`
`Timothy J. Lowry
`Colin J. Steele (pro hac vice forthcoming)
`DLA PIPER LLP (US)
`1251 Avenue of the Americas, 27th Floor
`New York, NY 10020-1104
`timothy.lowry@us.dlapiper.com
`colin.steele@us.dlapiper.com
`
`Gina L. Durham (pro hac vice forthcoming)
`DLA PIPER LLP (US)
`555 Mission Street, Suite 2400
`San Francisco, CA 94105-2933
`gina.durham@us.dlapiper.com
`
`Attorneys for Plaintiff
`Consalo Family Farms, LLC.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`
`CONSALO FAMILY FARMS, LLC,
`
`Plaintiff,
`
`v.
`
`WILLIAM H. KOPKE, JR. INC.,
`
`Defendant.
`
`HONORABLE
`Civil Action No.
`1:22-cv-2206
`
`COMPLAINT
`
`DEMAND FOR JURY TRIAL
`
`Document Electronically Filed
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`Plaintiff Consalo Family Farms, LLC (“Consalo”), by its attorneys, DLA Piper LLP (US),
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`complaining of William H. Kopke, Jr., Inc. (“Kopke”), says:
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`NATURE OF THE ACTION
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`1.
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`This is an action for declaratory judgment arising under the Declaratory Judgment
`
`Act, 28 U.S.C. § 2201 et seq. and the Lanham Act, 15 U.S.C. § 1051, et seq. Consalo seeks a
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`1
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`declaratory judgment of non-infringement and no dilution of Kopke’s alleged trademark
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`“sweetums” in respect of Consalo’s trademark Little Smoochies.
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`PARTIES
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`2.
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`Plaintiff Consalo Family Farms, LLC is a New Jersey limited liability company
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`having an office at 5201 Moss Mill Rd., Egg Harbor City, New Jersey 08215.
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`3.
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`Defendant William H. Kopke, Jr., Inc. is, upon information and belief, a New York
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`corporation with an address at 1000 Northern Blvd., Suite 200, Great Neck, NY 11021.
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`JURISDICTION AND VENUE
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`4.
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`5.
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`This action arises under the Lanham Act, 15 U.S.C. § 1051, et seq.
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`A real, immediate, substantial, and justiciable controversy exists between Consalo
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`and Kopke with respect to the alleged infringement and dilution of Kopke’s purported “sweetums”
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`trademark, as set forth in greater detail below.
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`6.
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`This Court has subject matter jurisdiction over this action pursuant to
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`28 U.S.C. §§ 1331 and 1338(a) because this action arises under the Lanham Act, 15 U.S.C. § 1051,
`
`et seq., with a specific remedy sought based upon the laws authorizing actions for declaratory
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`judgment in the courts of the United States, 28 U.S.C. §§ 2201 and 2202, the basis for which is
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`fully set forth below.
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`7.
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`This Court has personal jurisdiction over Kopke because it transacts substantial
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`business throughout the State of New Jersey and derives financial benefits from residents of the
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`State of New Jersey. Kopke maintains at least three offices or distribution centers in the state of
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`New Jersey. See Ex. 01. Upon information and belief, Kopke sells and distributes sweetums-
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`branded products from these New Jersey locations. Upon information and belief, Kopke’s
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`products are available for purchase at stores throughout New Jersey. Jurisdiction is also proper
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`2
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`over Kopke in light of the actions it has taken with respect to Consalo, a New Jersey LLC
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`headquartered in this state.
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`8.
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`Venue in this Court exists under 28 U.S.C. §§ 1391(b)(1), (c)(2), as Kopke conducts
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`business within this District and is subject to the Court’s personal jurisdiction.
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`9.
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`Consalo seeks a declaratory judgment under the provisions of 28 U.S.C. §§ 2201
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`and 2202.
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`GENERAL ALLEGATIONS
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`A.
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`Consalo’s Business and the Little Smoochies Marks.
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`10.
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`11.
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`Consalo, grows, packs and distributes a wide variety of fruits and vegetables.
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`Consalo sells a line of citrus fruit—namely clementines, lemons, limes, oranges,
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`and grapefruit—under the trademark “Little Smoochies,” which is displayed together on
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`packaging with cartoons of little citrus fruits bearing “smooch” marks on their faces.
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`12.
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`Consalo has already applied for, and successfully obtained, a U.S. trademark
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`registration for “Little Smoochies.” See Ex. 02 (Reg. No. 6,418,184, the “Little Smoochies
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`Registration”). Kopke did not oppose Consalo’s application for the Little Smoochies Registration
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`in the allotted time to do so. Moreover, the examining attorney at the United States Patent &
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`Trademark Office (“USPTO”) did not cite any of Kopke’s trademarks against Consalo’s
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`application.
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`13.
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`Consalo also has two pending applications for “Little Smoochies,” Serial Nos.
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`90,775,302 (the “’302 Application”) and 90,775,311 (the “’311 Application”) (together, the “Little
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`Smoochies Applications”), both of which are currently pending before the USPTO. See Exs. 03,
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`04.
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`14.
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`Consalo also has common law rights in the Little Smoochies trademark.
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`3
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`15.
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`Collectively, the designations referenced in paragraphs 12-14 are referred to herein
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`as the “Little Smoochies Marks.”
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`B.
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`Kopke’s Marks.
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`16.
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`Kopke has asserted that there is a likelihood of confusion between Little Smoochies
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`Registration and the ’311 Application, on the one hand, and the trademark which is the subject of
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`U.S. Reg. No. 5,160,111 (the “’111 Registration”), on the other. A copy of the ’111 Registration
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`is attached hereto as Exhibit 05.
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`17.
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`Kopke has also claimed common law rights in the mark covered by the ’111
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`Registration.
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`18.
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`Collectively, the designations referenced in paragraphs 16 - 17 are referred to herein
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`as the “SWEETUMS Mark.”
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`C.
`
`The Parties’ Respective Uses Of Their Distinct Marks.
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`19.
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`Based on the Marks at issue, and the manner in which those Marks are used and
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`presented in the marketplace, there is no likelihood of confusion between the Marks.
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`20.
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`The text portions of the Marks at issue are highly dissimilar. As an initial matter,
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`the SWEETUMS Mark only incorporates a single word—sweetums—while the Little Smoochies
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`Marks incorporate two—Little Smoochies. The word “Little” has no corollary in the SWEETUMS
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`Mark.
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`21.
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`As to the text of the Marks, the only similarity Kopke has asserted is between the
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`words “sweetums” and “Smoochies,” and the sole purported similarity Kopke has pointed to in
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`this respect is the fact that both words start and end with the letter “S.” See Ex. 06 (cease and
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`desist letter sent to Consalo by Kopke, dated April 7, 2022).
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`22.
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`However, the sound at the start of both words is actually produced by a combination
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`of two letters, and those distinct combinations—“sm” and “sw,” respectively—produce entirely
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`4
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`different sounds. Moreover, the letters in the center of the two words, “t” and “ch,” produce
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`different sounds, and the two words contain different combinations of vowels.
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`23.
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`The words “sweetums” and “Smoochies” also have entirely different meanings.
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`“Sweetums” appears to be a portmanteau of the words “sweet” and “yummy,” while “Smoochies”
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`is another word for “kisses.”
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`24.
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`25.
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`Additionally, “sweetums” is only eight letters, while “Smoochies” is nine.
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`The parties also present these words on packaging and in advertising in distinct
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`visual fashions.
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`26.
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`In the SWEETUMS Mark, the single word “sweetums” appears in orange block
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`letters, all in lower case.
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`27.
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`By contrast, both words of the Little Smoochies Marks are written out in brown or
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`green, “Smoochies” is written in cursive, and only the first letter of each of the two words is
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`capitalized.
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`5
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`28.
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`29.
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`The other visual elements of the respective Marks are also highly distinct.
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`Kopke has claimed that its “design is unique in the fresh fruit industry” and that
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`“consumers immediately recognize that fruits wearing eyewear are associated with [Kopke],” and
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`has taken the position that it is therefore entitled to prohibit Consalo from using any and all marks
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`incorporating “fruits wearing eyewear” in connection with the sale of fresh fruit. See Ex. 06.
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`30.
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`In reality, a host of other parties hold trademark registrations for fresh fruit which
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`incorporate “fruits wearing eyewear,” for example, U.S. Reg. No. 5,306,828 (a copy of which is
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`attached hereto as Exhibit 07):
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`6
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`U.S. Reg. No. 4,480,847 (a copy of which is attached hereto as Exhibit 08):
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`and U.S. Reg. No. 5,911,383 (a copy of which is attached hereto as Exhibit 09):
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`See also, e.g., U.S. Reg. Nos. 4,935,390 (Ex. 10); 5,121,799 (Ex. 11); 5,022,113 (Ex. 12).
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`31.
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`Given that the market is already filled with parties using marks incorporating “fruits
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`wearing eyewear,” Kopke has no rights to prohibit others from using such marks.
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`32.
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`There are, moreover, numerous differences between the “characters” in the Marks
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`at issue.
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`7
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`33.
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`The characters in the SWEETUMS Mark are orange “oranges,” while the
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`characters in the Little Smoochies marks are a green lime and a clementine, respectively.
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`8
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`34.
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`35.
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`The overall visual styles of the Marks are also notably different.
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`The characters in the SWEETUMS Mark appear flat and two dimensional, have
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`hands which are giving a “thumbs up” sign, and they are wearing dark sunglasses which obscure
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`their eyes. By contrast, the characters in the Little Smoochies Marks appear three dimensional and
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`more “lifelike,” have no hands, and one can see the characters’ eyes through the clear glasses that
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`they wear. There are also three characters in the SWEETUMS Mark, while the Little Smoochies
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`Marks only include one.
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`36.
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`The characters in the Marks are also tailored to align with the distinct words which
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`accompany them. The characters in the SWEETUMS Mark appear alongside speech-bubbles with
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`the words “sweet” and “yummy” in them, clearly referencing the two composite parts of the
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`portmanteau “sweetums.” By contrast, the characters in the Little Smoochies marks are covered
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`with tiny kiss marks, referencing the “Smoochies” in their name.
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`37.
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`The Little Smoochies Marks also appear on packaging beneath Consalo’s house
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`mark “Consalo Family Farms.”
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`9
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`38.
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`The USPTO examiner did not cite the SWEETUMS Mark against any of Consalo’s
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`applications for the Little Smoochies Marks in reviewing them.
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`39.
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`Furthermore, upon information and belief, the consumers of the parties’ products
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`would take care in purchasing the different products offered under the respective Marks and are
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`not likely to be confused.
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`40.
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`Upon information and belief, no consumers have been confused as to the source or
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`origin of the parties’ products, or as to an association or affiliation between Consalo and Kopke.
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`D.
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`Kopke’s Repeated Threats Of Formal Legal Action
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`41.
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`Kopke sent Consalo a cease-and-desist letter on April 7, 2022, demanding that
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`Consalo surrender the Little Smoochies Registration, withdraw the ’311 Application, and cease all
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`uses of the Little Smoochies Marks. See Ex. 06. That letter further threatened that if Consalo does
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`not do so, Kopke “intends to oppose U.S. Application No. 90/775,311 and petition to cancel
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`Registration No. 6,418,184” and is prepared “to take such action as deemed necessary for the
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`preservation and enforcement of its rights.” See id.
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`42.
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`Consalo responded to Kopke’s letter on April 11, 2022, laying out the reasons that
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`there is no likelihood of confusion between the parties’ Marks. See Ex. 13. In that letter, counsel
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`for Consalo also offered to schedule a time to meet and confer to discuss the matter further. See
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`id.
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`43.
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`Kopke’s counsel responded that Consalo’s letter “d[id] not warrant further
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`discussion” and that Kopke “is opposing [Consalo’s] related trademark application … and will be
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`simultaneously initiating a cancelation action against Registration No. 6,418,184.” See Ex. 14.
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`44.
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`Based on Kopke’s explicit threats, Consalo has a reasonable apprehension of
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`litigation. Specifically, Consalo has a reasonable apprehension Kopke will commence a suit
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`10
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`against Consalo alleging trademark infringement, unfair competition, and false designation of
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`origin.
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`45.
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`The dispute between Consalo and Kopke is real and substantial, due to the parties
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`having adverse legal interests. The controversy is of sufficient immediacy and reality to warrant
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`the issuance of a declaratory judgment. Accordingly, a case or controversy under 28 U.S.C. §
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`2201 exists.
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`46.
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`Consalo has expended significant monies in preparation for use of the Little
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`Smoochies Marks, including in the time following issuance of the Little Smoochies Registration.
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`47.
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`A declaration of rights is necessary and appropriate to declare the rights of the
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`parties in a manner that avoids irreparable injury to Consalo, for which there would be no adequate
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`remedy at law, and that resolves the foregoing disputes in a manner consistent with equity.
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`CLAIMS FOR RELIEF
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`COUNT I
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`(Declaratory Judgment of Noninfringement of Federal Trademarks, 15 U.S.C. § 1114)
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`48.
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`Consalo incorporates by reference herein all allegations set forth in ¶¶ 1-47 of this
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`Complaint.
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`49.
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`This claim arises under the Lanham Act, 15 U.S.C. § 1051 et seq., and the
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`Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.
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`50.
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`There is a real, immediate, substantial, and justiciable controversy between Consalo
`
`and Kopke concerning whether Consalo’s use of the Little Smoochies marks infringes the
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`SWEETUMS Mark.
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`51.
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`Kopke has repeatedly asserted to Consalo that Consalo’s use of the Little
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`Smoochies marks are “confusingly similar” to the SWEETUMS Mark. Kopke has moreover
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`11
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`demanded that Consalo surrender the Little Smoochies Registration, and that Consalo withdraw
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`the ’311 Application. Kopke has explicitly threatened formal legal action if Consalo does not
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`comply with its demands.
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`52.
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`Consalo’s use of the Little Smoochies Marks has not caused, and is not likely to
`
`cause, confusion, or to cause mistake, or to deceive in violation of 15 U.S.C. § 1114(1).
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`53.
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`Accordingly, Consalo is not liable for federal trademark infringement of a
`
`registered trademark in connection with its use of the Little Smoochies Marks.
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`COUNT II
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`(Declaratory Judgment of Noninfringement of Trademarks and Unfair Competition, 15
`
`U.S.C. § 1125(a)(1)(A))
`
`54.
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`Consalo incorporates by reference herein all allegations set forth in ¶¶ 1-53 of this
`
`Complaint.
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`55.
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`Consalo’s use in commerce of the Little Smoochies Marks is not likely to cause
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`confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of
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`Consalo with Kopke, or as to the origin, sponsorship, or approval of Consalo, its products, and its
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`commercial activities, by or with Kopke, in violation of 15 U.S.C. § 1125(a)(1)(A).
`
`56.
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`Accordingly, Consalo is not liable for federal trademark infringement, false
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`designation of origin, or unfair competition in connection with its use of the Little Smoochies
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`Marks.
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`12
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`COUNT III
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`(Declaratory Judgment of No Dilution, 15 U.S.C. § 1125(c))
`
`57.
`
`Consalo incorporates by reference all allegations set forth in ¶¶ 1-56 of this
`
`Complaint.
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`58.
`
`The SWEETUMS Mark is not distinctive and famous within the meaning of
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`Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(c).
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`59.
`
`The SMEETUMS Marks waw not famous before Consalo began advertising or
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`using the Little Smoochies Marks.
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`60.
`
`Consalo’s use of the Little Smoochies Marks does not dilute and is not likely to
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`dilute the SWEETUMS Mark and such use is not likely to lessen the capacity of the SWEETUMS
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`Mark to identify and distinguish Kopke’s goods and services to the extent that such Mark presently
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`does so.
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`61.
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`Accordingly, Consalo is not liable for federal dilution in connection with its use of
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`the Little Smoochies Marks.
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`PRAYER FOR RELIEF
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`WHEREFORE, Consalo requests the following relief in conjunction with the allegations
`
`set forth above in this Complaint:
`
`A.
`
`Entry of an Order of this Court declaring that Consalo’s use of the Little Smoochies
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`Marks does not infringe the SWEETUMS Mark under 15 U.S.C. § 1114;
`
`B.
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`Entry of an Order of this Court declaring that Consalo’s use of the Little Smoochies
`
`Marks does not infringe the SWEETUMS Mark under 15 U.S.C. § 1125(a);
`
`C.
`
`Entry of an Order of this Court declaring that Consalo’s use of the Little Smoochies
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`Marks does not dilute the SWEETUMS Mark under 15 U.S.C. § 1125(c);
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`13
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`D.
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`Entry of an Order enjoining Kopke, its agents, servants, officers, directors,
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`employees, attorneys, privies, representatives, successors, assigns, and parent and subsidiary
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`entities, and any and all persons in act of concert of participation with any of them, from
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`threatening to assert or asserting the SWEETUMS Mark against Consalo, its agents, employees,
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`customers, partners, resellers, or distributors, for their use of the Little Smoochies Marks;
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`E.
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`Entry of an Order of this Court assessing all costs associated with this action to
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`Consalo;
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`F.
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`Entry of an Order of this Court declaring this case exceptional and awarding
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`Consalo reasonable attorneys’ fees; and
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`G.
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`All other relief, both interim and permanent, as the Court deems just and proper.
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`DEMAND FOR JURY TRIAL
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`Plaintiff hereby makes a demand for a trial by jury as to all issues in this lawsuit so triable.
`
`Dated: April 15, 2022
`
` DLA PIPER LLP (US)
`
`/s/ Timothy J. Lowry
`Timothy J. Lowry
`Gina L. Durham (pro hac vice forthcoming)
`Colin J. Steele (pro hac vice forthcoming)
`
`Attorneys for Plaintiff
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`CERTIFICATION PURSUANT TO L. CIV. R. 11.2
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`I certify that, to the best of my knowledge, this matter is not the subject of any other action
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`pending in any court or of any pending arbitration or administrative proceeding.
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`Dated: April 15, 2022
`
`/s/ Timothy J. Lowry
` Timothy J. Lowry
`
`15
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