Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA926982
`
`Filing date:
`
`10/08/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91243315
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Bruetta, LLC
`
`MATTHEW D. DELANEY
`FROST BROWN TODD LLC
`3300 GREAT AMERICAN TWR., 301 E. 4TH ST.
`CINCINNATI, OH 45202
`trademarks@fbtlaw.com, mdelaney@fbtlaw.com
`no phone number provided
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Suspend for Civil Action
`
`Samantha M. Quimby
`
`squimby@fbtlaw.com, kshook@fbtlaw.com, mdelaney@fbtlaw.com, fbtiplitiga-
`tion@fbtlaw.com
`
`/samantha m quimby/
`
`10/08/2018
`
`Bruetta - Motion to Suspend - TTAB .pdf(86763 bytes )
`Doc. 1--Complaint--Time Stamped 09.20.18 - 4827-8352-6515.1.pdf(647280
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF: Trademark Application Serial No. 87/724,189 –
`
`DATE OF PUBLICATION: May 1, 2018
`
`
`Bolero Co. Ltd.,
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`v.
`
`Bruetta, LLC,
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`
`
`
`Opposition Proceeding No. 91243315
`
`MOTION TO SUSPEND
`
`Bruetta, LLC (“Applicant”), by and through Counsel, hereby moves for suspension of
`
`these proceedings pursuant to Trademark Rule 2.117(a) and TBMP 502.02(a).
`
`On September 20, 2018, Applicant filed a Complaint in the United States District Court
`
`for the Southern District of Ohio, captioned Bruetta, LLC v. Bolero Co. Ltd., Case No. 1:18-cv-
`
`00667-MRB-SKB against Opposer for inter alia, declaratory judgment of non-infringement of
`
`Applicant’s Mark and cancellation of Opposer’s Registration – the trademarks at issue in this
`
`proceeding before the Board. The outcome of this civil action will be highly influential upon, if
`
`not dispositive of, the issues before the Board in this proceeding. Thus, Applicant respectfully
`
`requests suspension of this proceeding pending determination of the civil action. The Complaint
`
`as filed in the civil action is attached for the Board’s consideration.
`
`
`
`

`

`Date: October 8, 2018
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`Samantha M. Quimby
`Kevin T. Shook
`Matthew D. Delaney
`FROST BROWN TODD LLC
`One Columbus
`10 West Broad Street
`Suite 2300
`Columbus, Ohio 43215-3484
`614.559.7281 Direct Dial
`614.464.1737 Fax
`squimby@fbtlaw.com
`fbtiplitigation@fbtlaw.com
`
`Attorneys for Applicant Bruetta, LLC
`
`2
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing MOTION TO SUSPEND was served by email
`pursuant to TBMP 311.01(c) to the Attorney for Opposer, David I. Greenbaum, Esq. of Fox
`Rothschild LLP, at the following email addresses of record and on this 8th day of October, 2018:
`
`
`IPDocket@foxrothschild.com
`dgreenbaum@foxrothschild.com
`
`
` ______________________________
`Samantha M. Quimby
`Attorney for Bruetta, LLC
`.
`
`
`
`3
`
`
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 1 of 22 PAGEID #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF OHIO
`WESTERN DIVISION
`
`
`BRUETTA, LLC,
`
`Plaintiff,
`
`BOLERO CO. LTD.,
`
`Defendant.
`
`:
` :
`:
`: Case No.:
`:
`: Judge:
`:
`:
`:
`
`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF
`TRADEMARK RIGHTS AND FOR CANCELLATION OF DEFENDANT’S
`TRADEMARK REGISTRATION
`
`
`
`
`Plaintiff Bruetta, LLC (“Plaintiff” or “Bruetta”) files this Complaint for declaratory
`
`judgment and other affirmative relief and alleges against Defendant Bolero Co. Ltd. (“Defendant”
`
`or “Bolero”):
`
`Nature of Action
`
`1.
`
`Bruetta seeks a declaration that its use of the Bruetta B Design Mark, as defined
`
`herein, does not infringe Defendant’s rights in any way.
`
`2.
`
`Bruetta also seeks to have Defendant’s trademark registration for its Bolero B
`
`Design Mark, as defined herein, canceled in-part as the registration provides Defendant with a
`
`priority date on certain goods and services to which it is not entitled.
`
`The Parties
`
`3.
`
`Bruetta is an Ohio limited liability company with offices at 7100 Dixie Highway,
`
`Fairfield, Ohio 45014, and is qualified to do business, and is doing business, in the State of Ohio
`
`and in this judicial district.
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 2 of 22 PAGEID #: 2
`
`4.
`
`On information and belief, Defendant Bolero is single shareholder limited liability
`
`company with its headquarters at Dragalesvka str. No 1, office 2, Lozenetz BG-1407, Sofia,
`
`Bulgaria and is transacting business in the State of Ohio and in this judicial district.
`
`Jurisdiction and Venue
`
`5.
`
`The Court has jurisdiction over this declaratory judgment action pursuant to the
`
`Federal Declaratory Judgments Act, 28 U.S.C. §§ 2201(a) and 2202, as well as under 28 U.S.C.
`
`§§ 1331, 1367(a) and 1338(a) and (b), and the Lanham Act, 15 U.S.C. § 1121.
`
`6.
`
`The Court has personal jurisdiction over Defendant because, on information and
`
`belief, Defendant solicits and transacts business in the State of Ohio, within this judicial district.
`
`7.
`
`Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b) and (c) and
`
`1400(a).
`
`The Bruetta Marks and Products
`
`8.
`
`Bruetta repeats the allegations in Paragraphs 1 through 7 of this Complaint, as if
`
`fully set forth herein.
`
`9.
`
`Bruetta is in the business of providing a full-service loose-leaf tea experience in a
`
`“kit” format, including tea, cups and lids, primarily for other businesses who wish to provide its
`
`employees or its customers with a unique tea beverage experience, with specially designed patent-
`
`pending lids that include a filter in the lid opening to prevent any of the heated tea leaves from
`
`passing through the lid when drinking (the “Bruetta Products”). For example, a company might
`
`provide a kit of Bruetta cups, lids, and cannisters of loose-leaf teas to employees in a break room
`
`or offer complementary tea via Bruetta’s “kits” free of charge to its end consumer while she awaits
`
`the completion of her automotive maintenance service.
`
`
`
`2
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 3 of 22 PAGEID #: 3
`
`10.
`
`Bruetta uses the following trademark, among others, in connection with providing
`
`the Bruetta Products, by placing the mark on Bruetta Products:
`
`
`
`(the “Bruetta B Design Mark”).
`
`
`11.
`
`The Bruetta B Design Mark is a natural extension of the stylized “Bruetta” Design
`
`Mark as it is an exact representation of the letter “B” in the “Bruetta” Design Mark, examples of
`
`which can be seen in the presentation of its overall kit and promotional campaigns:
`
`
`
`
`
`
`
`3
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 4 of 22 PAGEID #: 4
`
`12.
`
`
`Bruetta has used the Bruetta B Design Mark in connection with the Bruetta Products
`
`since at least as early as May of 2016.
`
`13.
`
`Bruetta does not use the Bruetta B Design Mark in connection with tea substitutes
`
`or powdered teas; nor does Bruetta promote its Bruetta Products as a hydration beverage; nor does
`
`Bruetta add chemicals or artificial sweeteners to its Bruetta Products.
`
`14.
`
`On or about July 3, 2014, Bruetta filed a U.S. Trademark Application, subsequently
`
`assigned Serial No. 87/724,189 for the Bruetta B Design Mark for use in connection with the
`
`Bruetta Products, as follows:
`
`“Beverage lids and cups” in Class 21; and
`
`“Tea” in Class 30.
`
`
`(the “Bruetta B Trademark Application”)
`
`
`The Bolero Marks and Products
`
`15.
`
`Defendant on the other hand bills itself as providing “advanced hydration” in
`
`powdered form sold in sachets or sticks “perfect for those who maintain an active and healthy
`
`
`
`4
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 5 of 22 PAGEID #: 5
`
`lifestyle, those who want to get in better shape, adults, children, and people who suffer from
`
`diabetes” (the “Bolero Products”).
`
`16.
`
`Defendant uses the BOLERO word mark and the following logo in connection with
`
`the Bolero Products:
`
`
`
`
`
`
`
`
`
`
`
`
`
`(the “Bolero B Design Mark”). Examples of how Bolero advertises the Bolero Products can be
`
`seen here:
`
`
`
`
`
`
`
`5
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 6 of 22 PAGEID #: 6
`
`
`
`
`
`17.
`
`On information and belief, Defendant does not provide a 100% tea beverage within
`
`its portfolio of “beverages” nor does Defendant provide any of its products to businesses who are
`
`seeking a service that would enable them to provide its own employees or customers with a fresh
`
`brewed cup of tea at no charge; rather, Defendant touts itself as providing a line of “healthy
`
`powdered drinks” that are packaged within sachets or sticks available for retail online at
`
`bolerousa.net and at various gyms and vitamin shops in various states throughout the country.
`
`
`
`6
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 7 of 22 PAGEID #: 7
`
`18.
`
`Defendant owns U.S. Trademark Registration No. 5,471,870 for the Bolero B
`
`Design Mark for a laundry listing of goods and services obtained via the Madrid Protocol and
`
`claiming the benefit of priority under the Paris Convention, as follows:
`
`“Dietetic foods adapted for medical use; vitamin drinks, namely, dietary
`supplemental drinks
`in
`the nature of vitamin beverages; vitamin
`preparations; nutritional food additives for medical purposes in the nature
`of natural food extracts derived from vegetables, fruits and herbs” in Class
`5;
`
`“Household or kitchen containers and utensils, namely, serving forks and
`spoons, ice cream scoops, cocktail stirrers and decanter tags; combs and
`sponges for household purposes; brushes, namely, cake brushes, pastry
`brushes, toilet brushes, scrubbing brushes, dishwashing brushes, floor
`brushes, dusting brushes, washing brushes; beverage glassware; porcelain
`and earthenware, namely, mugs, saucepans, flasks, jars and bowls; kitchen
`utensils not of precious metal, namely, bottle openers, ice cube molds,
`mixing spoons; tableware, namely, serving trays and cabarets being serving
`trays, coffee services, liqueur sets comprised of decanters and drinking
`glasses, table napkin holders, carving forks and cooking spoons, tea
`services; cookware and containers, namely, bread baskets for household
`purposes, cake molds, candy boxes, non-electric coffee percolators, non-
`electric coffee pots, containers for household or kitchen use, cookery mold,
`cold packs for chilling food and beverages, confectioners' decorating bag,
`cookie jars, cutting boards for the kitchen, non-electric deep fryers,
`demijohns, drinking vessels, drinking horns, non-electric egg separators for
`household purposes, non-electric fruit presses for household purposes,
`funnels, heat-insulated containers for beverages, heat-insulated containers
`for household use, non-electric heaters for feeding bottles, hip flasks, non-
`electric hot pots, ice buckets, isothermic bags for food, jugs, pitchers, non-
`electric kettles, kitchen containers, lunch boxes, mugs, fitted picnic baskets,
`pots, tea strainers, non-electric tea pots, thermally insulated containers for
`food, cups not of precious metal for making ices and iced drink, wine
`aerators, pans; cups and mugs; tableware not of precious metal, namely,
`serving trays and cabarets being serving trays, coffee services, non-electric
`coffee filters, cover for dishes, disposable table plates, fruit serving cups,
`ice cream scoops, ironing board covers, liqueur sets comprised of decanters
`and drinking glasses, menu card holders, paper plates, pepper pots, reusable
`ice cubes, drinking straws, table napkin holders, carving forks and coking
`spoons, tea services, tea infusers, tea balls, tea cosies; tableware made of
`terra-cotta, namely, bowls; decanters; mugs; drinking glasses being
`receptacles; bottles, namely, cocktail shakers, decanters, drinking bottles for
`sports, insulating flasks, vacuum bottles, refrigerating bottles, siphon bottles
`for carbonated water, and empty water bottles for bicycles; squeeze bottle
`
`
`
`7
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 8 of 22 PAGEID #: 8
`
`sold empty; reusable plastic water bottles sold empty; reusable stainless
`steel water bottles sold empty; thermal insulated containers for food or
`beverage; ice buckets and coolers for wine and champagne; insulated
`vacuum bottles; insulated food and beverage bags used as cool bags for
`domestic use; insulated vacuum bottles sold empty for keeping drinks cold;
`portable non-electric coolers; corkscrews, bottle openers; fitted picnic
`baskets, including dishes; dishes being plate holders; trivets being table
`utensils; candlesticks not of precious metal; vases not of precious metal; oil
`and vinegar cruets sold empty” in Class 21;
`
`“Headgear, namely, shower caps, skull caps, caps, and hats; clothing,
`namely, sashes for wear, scarves, shawls, shirts, short-sleeve shirts, shorts,
`dresses, pants, ski gloves, slips being underclothing, sports singlets, stuff
`jackets, suits, tee-shirts, togas, waterproof clothing, namely, wetsuits for
`water-skiing; underwear, uniforms, veils; footwear, T-shirts” in Class 25;
`
`“Coffee, teas and substitutes therefor” in Class 30;
`
`“Beers; mineral and aerated waters and other non-alcoholic drinks, namely,
`aloe vera drinks, non-alcoholic beer, non-alcoholic cocktails, ginger beer,
`ginger ale, isotonic beverages, sport beverages, energy drinks, energy shots,
`kvass non-alcoholic beverage, lemonades, non-alcoholic malt beer, non-
`alcoholic fruit juice beverages, non-alcoholic honey-based beverages,
`powders for effervescing beverages, seltzer water, sherbet beverages,
`sorbets beverages, soda water, syrups for beverages, syrups for lemonade,
`vegetable juices beverages, water beverages, whey beverages, preparations
`for making aerated water, aerated water, non-alcoholic aperitifs, beer wort,
`non-alcoholic cider, essences for making beverages, non-alcoholic fruit
`nectars, unfermented grape must, lithia water, malt wort, preparations for
`making mineral water, unfermented must, non-alcoholic fruit extracts,
`orgeat, sarsaparilla beverage, smoothies, table waters, and tomato juice
`beverage; fruit drinks and fruit juices, syrups and other preparations for
`making beverages and children beverages” in Class 32;
`
`“Alcoholic beverages except beers” in Class 33;
`
`“Educational services, namely, education academies, tutoring, arranging
`and conducting of conferences, seminars, classes, workshops, congresses
`and in-person educational forums all the aforesaid in the field of sport,
`fitness, sales, distribution, franchising, licensing, multilevel marketing,
`manufacturing; education information, recreation information all the
`aforesaid in the field of sport, fitness, sales, distribution, franchising,
`licensing, multilevel marketing, manufacturing; religious education,
`namely, conducting classes in the field of religion, sado tea ceremony
`instruction; coaching in the field of sport, fitness, sales, distribution,
`franchising, licensing, multilevel marketing, manufacturing; conducting
`
`
`
`8
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 9 of 22 PAGEID #: 9
`
`fitness classes; gymnastic instruction; health club services; modelling for
`artists; personal trainer services; sport camp services; rental of sports
`equipment, except vehicles; rental of sports grounds; rental of stadium
`facilities; rental of tennis courts; fitness training in yoga; training in the use
`of computers; organizing community amusement park services; providing
`amusement arcade services; rental of audio equipment; booking of seats for
`shows; providing casino facilities; night club services; arranging and
`conducting of concerts; disc jockey services; discotheque services;
`entertainment information; film production; gambling services; video game
`services provided on-line from a computer network; games equipment
`rental; holiday camp services; karaoke services; microfilming; rental of
`motion pictures; news reporters services; nightclub services; on-line
`publication of electronic books and journals; providing on-line, prerecorded
`music, not downloadable; organization of balls; organization of cultural
`shows; organization of fashion shows for entertainment purposes; party
`planning; photographic reporting; photography; presentation of circus
`performances; presentation of variety shows; publication of texts, other than
`publicity texts; publication of books; radio entertainment production;
`screenplay writing; songwriting; providing television programmes, not
`downloadable, via video-on-demand transmission services; toy rental; live
`performance by musical bands; organizing community sporting and cultural
`events; organizing of triathlons; organizing cultural and arts events; rental
`of artwork; arranging of beauty contests; providing golf facilities; movie
`studio services; providing museum facilities; music composition services;
`production of music; organization of exhibitions for cultural or educational
`purposes; organization of lotteries” in Class 41; and
`
`“Providing of food and drink; bar services; café services; cafeteria services;
`canteen services; food and drink catering; food sculpting; restaurant
`services; self-service restaurant services; snack-bar services; washoku
`restaurant services; rental of drinking water dispensers” in Class 43.
`
`(the “Bolero B Registered Mark”):
`
`The Bruetta B Trademark Application
`
`19.
`
`The Examining Attorney assigned to the Bruetta B Trademark Application
`
`reviewed over 100 possible conflicting registrations and pending applications that included the
`
`then pending application for the Bolero B Registered Mark owned by Defendant.
`
`
`
`9
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 10 of 22 PAGEID #: 10
`
`20.
`
`After reviewing these records, the Examining Attorney did not raise the then
`
`pending application for the Bolero B Registered Mark owned by Defendant as a perceived conflict
`
`with the Bruetta B Trademark Application, despite it being a prior filed application.
`
`21.
`
`The Trademark Office subsequently published the Bruetta B Trademark
`
`Application on or about May 1, 2018, which triggered a 30-day period for third parties to oppose
`
`the registration of the Bruetta B Trademark Application.
`
`The Controversy
`
`22.
`
`On or about May 29, 2018, Defendant requested an extension of time to oppose the
`
`Bruetta B Trademark Application and received an extension up to and including June 30, 2018 to
`
`file a Notice of Opposition.
`
`23.
`
`On or about June 25, 2018, Defendant, through counsel, contacted counsel for
`
`Bruetta, alleging that Bruetta’s use of the Bruetta B Design Mark and its Bruetta B Trademark
`
`Application for use on the Bruetta Products infringed upon the Bolero B Design Mark and the
`
`Bolero B Registered Mark and demanded that Bruetta immediately:
`
`a. Stop all further use of the Bruetta B Design;
`
`b. Abandon App. No. 87/724,189 for Bruetta B Design;
`
`c. No longer advertise, sell, publish, distribute, transmit or disseminate in any
`way, any information, goods, or services, or any other designations identical or
`confusingly similar to Bruetta B Design, and immediate destroy any such
`information in Bruetta’s possession or control; and
`
`d. Promptly provide written confirmation that Bruetta will comply with these
`demands.
`
`The Parties engaged in subsequent discussions but could not resolve these issues.
`
`Bolero and Bruetta are not competitors.
`
`Bolero and Bruetta do not offer the same products.
`
`10
`
`24.
`
`25.
`
`26.
`
`
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 11 of 22 PAGEID #: 11
`
`27.
`
`Bolero and Bruetta do not offer, sell, or distribute their respective products in the
`
`same trade channels.
`
`28.
`
`Bolero and Bruetta do not provide their products to the same relevant customer
`
`base.
`
`29.
`
`The general concept of a droplet design that includes the first initial of a trademark
`
`owner’s name or brand is neither novel nor unique. Indeed, a search of the United States Patent
`
`and Trademark Office database reveals hundreds of trademark registrations and approved pending
`
`applications for droplet design marks for use in connection with the offering of beverages. Thus,
`
`the Bolero B Design Mark is weak and afforded a narrow scope of protection, necessitating the
`
`relevant consumer base to look to other indications of source for the respective products.
`
`30.
`
`As seen in the respective advertising and use of the respective marks noted above
`
`and incorporated herein, the Bruetta B Design Mark and the Bolero B Design Mark have multiple
`
`distinguishing elements and characteristics that result in a different commercial impression to the
`
`relevant consumer and observer: the Bolero B Design Mark features only an outline of a droplet,
`
`while the Bruetta B Design Mark is entirely filled in on a solid background; the “B” of the Bolero
`
`B Design Mark is a block “B” which appears to be in “Ariel” font; the “B” of the Bruetta B Design
`
`Mark is a unique and fanciful “B” in a scripted font; the “B” of the Bruetta B Design Mark is
`
`identical to the “B” used in the fanciful spelling of “Bruetta” throughout the associated products,
`
`reinforcing the connection between Bruetta’s B Design Mark and Bruetta as the source of the
`
`products and services; conversely, the Bolero “B” in the Bolero B Design Mark is identical to the
`
`“B” used in its spelling of “Bolero” throughout the associated products, reinforcing the connection
`
`between Bolero’s B Design Mark and Bolero as the source of the products and services:
`
`
`
`
`
`11
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 12 of 22 PAGEID #: 12
`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 12 of 22 PAGEID #: 12
`
`Bruetta’s Use:
`Bruetta’s Use:
`
`Gourmet Loose Leaf Tea in a Better Brewing System
`
`New Tea Flavors!
`
`
`
`
`
`Bolero’s Use:
`Bolero’s Use:
`Shoe
`Events
`
`Welcome
`
`About Us
`
`Video - Photo Contact Us
`
`Wholesale Where to Bfl
`
`BOLERO®
`
`advanced hydration
`A Line of Delicious and Healthy Powdered Drinks
`
`’8.
`
`ICUCKVHERE Sign Up and receive a 15% DISCOUNT on your first order. You will also receive emails about
`Speclal Holiday Promotions, Promo Codes, Giveaways and information about our Expo Events.
`
`BOLERO"
`ISOTONIC
`
`HYDRATE.
`
`“\ ' FOCUS.
`BREATHE.
`
`12
`12
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case: 1:18-cv-00667-MRB-SKB Doc #: 1 Filed: 09/20/18 Page: 13 of 22 PAGEID #: 13
`
`31.
`
`Given the numerous differences between the respective marks and the significance
`
`of the respective “B”’s to their respective sources, namely Bolero on the one hand, and Bruetta on
`
`the other hand, the likelihood for confusion is obviated in this case.
`
`32.
`
`Upon information and belief, neither Bolero nor Bruetta are aware of a single
`
`instance of actual confusion despite the fact that the respective Bruetta B Design Mark and Bolero
`
`B Design Mark have been used within their respective marketplaces for the promotion of their
`
`respective products for over two (2) years.
`
`33.
`
`Bruetta believes there is no likelihood of confusion between the parties’ respective
`
`uses of the Bruetta B Design Mark and the Bolero B Design Mark because there is no confusing
`
`similarity between the Bruetta B Design Mark and the Bolero B Design Mark.
`
`34.
`
`Bruetta believes there is no likelihood of confusion between the parties’ respective
`
`uses of their marks because the Bruetta B Design Mark and the Bolero B Design Mark travel in
`
`different trade channels and reach different types of consumers.
`
`35.
`
`The U.S. Patent and Trademark Office did not object to registration of the Bruetta
`
`B Design Mark on the basis of a likelihood of confusion with the Bolero B Design Mark (or any
`
`other basis for that matter), despite Defendant having cited to its Registration for the Bolero B
`
`Design Mark in its cease and desist demands and despite the Bolero B Design Registration having
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`“coffee, teas and substitutes therefor” listed in the corresponding recitation of goods.
`
`
`
`36.
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`Based upon all of the above, Bruetta believes its Bruetta B Design Mark cannot and
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`does not create any likelihood of confusion in the marketplace as to the Bolero B Design Mark;
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`cannot and does not infringe upon Defendant’s Bolero B Design Mark; that its Bruetta B
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`Trademark Application does not conflict with Defendant’s Bolero B Registered Mark; and that
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`Bruetta’s use of its Bruetta B Design Mark has not and cannot cause any harm or damage to
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`Defendant; therefore, Bruetta has refused to comply with Defendant’s demands.
`
`COUNT I
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`Declaratory Judgment for Non-Infringement of Trademark
`
`37.
`
`Bruetta repeats the allegations in Paragraphs 1 through 36 of this Complaint, as if
`
`fully set forth herein.
`
`38.
`
`A real and actual dispute, case, and/or controversy exists between the Parties as to
`
`a state of facts, in particular Bruetta’s past use and continued use of its Bruetta B Design Mark.
`
`39.
`
`Bruetta and Defendant have adverse and antagonistic interests in the subject matter
`
`of the dispute, case, and/or controversy.
`
`40.
`
`Bruetta seeks a declaratory judgment that its past use and continued use of the
`
`Bruetta B Design Mark is not intended nor likely to cause confusion, mistake, or deception as
`
`between the source, association, or affiliation of the Parties’ respective products, services, or
`
`businesses, under the Lanham Act or Ohio trademark common law.
`
`41.
`
`Bruetta further seeks a declaratory judgment that its past use and continued use of
`
`the Bruetta B Design Mark and other associated trademarks and trade names have not and do not
`
`jeopardize the goodwill, if any, symbolized by Defendant’s registered trademarks, nor does it
`
`cause any other injury to Defendant under the Lanham Act or Ohio trademark common law.
`
`COUNT II
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`Declaratory Judgment – No Unfair Competition
`15 U.S.C. § 1125(a) and Ohio Common Law
`
`
`
`42.
`
`Bruetta repeats the allegations in Paragraphs 1 through 41 of this Complaint, as if
`
`fully set forth herein.
`
`
`
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`43.
`
`A real and actual dispute, case, and/or controversy exists between the Parties as to
`
`a state of facts, in particular Bruetta’s past use and continued use of its marks and trade names.
`
`44.
`
`Bruetta and Defendant have adverse and antagonistic interests in the subject matter
`
`of the dispute, case, and/or controversy.
`
`45.
`
`Bruetta seeks a declaratory judgment that its past use and continued use of its
`
`Bruetta B Design Mark is not intended nor likely to cause confusion, mistake, or deception as
`
`between the source, association, or affiliation of the Parties’ respective products, services, or
`
`businesses, and does not unfairly compete with Defendant under the Lanham Act or Ohio unfair
`
`competition common law.
`
`46.
`
`Bruetta further seeks a declaratory judgment that its past use and continued use of
`
`the Bruetta B Design Mark and other associated trademarks and trade names have not and do not
`
`cause any injury under the Lanham Act or Ohio unfair competition common law.
`
`COUNT III
`
`Declaratory Judgment for Determination of No False Designation of Origin
`15 U.S.C. § 1125(a)
`
`Bruetta repeats the allegations in Paragraphs 1 through 46 of this Complaint, as if
`
`47.
`
`fully set forth herein.
`
`48.
`
`A real and actual dispute, case, and/or controversy exists between the Parties as to
`
`a state of facts, in particular Bruetta’s past use and continued use of its Bruetta B Design Mark and
`
`other associated trademarks and trade names.
`
`49.
`
`Bruetta and Defendant have adverse and antagonistic interests in the subject matter
`
`of the dispute, case, and/or controversy.
`
`50.
`
`Bruetta seeks a declaratory judgment that its past use and continued use of the
`
`Bruetta B Design Mark is not intended nor likely to cause confusion, mistake, or deception as
`
`
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`between the source, association, or affiliation, or as to the origin, sponsorship or approval of the
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`Parties’ respective products, services, or businesses, and does not constitute a false designation of
`
`origin, under the Lanham Act, 15 U.S.C. § 1125(a).
`
`51.
`
`Bruetta further seeks a declaratory judgment that its past use and continued use of
`
`the Bruetta B Design Mark and other associated trademarks and trade names have not and do not
`
`jeopardize the goodwill, if any, symbolized by Defendant’s trademark(s), nor does it cause any
`
`other injury to Defendant under the Lanham Act, 15 U.S.C. § 1125(a).
`
`COUNT IV
`
`Cancellation of Trademark Registration
`
`52.
`
`Bruetta repeats the allegations in Paragraphs 1 through 51 of this Complaint, as if
`
`fully set forth herein.
`
`53.
`
`The United States in a party to the Paris Convention for the Protection of Industrial
`
`Property, which provides, among other things, the ability for a foreign trademark applicant to
`
`receive the benefit of a priority date in the United States that is based upon the filing date of a
`
`foreign trademark application presuming certain requirements are met, as outlined in the
`
`Trademark Manual of Examining Procedure:
`
`TMEP 1904.01(e)Priority. A holder may claim a right of priority within the meaning
`of Article 4 of the Paris Convention if:
`(1) The request for extension of protection contains a claim of priority;
`(2) The request for extension of protection specifies the filing date, serial number,
`and country of the application that forms the basis for the claim of priority; and
`(3) The date of international registration or the date of the recordal of the
`subsequent designation requesting an extension of protection to the United States
`is not later than 6 months after the date of the first regular national filing (within
`the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application
`(within the meaning of Article 4(C)(4) of the Paris Convention).
`
`
`Section 67 of the Trademark Act, 15 U.S.C. §1141g; Article 4(2); see also Paris Convention
`
`Article 4(D).
`
`
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`54.
`
`Pursuant to the Paris Convention and the relevant rules established by the United
`
`States Patent and Trademark Office, to qualify for a right of priority granted under the Paris
`
`Convention, the underlying (foreign) trademark application forming the basis for the extension of
`
`protection into the United States must be the first application, or alternatively, must be a second
`
`or subsequent application that contains content that does not overlap with the first application. To
`
`say it another way, the scope of any priority right based upon a second or subsequent trademark
`
`application is limited to the non-overlapping part.
`
`55.
`
`The Bolero B Registered Mark, namely U.S. Trademark Registration No.
`
`5,471,870, claims a foreign priority date of April 19, 2016 pursuant to the terms of the Paris
`
`Convention and based upon a European Union Trademark Registration for the same mark filed on
`
`April 19, 2016, namely:
`
`
`
`56.
`
`Upon information and belief, U.S. Trademark Registration No. 5,471,870 is not
`
`based upon the first application as defined by the Paris Convention and the relevant rules
`
`established by the United States Patent and Trademark Office; rather, U.S. Trademark Registration
`
`No. 5,471,870 is based upon a second or subsequent trademark application.
`
`57.
`
`Upon information and belief, Bolero owns U.S. Trademark Registration No.
`
`5,075,738 for the following “Bolero B” mark, claiming a foreign priority date of March 19, 2015
`
`pursuant to the terms of the Paris Convention and based upon a European Union Trademark
`
`Registration for the same mark filed on March 19, 2015, covering “vitamin drinks” in Class 5,
`
`“coffee, teas and substitutes therefor” in Class 30, and “mineral and aerated waters, and other non-
`
`
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`alcoholic drinks, namely, carbonated beverages, energy drinks, energy shots and soft drinks; fruit
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`drinks and fruit juices; syrups and other preparations for making beverages, namely, fruit drinks,
`
`soft drinks, energy drinks and flavored water” in Class 32:
`
`
`
`
`
`58.
`
`The priority right provided to the Bolero B Registered Mark, namely U.S.
`
`Trademark Registration No. 5,471,870, is based upon a second or subsequent national trademark
`
`appli