 of 24 Page ID #13
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`39.
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`Joy Food Company’s use of JOY has confused other industry professionals. One
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`example is found on the website for the popular pet-centered podcast “The Groomer Next Door.”
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`The Groomer Next Door website features articles about guests on the podcast.3 The standard
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`format for the articles is to describe the guest, and then to describe the company or organization
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`that the guest represents.
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`40. When Mr. Arrix was a guest on the podcast, the corresponding article mistakenly
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`described Joy Dog Food, instead of Joy Food Company. The text appears to have been taken
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`from the Joy Dog Food website.4
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`Joy Food Company is Rapidly Expanding its Infringing Use of JOY
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`41.
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`Joy Food Company is a new company. On information and belief, Joy Food
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`3 http://www.thegroomernextdoor.com/guests-on-the-show
`4 https://joydogfood.com/about-us/
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 14 of 24 Page ID #14
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`Company shipped its first order of dog food on or about April 26, 2019.
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`42.
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`On information and belief, Joy Food Company is one of two companies that Mr.
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`Arrix launched in 2019. The other is a digital media company.
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`43.
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`On information and belief, Mr. Arrix has no prior experience in the pet food
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`business. Mr. Arrix has admitted publicly that he and his colleagues at Joy Food Company
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`“don’t come from a pet food background,” explaining that “we come from tech, we come from
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`media.”5
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`44. Mr. Arrix does have considerable experience
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`in marketing and brand
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`management. Mr. Arrix is a former VP of Global Marketing Solutions at Facebook. The Joy
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`Food Company website describes Mr. Arrix as a “successful entrepreneur and marketer in the
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`tech world.” Thus, Mr. Arrix understands the role of trademarks and the value of a strong brand.
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`45. Mr. Arrix is using his marketing experience and expertise, as well as his status as
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`a former VP at Facebook, to promote Joy Food Company’s JOY-branded dog food.
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`46.
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`For example, Mr. Arrix has promoted his company’s JOY-branded dog food in
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`interviews with various media outlets including Forbes and Nantucket Magazine.
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`47.
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`On information and belief, Mr. Arrix and Joy Food Company are investing
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`significant amounts of money in nationwide marketing campaigns to promote JOY-branded dog
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`food.
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`48.
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`On information and belief, Mr. Arrix and Joy Food Company are investing
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`significant amounts of money in targeted nationwide Internet advertising campaigns.
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`49.
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`On information and belief, Joy Food Company is expanding, and will continue
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`expanding, its product line of JOY-branded dog food products.
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`5 Audio recording titled “Tom Arrix Joy Pet Food,” The Flea Circus (podcast Mar. 13, 2020), available at
`https://christophergreen1981.podbean.com/e/the-flea-circus-997-kttr-episode-43-tom-arrix-joy-pet-food/
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 15 of 24 Page ID #15
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`50.
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`On information and belief, Joy Food Company also intends to introduce JOY-
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`branded cat food products. Mr. Arrix has stated publicly that that Joy Food Company has
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`“thought about cats” and would love to “cross into cats.” Mr. Arrix stated that the cat food space
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`is “equally as valuable” and “equally as exciting” as the dog food space.6
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`51.
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`On information and belief, Joy Food Company intends to offer its JOY-branded
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`pet food products nationwide in multiple additional channels of trade, including additional
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`Internet sites and other retail outlets.
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`52.
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`Joy Food Company is saturating the market with advertising for its infringing
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`JOY brand. Joy Food Company’s rapid expansion will cause Joy Dog Food to lose the value of
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`its trademarks, including its product identity, corporate identity, control over its goodwill and
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`reputation, and the ability to move into new markets.
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`The USPTO Has Rejected Joy Food Company’s Attempts to Register JOY
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`53.
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`Joy Food Company has tried to register JOY as a trademark. In February 2019,
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`Joy Food Company filed applications for federal registration of the word JOY and a JOY logo.
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`54.
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`In connection with its applications, Joy Food Company certified that it uses JOY
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`as a trademark for dog food.
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`55.
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`On April 22, 2019, before Joy Food Company had even shipped its first order, the
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`USPTO rejected Joy Food Company’s trademark applications, finding that Joy Food Company’s
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`use of JOY with dog food is likely to cause confusion with Joy Dog Food’s registered JOY mark.
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`56.
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`Thus, Joy Food Company has known of Joy Dog Food’s trademark rights since
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`April 22, 2019, at the very latest. Despite this knowledge, Joy Dog Food continues to expand its
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`use of JOY.
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`6 Audio recording titled “Tom Arrix Joy Pet Food,” The Flea Circus (podcast Mar. 13, 2020), available at
`https://christophergreen1981.podbean.com/e/the-flea-circus-997-kttr-episode-43-tom-arrix-joy-pet-food/
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 16 of 24 Page ID #16
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`Joy Food Company’s Infringement and Unfair Competition
`are Irreparably Harming Joy Dog Food.
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`57. Without authorization from Joy Dog Food, and with actual knowledge of Joy Dog
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`Food’s prior use of and rights in JOY, Joy Food Company continues to promote and sell JOY
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`dog food.
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`58.
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`Joy Food Company’s acts are likely to cause confusion and mistake or to deceive
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`by falsely implying an association, connection, affiliation or relationship with Joy Dog Food and
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`its goods, thereby harming Joy Dog Food and the public.
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`59.
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`60.
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`Additionally and alternatively, reverse confusion is likely to occur.
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`Joy Food Company’s use of JOY has caused and, unless enjoined by this Court,
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`will continue to cause a likelihood of confusion and deception of purchasers and other members
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`of the public who see JOY on Joy Food Company’s infringing products, websites, and
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`promotional media. The natural and probable result is that Joy Dog Food has suffered and will
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`continue to suffer irreparable injury to and dissipation of its reputation and goodwill, for which
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`Joy Dog Food has no adequate remedy at law.
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`61.
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`Joy Food Company’s unauthorized use of JOY will diminish the distinctiveness,
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`uniqueness, commercial effectiveness and positive connotations of Joy Dog Food’s JOY mark
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`and cause dilution by blurring and tarnishment of the JOY mark.
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`62.
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`On information and belief, Joy Food Company’s unlawful actions are willful and
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`intentional and are calculated to trade on Joy Dog Food’s significant goodwill in JOY.
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`63.
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`Joy Food Company’s willful and intentional infringement has unjustly enriched
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`Joy Food Company at the expense of Joy Dog Food and the goodwill in JOY. Unless these acts
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`of the Joy Food Company are enjoined by this Court, Joy Food Company’s unlawful acts will
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`continue to cause irreparable injury to Joy Dog Food and to the public, for which there is no
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`16
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 17 of 24 Page ID #17
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`adequate remedy at law.
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`COUNT 1: FEDERAL TRADEMARK INFRINGEMENT
`(Lanham Act, 15 U.S.C. § 1114)
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`Joy Dog Food re-alleges and incorporates by reference the preceding allegations
`
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`64.
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`of the Complaint as if fully set forth herein.
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`65.
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`66.
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`67.
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`Joy Dog Food owns all rights in the ‘849 Registration and the JOY mark therein.
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`The ‘849 Registration is incontestable.
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`Joy Food Company has used and is using marks in commerce that are identical or
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`confusingly similar to the JOY mark in the ‘849 Registration.
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`68.
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`Joy Food Company’s actions are likely to cause confusion, or to cause mistake, or
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`to deceive, in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
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`69.
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`Additionally and alternatively, Joy Food Company’s actions are likely to cause
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`reverse confusion.
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`70.
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`Upon information and belief, Joy Food Company’s actions have been undertaken
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`with an intentional, willful, or malicious intent to trade upon the good will in JOY, with reckless
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`disregard for Joy Dog Food’s rights, and with intent to injure Joy Dog Food and deceive the
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`public.
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`71.
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`Joy Food Company’s actions, as alleged above, have caused and will continue to
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`cause damages to Joy Dog Food.
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`72.
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`Unless this Court enjoins Joy Food Company’s actions, Joy Dog Food will suffer
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`irreparable harm to its business reputation and good will as a direct result of Joy Food
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`Company’s actions.
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`73.
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`Because of Joy Food Company’s unlawful actions, Joy Dog Food is entitled to
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`injunctive relief, an accounting for profits, damages, costs, and reasonable attorneys’ fees
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`17
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 18 of 24 Page ID #18
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`pursuant to 15 U.S.C. §§ 1114, 1116 and 1117. Joy Dog Food is further entitled to have its
`
`profits award enhanced and its damages award trebled as authorized by 15 U.S.C. § 1117.
`
`COUNT 2: FEDERAL UNFAIR COMPETITION
`(Lanham Act, 15 U.S.C. § 1125(a))
`
`Joy Dog Food re-alleges and incorporates by reference the preceding allegations
`
`74.
`
`of the Complaint as if fully set forth herein.
`
`75.
`
`Joy Food Company’s use of JOY in advertising, marketing, promotion, offering
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`for sale and sale of dog food is likely to cause confusion, or to cause mistake, or to deceive
`
`purchasers and potential purchasers and members of the public as to the affiliation, connection or
`
`association between Joy Food Company and Joy Dog Food, or as to the origin, sponsorship,
`
`authorization or approval of Joy Food Company’s goods by Joy Dog Food.
`
`76.
`
`77.
`
`Joy Dog Food has not authorized Joy Food Company’s use of JOY.
`
`On information and belief, Joy Food Company’s actions were and are a deliberate
`
`attempt to misappropriate and trade upon the goodwill established by Joy Dog Food.
`
`78.
`
`Joy Food Company’s actions, as alleged above, have caused and will continue to
`
`cause damages to Joy Dog Food as well as irreparable injury for which Joy Dog Food has no
`
`remedy at law, unless Joy Food Company is restrained by this Court.
`
`COUNT 3: FEDERAL TRADEMARK DILUTION
`(Lanham Act, 15 U.S.C. § 1125©)
`
`Joy Dog Food re-alleges and incorporates by reference the preceding allegations
`
`79.
`
`of the Complaint as if fully set forth herein.
`
`80.
`
`81.
`
`The JOY mark is distinctive.
`
`The JOY mark is also famous, in that it is widely recognized by the consuming
`
`public in the United States as a designation of pet food originating from Joy Dog Food. In
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 19 of 24 Page ID #19
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`addition to the actual recognition of the JOY mark by the consuming public, JOY is also famous
`
`because of the significant duration, extent, and geographic reach of advertising and publicity of
`
`JOY, and the substantial amount, volume, and geographic extent of pet food sales under the JOY
`
`mark.
`
`82.
`
`Joy Food Company’s manufacturing, producing, marketing, promoting,
`
`advertising, offering for sale, or selling of its pet food products under the infringing JOY marks
`
`began after JOY became famous. Joy Food Company’s actions dilute and are likely to dilute the
`
`distinctiveness of JOY by eroding the public’s exclusive identification of JOY with Joy Dog
`
`Food, tarnishing and degrading the positive associations of the mark, and otherwise lessening the
`
`capacity of the mark to identify and distinguish Joy Dog Food’s goods and services.
`
`83.
`
`Joy Food Company’s actions are likely to cause dilution, at least because of (1)
`
`the identity between Joy Food Company’s marks and the famous JOY mark, (2) the high degree
`
`of inherent and acquired distinctiveness of the famous JOY mark, (3) the extent to which Joy
`
`Dog Food is engaging in substantially exclusive use of the famous JOY mark, (4) the public’s
`
`high degree of recognition of the famous JOY mark, and (5) the association between Joy Food
`
`Company’s goods and the famous JOY mark.
`
`84.
`
`Joy Food Company’s dilution of the famous JOY mark is the direct and proximate
`
`cause of Joy Food Company’s willful intention to trade on the recognition of the famous JOY
`
`mark.
`
`85.
`
`Joy Food Company’s dilution of the famous JOY mark has caused and will
`
`continue to cause extensive damages and irreparable injury to Joy Dog Food if not restrained by
`
`this Court.
`
`86.
`
`Because of Joy Food Company’s infringing activities, Joy Dog Food is entitled to
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`
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 20 of 24 Page ID #20
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`injunctive relief pursuant to 15 U.S.C. § 1125©.
`
`COUNT 4: COMMON LAW TRADEMARK INFRINGEMENT
`
`Joy Dog Food re-alleges and incorporates by reference the preceding allegations
`
`
`87.
`
`of the Complaint as if fully set forth herein.
`
`88.
`
`Joy Dog Food owns and enjoys common law trademark rights in JOY in Illinois.
`
`The mark is distinct and serves a source-identifying function in the minds of the consuming
`
`public and would be entitled to registration with the State of Illinois pursuant to 765 ILCS
`
`1036/10.
`
`89.
`
`Joy Food Company’s actions have not been authorized by Joy Dog Food and are
`
`likely to cause confusion or mistake as to the source or origin of Joy Food Company’s products,
`
`as well as Joy Food Company’s affiliation with Joy Dog Food.
`
`90.
`
`Joy Food Company’s actions demonstrate an intentional, willful and malicious
`
`intent to trade upon the good will associated with Joy Dog Food’s mark.
`
`91.
`
`Joy Dog Food has been damaged and will continue to suffer harm due to Joy
`
`Food Company’s actions.
`
`92.
`
`Because of Joy Food Company’s actions, Joy Food Company has been unjustly
`
`enriched, and Joy Dog Food has suffered and will suffer damage to its business reputation and
`
`good will.
`
`93.
`
`Joy Food Company’s actions constitute trademark infringement, and Joy Dog
`
`Food has no adequate remedy at law.
`
`94.
`
`Because of Joy Food Company’s actions, Joy Dog Food is entitled to injunctive
`
`relief, an accounting for profits, damages, costs and reasonable attorneys’ fees.
`
`
`
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`20
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 21 of 24 Page ID #21
`
`COUNT 5: VIOLATION OF ILLINOIS
`UNIFORM DECEPTIVE TRADE PRACTICES ACT
`(815 ILCS § 510/3)
`
`Joy Dog Food re-alleges and incorporates by reference the preceding allegations
`
`95.
`
`of the Complaint as if fully set forth herein.
`
`96.
`
`Joy Food Company’s unauthorized use of Joy Dog Food’s marks, names, logos,
`
`and designs that are identical to or confusingly similar to Joy Dog Food’s Joy marks, in
`
`connection with products and/or services similar or identical to those of Joy Dog Food, has
`
`created actual confusion, a substantial likelihood of confusion, and deception in consumers’
`
`minds as to whether Joy Food Company’s services are endorsed by, sponsored by, or somehow
`
`affiliated with Joy Dog Food or whether Joy Food Company has permission from Joy Dog Food
`
`to use the infringing names and marks.
`
`97.
`
`This knowing and willful conduct constitutes a violation of the Illinois Uniform
`
`Deceptive Trade Practices Act, 815 ILCS § 510 et seq.
`
`98.
`
`Joy Dog Food has been and is being damaged by such violation and has no
`
`adequate remedy at law. Joy Food Company’s unlawful and willful conduct will continue to
`
`damage Joy Dog Food unless enjoined by this Court.
`
`99.
`
`Because of Joy Food Company’s actions, Joy Dog Food is entitled to injunctive
`
`relief.
`
`100.
`
`Joy Dog Food is further entitled to its costs and attorneys’ fees as authorized by
`
`815 ILCS § 510/3.
`
`COUNT 6: ILLINOIS DILUTION
`(765 ILCS § 1036/65)
`
`Joy Dog Food re-alleges and incorporates by reference the preceding allegations
`
`
`101.
`
`of the Complaint as if fully set forth herein.
`
`
`21
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 22 of 24 Page ID #22
`
`102.
`
`Joy Dog Food’s JOY mark has distinctiveness in the minds of the consuming
`
`public and would be entitled to registration with the State of Illinois pursuant to 765 ILCS
`
`1036/10.
`
`103.
`
`Joy Food Company’s unauthorized and deceptive use of JOY blurs and erodes the
`
`public’s exclusive identification of JOY with Joy Dog Food.
`
`104.
`
`Joy Food Company willfully intended to trade on Joy Dog Food’s reputation or
`
`cause dilution of the JOY mark, with full knowledge of Joy Dog Food’s prior rights in the JOY
`
`mark.
`
`105.
`
`Joy Food Company’s unauthorized and deceptive use of JOY is likely to cause
`
`injury to Joy Dog Food’s business reputation and dilute the distinctiveness of Joy Dog Food’s
`
`mark, unless the Court enjoins Joy Food Company’s unlawful activity.
`
`106.
`
`Joy Dog Food has no adequate remedy at law and is entitled to injunctive relief, in
`
`addition to an accounting for profits, damages, costs and reasonable attorneys’ fees. Joy Dog
`
`Food is further entitled to have its damages award trebled pursuant to 765 ILCS § 1036/70.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Joy Dog Food prays as follows:
`
`A. That the Court enter judgment in favor of Joy Dog Food and against Joy Food Company
`
`for all damages proximately caused by Joy Food Company and further award Joy Dog
`
`Food its attorney fees and costs;
`
`B. That the Court enter judgment that Joy Food Company’s actions have violated 15 U.S.C.
`
`§ 1114 and 15 U.S.C. § 1125(a);
`
`C. That the Court enter judgment that Joy Food Company has been and is engaging in unfair
`
`competition;
`
`
`22
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 23 of 24 Page ID #23
`
`D. That the Court, pursuant to 15 U.S.C. § 1117, grant damages to Joy Dog Food, consisting
`
`of Joy Food Company’s profits, any damages sustained by Joy Dog Food, and the cost of
`
`the action, said amount to be trebled; that the Court award Joy Dog Food its attorney
`
`fees; that the Court in the alternative award damages in such amount as the court in its
`
`discretion shall find to be just;
`
`E. That the Court enter judgment that Joy Food Company has violated the Illinois Uniform
`
`Deceptive Trade Practices Act and 765 ILCS 1036/10 and grant Joy Dog Food
`
`preliminary and permanent injunctive relief together with such damages as are proven at
`
`trial, said damages trebled; and that the Court award Joy Dog Food its attorney fees and
`
`costs;
`
`F. That the Court enter a preliminary and permanent injunction enjoining and restraining
`
`Defendants, their agents, servants, employees, attorneys, partners, licensees, divisions,
`
`affiliates, parent corporation(s), and all others in active concert or participation with any
`
`of them, from:
`
`i.
`
`using, in connection with the promotion, advertising, offering, or sale of their
`
`services and products, JOY or any other designation that is confusingly similar to,
`
`is likely to cause confusion with, or dilutes or is likely to dilute Joy Dog Food’s
`
`JOY marks, including but not limited to the domain getjoyfood.com;
`
`ii.
`
`expressly or by implication, representing that Joy Food Company or its goods or
`
`services are those of or are affiliated with, or authorized, licensed, endorsed or
`
`sponsored by Joy Dog Food; and
`
`iii.
`
`otherwise infringing upon Joy Dog Food’s trademark rights or unfairly competing
`
`with Joy Dog Food in any manner whatsoever.
`
`
`23
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`Case 3:20-cv-00600-GCS Document 1 Filed 06/22/20 Page 24 of 24 Page ID #24
`
`G. That the Court enter a