Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`Greenbelt Division
`
`Civil Action No. 8:22-CV-1795
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`JEMIE B.V.,
`Beneluxweg 37, 4904 SJ, Oosterhout,
`Netherlands
`
`Plaintiff,
`
`v.
`
`FOOP ORGANIC BIOSCIENCES, INC.,
`2666 Pittman Drive
`Silver Spring, Maryland 20910
`
`SERVE:
`
`The Corporation Trust Company
`Corporation Trust Center
`1209 Orange Street
`Wilmington, Delaware 19801
`
`Defendant.
`
`COMPLAINT FOR VIOLATION OF: (I) SECTION 32
`OF THE LANHAM ACT; (II) SECTION 43(a) OF THE
`LANHAM ACT; AND (III) MARYLAND COMMON LAW
`
`Plaintiff Jemie B.V. alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff Jemie B.V. is a Netherlands limited liability company located and doing
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`business at Beneluxweg 37, 4904 SJ, Oosterhout, The Netherlands (herein “Jemie”).
`
`2.
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`Defendant Foop Organic Biosciences, Inc. is a Delaware corporation, located and
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`doing business at 2666 Pittman Drive, Silver Spring, Maryland 20910 (herein “Defendant” or
`
`“Foop”).
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`Greenbelt Division
`
`Civil Action No. 8:22-CV-1795
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`JEMIE B.V.,
`Beneluxweg 37, 4904 SJ, Oosterhout,
`Netherlands
`
`Plaintiff,
`
`v.
`
`FOOP ORGANIC BIOSCIENCES, INC.,
`2666 Pittman Drive
`Silver Spring, Maryland 20910
`
`SERVE:
`
`The Corporation Trust Company
`Corporation Trust Center
`1209 Orange Street
`Wilmington, Delaware 19801
`
`Defendant.
`
`COMPLAINT FOR VIOLATION OF: (I) SECTION 32
`OF THE LANHAM ACT; (II) SECTION 43(a) OF THE
`LANHAM ACT; AND (III) MARYLAND COMMON LAW
`
`Plaintiff Jemie B.V. alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff Jemie B.V. is a Netherlands limited liability company located and doing
`
`business at Beneluxweg 37, 4904 SJ, Oosterhout, The Netherlands (herein “Jemie”).
`
`2.
`
`Defendant Foop Organic Biosciences, Inc. is a Delaware corporation, located and
`
`doing business at 2666 Pittman Drive, Silver Spring, Maryland 20910 (herein “Defendant” or
`
`“Foop”).
`
`
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 2 of 11
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`JURISDICTION AND VENUE
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`3.
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`This Court has jurisdiction because this action arises under the Trademark Act of
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`1946, as amended, 15 U.S.C. §§ 1051-1141 (the “Lanham Act”), and jurisdiction is proper in
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`accordance with 15 U.S.C. § 1121 and 28 U.S.C. §§ 1338(a) and (b). Jurisdiction for the Maryland
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`common-law claims is proper in accordance with the principles of supplemental jurisdiction
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`pursuant to 28 U.S.C. § 1367(a).
`
`4.
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`Venue is proper in this Court (a) under 28 U.S.C. § 1391(a) because Defendant
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`resides in this judicial district or (b) under 28 U.S.C. § 1391(b) because a substantial part of the
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`events or omissions giving rise to the claims occurred in this judicial district.
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`FACTS
`
`5.
`
`Jemie is the owner of the well-known CANNA family of marks and names for a
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`wide variety of organic and non-organic plant care and growth products, including nutrients and
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`fertilizers, and related goods and services.
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`6.
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`For many years, Jemie has licensed its CANNA family of marks and names for use
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`throughout the United States, including in Maryland and surrounding states, on an extensive line
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`of plant nutrients, fertilizers and related plant care products.1 Jemie is recognized as a worldwide
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`leader in plant technologies for cultivating plants in cocoponics, hydroponics and soil.
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`7.
`
`Jemie also provides, through its exclusive licensee, information, education,
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`consultation and general advice to consumers relating to growing and cultivating plants and crops,
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`the treatment of seeds and seedlings, and the benefit of certain plants and vegetables for people,
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`all under the CANNA family of marks and names.
`
`1 See, e.g., http://www.cannagardening.com/products.
`
`-2-
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`
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 3 of 11
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`Jemie’s CANNA Family of Marks
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`8.
`
`Jemie owns Registration Nos. 4,986,807, 5,038,951, 5,129,939, 5,399,942,
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`6,127,303, 5,389,880, 5,399,941, 5,924,171, and 6,279,948 for the CANNA family of marks, as
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`shown below, for the aforesaid goods and services, and related goods and services in the United
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`States Patent and Trademark Office:
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`Mark
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`Registration No.
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`Registration Date
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`CANNA
`CANNA
`CANNA and Design
`CANNA START
`CANNAZYM
`CANNABOOST
`BIOCANNA
`CANNATALK
`FUNDACIÓN CANNA
`
`5,129,939
`6,127,303
`5,038,951
`5,399,942
`5,389,880
`5,399,941
`5,924,171
`4,986,807
`6,279,948
`
`January 24, 2017
`August 18, 2020
`September 13, 2016
`February 13, 2018
`January 30, 2018
`February 13, 2018
`December 3, 2019
`June 28, 2016
`March 2, 2021
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`9.
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`These registrations are valid and subsisting, and constitute prima facie evidence of
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`Jemie’s exclusive right to use the marks for the goods and services they cover, pursuant to 15
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`U.S.C. § 1057(b).
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`10.
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`The CANNA-formative names within the CANNA family of marks and names
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`include, but are not limited to, CANNA CONTINENTAL.
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`11.
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`Since long before Defendant’s acts complained of herein, Jemie has licensed the
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`use of the CANNA family of marks and names in connection with the sale of tens of millions of
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`dollars-worth of the aforesaid goods and services throughout the United States.
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`-3-
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 4 of 11
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`12.
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`Since long before Defendant’s acts complained of herein, Jemie’s U.S. licensees
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`have spent many millions of dollars in advertising and promoting the aforesaid goods services
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`throughout the United States.
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`13.
`
`Since long before Defendant’s acts complained of herein, by virtue of Jemie’s
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`licensees’ aforesaid sales, advertising and promotion, the CANNA family of marks and names had
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`acquired secondary meaning and come to represent an extraordinarily valuable goodwill owned
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`by Jemie.
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`Defendant’s Use of the Infringing CANNA Mark, Name and Domain Name
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`14.
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`Long after Jemie’s aforesaid use of the CANNA family of marks and names,
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`Defendant began to market and sell plant nutrients, sweeteners and related products (“Defendant’s
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`Goods”) in connection with the CANNA mark. An example of this use is shown below:
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`-4-
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 5 of 11
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`15.
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`Long after Jemie’s aforesaid use of the CANNA family of marks and names,
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`Defendant adopted and began to use, and now continues to use, the CANNA-formative trade name
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`FOOP CANNA to advertise, promote and sell Defendant’s Goods.
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`16. Long after Jemie’s aforesaid use of the CANNA family of marks and names,
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`Defendant also adopted and began to use, and now continues to use, the CANNA-formative
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`domain name <foopcanna.com>.
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`Jemie’s Prior Objection to Defendant
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`17.
`
`Jemie has objected to Defendant’s infringing use of the CANNA mark, CANNA-
`
`formative name and the domain name.
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`18.
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`To date, despite multiple attempts to settle this dispute through negotiations, and
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`many promises from Defendant to stop its use of the CANNA name, mark, and domain name,
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`Defendant has not stopped using the aforesaid CANNA mark, CANNA-formative name and
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`domain name, as shown below:
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`-5-
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 6 of 11
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`Defendant’s Intentional Infringement
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`19.
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`Defendant’s aforesaid use of the CANNA mark, CANNA-formative name and
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`domain name have been without Jemie’s authorization or consent.
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`20.
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`Defendant’s adoption of the CANNA mark, CANNA-formative name and domain
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`name was, on information and belief, with full knowledge of Jemie’s prior rights in the CANNA
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`family of marks and names, and its continued use of this mark, the names and domain name is
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`willful and intentionally disregards Jemie’s prior rights in the CANNA family of marks and names.
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`-6-
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`
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 7 of 11
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`COUNT I
`Trademark Infringement in Violation of Section 32 of the Lanham Act
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`Jemie re-allege paragraphs 1 through 20, as if fully set forth herein.
`
`Defendant’s aforesaid use of the CANNA mark, CANNA-formative name and
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`21.
`
`22.
`
`domain name with Defendant’s Goods is likely to cause confusion, mistake or deception with
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`Jemie or the Jemie’s use of the CANNA family of marks and names with the aforesaid goods and
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`services, or to result in the mistaken belief by purchasers and others that Defendant or its goods or
`
`services are connected with, sponsored by or approved by Jemie.
`
`23.
`
`Defendant’s aforesaid use of the CANNA mark, CANNA-formative name and
`
`domain name constitutes infringement of the registered the CANNA family of marks in violation
`
`of Section 32 of the Lanham Act, 15 U.S.C. § 1114.
`
`24.
`
`Defendant’s aforesaid acts are greatly and irreparably damaging to Jemie and will
`
`continue to damage Jemie, until enjoined by this Court; wherefore, Jemie is without an adequate
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`remedy at law.
`
`COUNT II
`Unfair Competition in Violation of Section 43(A) of the Lanham Act
`
`25.
`
`Jemie re-alleges paragraphs 1 through 7 and 10 through 20, as if fully set forth
`
`herein.
`
`26.
`
`Defendant’s aforesaid use of the CANNA mark, CANNA-formative name and
`
`domain name tends falsely to represent Defendant and/or its goods as being affiliated, connected
`
`or associated with, or sponsored or approved by Jemie in violation of Section 43(a) of the Lanham
`
`Act, 15 U.S.C. § 1125(a).
`
`-7-
`
`
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 8 of 11
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`27.
`
`Defendant’s aforesaid acts are greatly and irreparably damaging to Jemie and will
`
`continue to damage Jemie until enjoined by this Court; wherefore, Jemie is without an adequate
`
`remedy at law.
`
`COUNT III
`Trademark Infringement and Unfair Competition in
`Violation of the Common Law of Maryland
`
`28.
`
`Jemie re-allege paragraphs 1 through 7 and 10 through 20, as if fully set forth
`
`herein.
`
`29.
`
`Defendant’s aforesaid use of the CANNA mark, CANNA-formative name and
`
`domain name tends falsely to represent Defendant and/or its goods as being affiliated, connected
`
`or associated with, or sponsored or approved by Jemie.
`
`30.
`
`Defendant’s acts constitute unfair competition in violation of the common law of
`
`Maryland.
`
`31.
`
`Defendant’s aforesaid acts are greatly and irreparably damaging to Jemie and will
`
`continue to damage Jemie until enjoined by this Court; wherefore, Jemie is without an adequate
`
`remedy at law.
`
`WHEREFORE, Jemie prays that:
`
`1.
`
`Defendant, and its directors, officers, agents, servants, employees, attorneys, and all
`
`others in active concert and participation with any of them, including but not limited to Laurence
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`Footer, individually and collectively, be preliminarily, during the pendency of this action, and,
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`thereafter, permanently enjoined from:
`
`(a)
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`Using: (1) CANNA; (2) FOOP CANNA; (3) the domain name
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`<foopcanna.com>; (4) social media account names or handles or hashtags incorporating “canna;”
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`or (5) any mark, logo, trade name, word, design, domain name, or social media account name or
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`-8-
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`
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 9 of 11
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`handle or hashtag that incorporates “canna” or is similar to the CANNA family of marks and
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`names, or is otherwise likely to cause confusion with the CANNA family of marks and names;
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`(b)
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`using any other mark, trade dress, hashtags, domain name, or name that is
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`part of Jemie’s CANNA family of marks and names, or any other colorable imitation of such
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`marks, names, or domain names, or any other mark, name or domain name in a manner that is
`
`likely to confuse, mislead or deceive others into believing that Defendant or its products emanate
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`from, or are connected with, sponsored by or approved by Jemie;
`
`(c)
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`doing any other act or thing likely to confuse, mislead or deceive others into
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`believing that Defendant or their products emanate from, or are connected with, sponsored by or
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`approved by Jemie; and
`
`(d)
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`assisting, aiding, or abetting any other person or entity in engaging in any
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`of the activities prohibited in paragraphs (a) through (c).
`
`2.
`
`Defendant, and all others holding by, through or under Defendant, be required,
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`jointly and severally, to:
`
`(a)
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`account for and pay over to Jemie all profits derived by Defendant, together
`
`with prejudgment interest, from the acts complained of herein in accordance with 15 U.S.C.
`
`§ 1117(a) and Maryland common law, and Jemie asks that this profits award be trebled in
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`accordance with 15 U.S.C. § 1117(a);
`
`(b)
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`pay to Jemie the amount of actual damages suffered by Jemie, together with
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`prejudgment interest, as a result of Defendant’s acts complained of herein in accordance with 15
`
`U.S.C. § 1117(a) and Maryland common law, and Jemie asks that this damages award be trebled
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`in accordance with 15 U.S.C. § 1117(a);
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`-9-
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`
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 10 of 11
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`(c)
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`pay to Jemie the costs of this action, together with reasonable attorneys’
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`fees, in accordance with 15 U.S.C. § 1117(a);
`
`(d)
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`pay restitution to Jemie, in accordance with Maryland common law, for all
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`loss, damage, and injury caused by Defendant’s acts;
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`(e)
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`deliver up for destruction all labels, signs, advertisements and the means of
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`making the same in Defendant’s possession which bear CANNA or FOOP CANNA, or any logo,
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`design, or mark that simulates the CANNA family of marks and names, in accordance with 15
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`U.S.C. § 1118; and
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`(f)
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`file with this Court and serve on Jemie a report in writing under oath setting
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`forth in detail the manner and form in which they have complied with the terms of any injunction
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`entered by this Court, in accordance with 15 U.S.C. § 1116(a).
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`3.
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`Jemie be granted such other and further relief as this Court deems just.
`
`By:
`
`Respectfully submitted,
`
`SHULMAN, ROGERS, GANDAL,
`PORDY & ECKER, P.A.
`
` /s/ Kristin E. Draper
`Kristin E. Draper (Bar No. 16052)
`Anna R. Margolis (Bar No. 21708)
`12505 Park Potomac Avenue, Sixth Floor
`Potomac, Maryland 20854
`TEL: (301) 230-5200
`FAX: (301) 230-2891
`Email: kdraper@shulmanrogers.com
`amargolis@shulmanrogers.com
`
`Attorneys for Plaintiff
`
`-10-
`
`
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`Case 8:22-cv-01795-PX Document 1 Filed 07/21/22 Page 11 of 11
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`OF COUNSEL:
`
`PATTISHALL, McAULIFFE, NEWBURY,
` HILLIARD & GERALDSON LLP,
`
`By:
`
` /s/ Jonathan S. Jennings
`Jonathan S. Jennings (6204474)
`(pro hac vice to be submitted)
`Phillip Barengolts (6274516)
`(pro hac vice to be submitted)
`Joshua A.R. Aldort (6238962)
`(pro hac vice to be submitted)
`200 South Wacker Drive, Suite 2900
`Chicago, Illinois 60606
`(312) 554-8000
`
`Attorneys for Plaintiff
`
`Dated: July 21, 2022
`
`-11-
`
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