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Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 1 of 15 PageID: 1
`
`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
`
`Plaintiff Consalo Family Farms, LLC (“Consalo”), by its attorneys, DLA Piper LLP (US),
`
`complaining of William H. Kopke, Jr., Inc. (“Kopke”), says:
`
`NATURE OF THE ACTION
`
`1.
`
`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
`
`1
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 2 of 15 PageID: 2
`
`declaratory judgment of non-infringement and no dilution of Kopke’s alleged trademark
`
`“sweetums” in respect of Consalo’s trademark Little Smoochies.
`
`PARTIES
`
`2.
`
`Plaintiff Consalo Family Farms, LLC is a New Jersey limited liability company
`
`having an office at 5201 Moss Mill Rd., Egg Harbor City, New Jersey 08215.
`
`3.
`
`Defendant William H. Kopke, Jr., Inc. is, upon information and belief, a New York
`
`corporation with an address at 1000 Northern Blvd., Suite 200, Great Neck, NY 11021.
`
`JURISDICTION AND VENUE
`
`4.
`
`5.
`
`This action arises under the Lanham Act, 15 U.S.C. § 1051, et seq.
`
`A real, immediate, substantial, and justiciable controversy exists between Consalo
`
`and Kopke with respect to the alleged infringement and dilution of Kopke’s purported “sweetums”
`
`trademark, as set forth in greater detail below.
`
`6.
`
`This Court has subject matter jurisdiction over this action pursuant to
`
`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
`
`judgment in the courts of the United States, 28 U.S.C. §§ 2201 and 2202, the basis for which is
`
`fully set forth below.
`
`7.
`
`This Court has personal jurisdiction over Kopke because it transacts substantial
`
`business throughout the State of New Jersey and derives financial benefits from residents of the
`
`State of New Jersey. Kopke maintains at least three offices or distribution centers in the state of
`
`New Jersey. See Ex. 01. Upon information and belief, Kopke sells and distributes sweetums-
`
`branded products from these New Jersey locations. Upon information and belief, Kopke’s
`
`products are available for purchase at stores throughout New Jersey. Jurisdiction is also proper
`
`2
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 3 of 15 PageID: 3
`
`over Kopke in light of the actions it has taken with respect to Consalo, a New Jersey LLC
`
`headquartered in this state.
`
`8.
`
`Venue in this Court exists under 28 U.S.C. §§ 1391(b)(1), (c)(2), as Kopke conducts
`
`business within this District and is subject to the Court’s personal jurisdiction.
`
`9.
`
`Consalo seeks a declaratory judgment under the provisions of 28 U.S.C. §§ 2201
`
`and 2202.
`
`GENERAL ALLEGATIONS
`
`A.
`
`Consalo’s Business and the Little Smoochies Marks.
`
`10.
`
`11.
`
`Consalo, grows, packs and distributes a wide variety of fruits and vegetables.
`
`Consalo sells a line of citrus fruit—namely clementines, lemons, limes, oranges,
`
`and grapefruit—under the trademark “Little Smoochies,” which is displayed together on
`
`packaging with cartoons of little citrus fruits bearing “smooch” marks on their faces.
`
`12.
`
`Consalo has already applied for, and successfully obtained, a U.S. trademark
`
`registration for “Little Smoochies.” See Ex. 02 (Reg. No. 6,418,184, the “Little Smoochies
`
`Registration”). Kopke did not oppose Consalo’s application for the Little Smoochies Registration
`
`in the allotted time to do so. Moreover, the examining attorney at the United States Patent &
`
`Trademark Office (“USPTO”) did not cite any of Kopke’s trademarks against Consalo’s
`
`application.
`
`13.
`
`Consalo also has two pending applications for “Little Smoochies,” Serial Nos.
`
`90,775,302 (the “’302 Application”) and 90,775,311 (the “’311 Application”) (together, the “Little
`
`Smoochies Applications”), both of which are currently pending before the USPTO. See Exs. 03,
`
`04.
`
`14.
`
`Consalo also has common law rights in the Little Smoochies trademark.
`
`3
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 4 of 15 PageID: 4
`
`15.
`
`Collectively, the designations referenced in paragraphs 12-14 are referred to herein
`
`as the “Little Smoochies Marks.”
`
`B.
`
`Kopke’s Marks.
`
`16.
`
`Kopke has asserted that there is a likelihood of confusion between Little Smoochies
`
`Registration and the ’311 Application, on the one hand, and the trademark which is the subject of
`
`U.S. Reg. No. 5,160,111 (the “’111 Registration”), on the other. A copy of the ’111 Registration
`
`is attached hereto as Exhibit 05.
`
`17.
`
`Kopke has also claimed common law rights in the mark covered by the ’111
`
`Registration.
`
`18.
`
`Collectively, the designations referenced in paragraphs 16 - 17 are referred to herein
`
`as the “SWEETUMS Mark.”
`
`C.
`
`The Parties’ Respective Uses Of Their Distinct Marks.
`
`19.
`
`Based on the Marks at issue, and the manner in which those Marks are used and
`
`presented in the marketplace, there is no likelihood of confusion between the Marks.
`
`20.
`
`The text portions of the Marks at issue are highly dissimilar. As an initial matter,
`
`the SWEETUMS Mark only incorporates a single word—sweetums—while the Little Smoochies
`
`Marks incorporate two—Little Smoochies. The word “Little” has no corollary in the SWEETUMS
`
`Mark.
`
`21.
`
`As to the text of the Marks, the only similarity Kopke has asserted is between the
`
`words “sweetums” and “Smoochies,” and the sole purported similarity Kopke has pointed to in
`
`this respect is the fact that both words start and end with the letter “S.” See Ex. 06 (cease and
`
`desist letter sent to Consalo by Kopke, dated April 7, 2022).
`
`22.
`
`However, the sound at the start of both words is actually produced by a combination
`
`of two letters, and those distinct combinations—“sm” and “sw,” respectively—produce entirely
`
`4
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 5 of 15 PageID: 5
`
`different sounds. Moreover, the letters in the center of the two words, “t” and “ch,” produce
`
`different sounds, and the two words contain different combinations of vowels.
`
`23.
`
`The words “sweetums” and “Smoochies” also have entirely different meanings.
`
`“Sweetums” appears to be a portmanteau of the words “sweet” and “yummy,” while “Smoochies”
`
`is another word for “kisses.”
`
`24.
`
`25.
`
`Additionally, “sweetums” is only eight letters, while “Smoochies” is nine.
`
`The parties also present these words on packaging and in advertising in distinct
`
`visual fashions.
`
`26.
`
`In the SWEETUMS Mark, the single word “sweetums” appears in orange block
`
`letters, all in lower case.
`
`27.
`
`By contrast, both words of the Little Smoochies Marks are written out in brown or
`
`green, “Smoochies” is written in cursive, and only the first letter of each of the two words is
`
`capitalized.
`
`5
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 6 of 15 PageID: 6
`
`28.
`
`29.
`
`The other visual elements of the respective Marks are also highly distinct.
`
`Kopke has claimed that its “design is unique in the fresh fruit industry” and that
`
`“consumers immediately recognize that fruits wearing eyewear are associated with [Kopke],” and
`
`has taken the position that it is therefore entitled to prohibit Consalo from using any and all marks
`
`incorporating “fruits wearing eyewear” in connection with the sale of fresh fruit. See Ex. 06.
`
`30.
`
`In reality, a host of other parties hold trademark registrations for fresh fruit which
`
`incorporate “fruits wearing eyewear,” for example, U.S. Reg. No. 5,306,828 (a copy of which is
`
`attached hereto as Exhibit 07):
`
`6
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 7 of 15 PageID: 7
`
`U.S. Reg. No. 4,480,847 (a copy of which is attached hereto as Exhibit 08):
`
`and U.S. Reg. No. 5,911,383 (a copy of which is attached hereto as Exhibit 09):
`
`See also, e.g., U.S. Reg. Nos. 4,935,390 (Ex. 10); 5,121,799 (Ex. 11); 5,022,113 (Ex. 12).
`
`31.
`
`Given that the market is already filled with parties using marks incorporating “fruits
`
`wearing eyewear,” Kopke has no rights to prohibit others from using such marks.
`
`32.
`
`There are, moreover, numerous differences between the “characters” in the Marks
`
`at issue.
`
`7
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 8 of 15 PageID: 8
`
`33.
`
`The characters in the SWEETUMS Mark are orange “oranges,” while the
`
`characters in the Little Smoochies marks are a green lime and a clementine, respectively.
`
`8
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 9 of 15 PageID: 9
`
`34.
`
`35.
`
`The overall visual styles of the Marks are also notably different.
`
`The characters in the SWEETUMS Mark appear flat and two dimensional, have
`
`hands which are giving a “thumbs up” sign, and they are wearing dark sunglasses which obscure
`
`their eyes. By contrast, the characters in the Little Smoochies Marks appear three dimensional and
`
`more “lifelike,” have no hands, and one can see the characters’ eyes through the clear glasses that
`
`they wear. There are also three characters in the SWEETUMS Mark, while the Little Smoochies
`
`Marks only include one.
`
`36.
`
`The characters in the Marks are also tailored to align with the distinct words which
`
`accompany them. The characters in the SWEETUMS Mark appear alongside speech-bubbles with
`
`the words “sweet” and “yummy” in them, clearly referencing the two composite parts of the
`
`portmanteau “sweetums.” By contrast, the characters in the Little Smoochies marks are covered
`
`with tiny kiss marks, referencing the “Smoochies” in their name.
`
`37.
`
`The Little Smoochies Marks also appear on packaging beneath Consalo’s house
`
`mark “Consalo Family Farms.”
`
`9
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 10 of 15 PageID: 10
`
`38.
`
`The USPTO examiner did not cite the SWEETUMS Mark against any of Consalo’s
`
`applications for the Little Smoochies Marks in reviewing them.
`
`39.
`
`Furthermore, upon information and belief, the consumers of the parties’ products
`
`would take care in purchasing the different products offered under the respective Marks and are
`
`not likely to be confused.
`
`40.
`
`Upon information and belief, no consumers have been confused as to the source or
`
`origin of the parties’ products, or as to an association or affiliation between Consalo and Kopke.
`
`D.
`
`Kopke’s Repeated Threats Of Formal Legal Action
`
`41.
`
`Kopke sent Consalo a cease-and-desist letter on April 7, 2022, demanding that
`
`Consalo surrender the Little Smoochies Registration, withdraw the ’311 Application, and cease all
`
`uses of the Little Smoochies Marks. See Ex. 06. That letter further threatened that if Consalo does
`
`not do so, Kopke “intends to oppose U.S. Application No. 90/775,311 and petition to cancel
`
`Registration No. 6,418,184” and is prepared “to take such action as deemed necessary for the
`
`preservation and enforcement of its rights.” See id.
`
`42.
`
`Consalo responded to Kopke’s letter on April 11, 2022, laying out the reasons that
`
`there is no likelihood of confusion between the parties’ Marks. See Ex. 13. In that letter, counsel
`
`for Consalo also offered to schedule a time to meet and confer to discuss the matter further. See
`
`id.
`
`43.
`
`Kopke’s counsel responded that Consalo’s letter “d[id] not warrant further
`
`discussion” and that Kopke “is opposing [Consalo’s] related trademark application … and will be
`
`simultaneously initiating a cancelation action against Registration No. 6,418,184.” See Ex. 14.
`
`44.
`
`Based on Kopke’s explicit threats, Consalo has a reasonable apprehension of
`
`litigation. Specifically, Consalo has a reasonable apprehension Kopke will commence a suit
`
`10
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 11 of 15 PageID: 11
`
`against Consalo alleging trademark infringement, unfair competition, and false designation of
`
`origin.
`
`45.
`
`The dispute between Consalo and Kopke is real and substantial, due to the parties
`
`having adverse legal interests. The controversy is of sufficient immediacy and reality to warrant
`
`the issuance of a declaratory judgment. Accordingly, a case or controversy under 28 U.S.C. §
`
`2201 exists.
`
`46.
`
`Consalo has expended significant monies in preparation for use of the Little
`
`Smoochies Marks, including in the time following issuance of the Little Smoochies Registration.
`
`47.
`
`A declaration of rights is necessary and appropriate to declare the rights of the
`
`parties in a manner that avoids irreparable injury to Consalo, for which there would be no adequate
`
`remedy at law, and that resolves the foregoing disputes in a manner consistent with equity.
`
`CLAIMS FOR RELIEF
`
`COUNT I
`
`(Declaratory Judgment of Noninfringement of Federal Trademarks, 15 U.S.C. § 1114)
`
`48.
`
`Consalo incorporates by reference herein all allegations set forth in ¶¶ 1-47 of this
`
`Complaint.
`
`49.
`
`This claim arises under the Lanham Act, 15 U.S.C. § 1051 et seq., and the
`
`Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.
`
`50.
`
`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
`
`SWEETUMS Mark.
`
`51.
`
`Kopke has repeatedly asserted to Consalo that Consalo’s use of the Little
`
`Smoochies marks are “confusingly similar” to the SWEETUMS Mark. Kopke has moreover
`
`11
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 12 of 15 PageID: 12
`
`demanded that Consalo surrender the Little Smoochies Registration, and that Consalo withdraw
`
`the ’311 Application. Kopke has explicitly threatened formal legal action if Consalo does not
`
`comply with its demands.
`
`52.
`
`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).
`
`53.
`
`Accordingly, Consalo is not liable for federal trademark infringement of a
`
`registered trademark in connection with its use of the Little Smoochies Marks.
`
`COUNT II
`
`(Declaratory Judgment of Noninfringement of Trademarks and Unfair Competition, 15
`
`U.S.C. § 1125(a)(1)(A))
`
`54.
`
`Consalo incorporates by reference herein all allegations set forth in ¶¶ 1-53 of this
`
`Complaint.
`
`55.
`
`Consalo’s use in commerce of the Little Smoochies Marks is not likely to cause
`
`confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of
`
`Consalo with Kopke, or as to the origin, sponsorship, or approval of Consalo, its products, and its
`
`commercial activities, by or with Kopke, in violation of 15 U.S.C. § 1125(a)(1)(A).
`
`56.
`
`Accordingly, Consalo is not liable for federal trademark infringement, false
`
`designation of origin, or unfair competition in connection with its use of the Little Smoochies
`
`Marks.
`
`12
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 13 of 15 PageID: 13
`
`COUNT III
`
`(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.
`
`58.
`
`The SWEETUMS Mark is not distinctive and famous within the meaning of
`
`Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`59.
`
`The SMEETUMS Marks waw not famous before Consalo began advertising or
`
`using the Little Smoochies Marks.
`
`60.
`
`Consalo’s use of the Little Smoochies Marks does not dilute and is not likely to
`
`dilute the SWEETUMS Mark and such use is not likely to lessen the capacity of the SWEETUMS
`
`Mark to identify and distinguish Kopke’s goods and services to the extent that such Mark presently
`
`does so.
`
`61.
`
`Accordingly, Consalo is not liable for federal dilution in connection with its use of
`
`the Little Smoochies Marks.
`
`PRAYER FOR RELIEF
`
`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
`
`Marks does not infringe the SWEETUMS Mark under 15 U.S.C. § 1114;
`
`B.
`
`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
`
`Marks does not dilute the SWEETUMS Mark under 15 U.S.C. § 1125(c);
`
`13
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 14 of 15 PageID: 14
`
`D.
`
`Entry of an Order enjoining Kopke, its agents, servants, officers, directors,
`
`employees, attorneys, privies, representatives, successors, assigns, and parent and subsidiary
`
`entities, and any and all persons in act of concert of participation with any of them, from
`
`threatening to assert or asserting the SWEETUMS Mark against Consalo, its agents, employees,
`
`customers, partners, resellers, or distributors, for their use of the Little Smoochies Marks;
`
`E.
`
`Entry of an Order of this Court assessing all costs associated with this action to
`
`Consalo;
`
`F.
`
`Entry of an Order of this Court declaring this case exceptional and awarding
`
`Consalo reasonable attorneys’ fees; and
`
`G.
`
`All other relief, both interim and permanent, as the Court deems just and proper.
`
`DEMAND FOR JURY TRIAL
`
`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
`
`14
`
`

`

`Case 1:22-cv-02206 Document 1 Filed 04/15/22 Page 15 of 15 PageID: 15
`
`CERTIFICATION PURSUANT TO L. CIV. R. 11.2
`
`I certify that, to the best of my knowledge, this matter is not the subject of any other action
`
`pending in any court or of any pending arbitration or administrative proceeding.
`
`Dated: April 15, 2022
`
`/s/ Timothy J. Lowry
` Timothy J. Lowry
`
`15
`
`

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