Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA793205
`01/05/2017
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding.
`
`92064958
`
`Plaintiff
`Talking Rain Beverage Company, Inc.
`
`Defendant
`Klarbrunn, Inc.
`
`No
`
`Applicant
`
`Other Party
`
`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Talking
`Rain Beverage Company, Inc. hereby requests suspension of this proceeding pending a final determination
`of the civil action. Trademark Rule 2.117.
`Talking Rain Beverage Company, Inc. has secured the express consent of all other parties to this proceeding
`for the suspension and resetting of dates requested herein.
`Talking Rain Beverage Company, Inc. has provided an e-mail address herewith for itself and for the opposing
`party so that any order on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`Respectfully submitted,
`/Thomas L. Holt/
`Thomas L. Holt
`tholt@perkinscoie.com, pctrademarks@perkinscoie.com
`tholt@perkinscoie.com, pctrademarks@perkinscoie.com
`01/05/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Cancellation No. 92064958
`
`PETITION FOR CANCELLATION
`
`
`Mark:
`U.S. Reg. No.:
`
`KLARBRUNN VITA ICE
`4,482,516
`
`TALKING RAIN BEVERAGE COMPANY,
`INC.,
`
`Petitioner,
`
`
`
`v.
`
`
`
`
`
`
`KLARBRUNN, INC.,
`
`
`
`Registrant.
`
`
`
`
`
`
`
`CONSENTED MOTION TO SUSPEND FOR CIVIL ACTION
`
`Talking Rain Beverage Company, Inc. (“Petitioner”) hereby moves pursuant to
`
`Trademark Rule 2.117(a) (37 C.F.R. § 2.117(a)) and Trademark Board Manual of Procedure
`
`(“TBMP”) § 510.02(a) that the Board suspend proceedings in the above-captioned cancellation
`
`(Cancellation No. 92064958) (the “Cancellation Proceeding”), pending the disposition of the
`
`civil action in the Northern District of Illinois between the same parties, Talking Rain Beverage
`
`Company, Inc. v. Klarbrunn, Inc., Case No. 1:16-cv-05084, which raises issues of fact and law
`
`that will have a bearing on the issues presented in the Cancellation Proceeding. Counsel for
`
`Petitioner has conferred with counsel for registrant Klarbrunn, Inc. (“Registrant”) and Registrant
`
`has consented to the request for suspension.
`
`The Board may suspend proceedings when the parties are engaged in a civil action that
`
`may have a bearing on the case. 37 C.F.R. § 2.117; TBMP § 510.02(a). Here, the parties to the
`
`Cancellation Proceeding are the same parties to the civil action, and the marks involved in both
`
`proceedings overlap. Specifically, Petitioner has requested that the District Court cancel
`
`Registrant’s KLARBRUNN VITA ICE mark, the mark that is subject to the pending
`
`Cancellation Proceeding. Registrant has counterclaimed to seek cancellation of Petitioner’s ICE
`
`and SPARKLING ICE marks, which Petitioner asserts in the pending Cancellation Proceeding.
`
`As grounds for this motion, Petitioner states as follows:
`
`
`113405-7003/133994070.1
`
`

`

`1.
`
`On February 11, 2014, the registration issued for Registrant’s KLARBRUNN
`
`VITA ICE mark, U.S. Reg. No. 4,482,516, covering “flavor enhanced sparkling water.”
`
`2.
`
`On May 10, 2016, Petitioner filed a complaint against Registrant in the Northern
`
`District of Illinois, Case No. 1:16-cv-05084, alleging trademark infringement and other related
`
`claims on the basis that Registrant uses a trademark that is highly similar to Petitioner’s ICE and
`
`SPARKLING ICE trademarks in connection with a directly competitive sparkling water product.
`
`On December 14, 2016, Petitioner filed its First Amended Complaint in which it added a claim
`
`seeking cancellation of Registrant’s KLARBRUNN VITA ICE registration on the grounds that it
`
`is likely to be confused with Petitioner’s ICE and SPARKLING ICE marks. The claims in the
`
`First Amended Complaint include the same marks at issue in this Cancellation Proceeding.
`
`Attached as Exhibit A is a copy of the First Amended Complaint (without exhibits) from the civil
`
`action in accordance with TBMP § 510.02(a).
`
`3.
`
`On October 7, 2016, Registrant filed its Answer and Counterclaims, in which it
`
`requested cancellation of Petitioner’s ICE and SPARKLING ICE marks. Attached as Exhibit B
`
`is a copy of the Petitioner’s Answer and Counterclaim filed in the civil action.
`
`4.
`
`On December 6, 2016, Petitioner filed with the Board a Petition for Cancellation
`
`of Registrant’s KLARBRUNN VITA ICE registration, U.S. Reg. No. 4,482,516, on the basis
`
`that it is likely to be confused with Petitioner’s ICE and SPARKLING ICE marks.
`
`5.
`
`Petitioner submits that the determination of the civil action will have a bearing on
`
`the issues before the Board in this Cancellation Proceeding because both proceedings involve a
`
`determination of the likelihood of confusion between Petitioner’s and Registrant’s marks.
`
`
`
`WHEREFORE, for all the foregoing reasons, Petitioner respectfully submits that there is
`
`good cause for suspension and requests that the Board grant its consented motion and suspend
`
`the Cancellation Proceeding pending the disposition of the action pending in the Northern
`
`District of Illinois.
`
`On December 27, 2016, counsel for Registrant, consented to this motion.
`
`
`
`
`
`
`113405-7003/133994070.1
`
`-2-
`
`

`

`Respectfully submitted,
`
`PERKINS COIE LLP
`
`
`
`
`
`By: /s/Thomas L. Holt
`Lynne E. Graybeal
`Thomas L. Holt
`Winfield B. Martin
`
`Attorneys for Petitioner
`1201 Third Avenue, 49th Floor
`Seattle, Washington 98101
`WMartin@perkinscoie.com
`LGraybeal@perkinscoie.com
`
`DATED: January 5, 2017
`
`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that this Motion to Suspend is
`being deposited with the U.S. Mail on January 5,
`2017 in an envelope addressed to:
`
`
`Jami A. Gekas
`R. Spencer Montei
`Foley & Lardner LLP
`321 North Clark Street
`Suite No. 2800
`Chicago, Illinois 60654-5313
`
`
`Signature: /s/Thomas L. Holt
`Printed Name: Thomas L. Holt
`
`
`
`Phone: (206) 359-8000
`
`
`
`
`113405-7003/133994070.1
`
`-3-
`
`

`

`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 1 of 20 PageID #:357
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`Case No. 16-cv-05084
`
`Honorable John J. Tharp Jr.
`
`Magistrate Judge Sheila M. Finnegan
`
`
` DEMAND FOR JURY TRIAL
`
`
` )
` )
` )
` )
` )
` )
` )
` )
` )
` )
` )
` )
`
`TALKING RAIN BEVERAGE COMPANY,
`INC.,
`
`Plaintiff,
`
`v.
`
`KLARBRUNN, INC.,
`
`Defendant.
`
`
`FIRST AMENDED COMPLAINT
`
`Plaintiff Talking Rain Beverage Company, Inc. (“Talking Rain”), for its First Amended
`
`
`
`Complaint against Defendant Klarbrunn, Inc. (“Klarbrunn”) alleges as follows on personal
`
`knowledge as to the facts concerning itself and on information and belief as to all other facts:
`
`Introduction
`
`1.
`
`This is an action for trademark infringement, false designation of origin, and
`
`unfair competition arising out of Klarbrunn’s sales of the VITA ICE flavored sparkling water
`
`product, which prominently features the ICE mark. That product is a blatant and deceptive
`
`knock-off of Talking Rain’s pioneering flavored sparkling water product, SPARKLING ICE.
`
`Klarbrunn has mimicked Talking Rain’s federally registered, incontestable trademarks ICE and
`
`SPARKLING ICE.
`
`2.
`
`The likelihood of confusion from the similarity of the names is compounded by
`
`the other features of SPARKLING ICE that Klarbrunn has copied with its product and
`
`packaging, which are sufficient to cause consumer confusion even apart from the similarity of
`
`the product names. The labeling on Klarbrunn’s ICE products prominently features the ICE
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 2 of 20 PageID #:358
`
`mark separate and apart from the words “Klarbrunn” and “VITA,” which are not easily visible to
`
`the consumer. Specifically, the words “Klarbrunn” and “VITA” are significantly undersized by
`
`comparison and written in a completely different direction on the label. In addition, the ICE
`
`product itself is an obvious imitation of Talking Rain’s SPARKLING ICE product, copying
`
`some of the flavors and colors of SPARKLING ICE as well as the product ingredients, right
`
`down to the suite of vitamins added. A simple side-by-side depiction of the products shows their
`
`confusing similarity and the high risk of consumer deception:
`
`
`
`
`
`3.
`
`Klarbrunn’s conduct violates federal and Illinois law. On information and belief,
`
`Klarbrunn’s branding and presentation of its product have caused actual confusion in the
`
`marketplace. Unless enjoined, Klarbrunn’s misleading actions will continue to create consumer
`
`confusion, adversely affect Talking Rain’s sales, and destroy the goodwill that Talking Rain has
`- 2 -
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 3 of 20 PageID #:359
`
`spent years cultivating in its SPARKLING ICE brand.
`
`4.
`
`Talking Rain also seeks cancellation of Klarbrunn’s KLARBRUNN VITA ICE
`
`federal trademark registration, U.S. Registration No. 4,482,516, on the basis that that mark is
`
`confusingly similar to Talking Rain’s prior registered SPARKLING ICE and ICE trademarks,
`
`and is likely to cause confusion, or to cause mistake, or to deceive, pursuant to 15 U.S.C. §
`
`1052(d).
`
`Parties
`
`5.
`
`Talking Rain is a Washington corporation with its principal place of business in
`
`Preston, Washington.
`
`6.
`
`Klarbrunn is a Wisconsin corporation with its corporate office in Watertown,
`
`Wisconsin. Klarbrunn is a wholly-owned subsidiary of Wis-Pak, Inc.
`
`Jurisdiction and Venue
`
`7.
`
`This Court has jurisdiction as to the subject matter of this action under 15 U.S.C.
`
`§§ 1119 and 1121 and 28 U.S.C. §§ 1331, 1338(a), (b), and 1367(a). This Court also has
`
`jurisdiction as to the subject matter of this action under 15 U.S.C. § 1332(a) because the suit is
`
`between citizens of different States and the amount in controversy exceeds $75,000, excluding
`
`interest and costs.
`
`8.
`
`This Court has personal jurisdiction over Klarbrunn because Klarbrunn carries on
`
`substantial and continuous business activities in Illinois. Klarbrunn distributes and sells products
`
`in Illinois under various brand names, including the ICE product.
`
`9.
`
`Venue is proper in this District under 28 U.S.C. § 1391(b) because Klarbrunn is
`
`subject to the Court’s personal jurisdiction in Illinois and would be subject to personal
`
`jurisdiction in this District if this District were a State.
`
`- 3 -
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 4 of 20 PageID #:360
`
`Talking Rain and Its SPARKLING ICE Brand
`
`10.
`
`In an industry dominated by international behemoths like Nestlé, Pepsico, the
`
`Coca Cola Company, and Cott Corporation, Talking Rain is a rarity – a successful independent,
`
`privately-owned producer and distributor of carbonated water and naturally flavored sparkling
`
`water products. Over the past twenty-eight years, Talking Rain has grown from its Pacific
`
`Northwest roots to gain a national market for its products. The most significant element of that
`
`growth has been the company’s SPARKLING ICE brand of flavored sparkling water.
`
`11.
`
`Talking Rain introduced SPARKLING ICE products in the early 1990s. Since
`
`then the SPARKLING ICE brand has grown to include twenty flavor varieties, including Orange
`
`Mango, Black Raspberry, and Pink Grapefruit. SPARKLING ICE beverages are sold in single-
`
`serve 17-ounce bottles, multi-packs, and 8-ounce cans. Talking Rain sells SPARKLING ICE in
`
`over 100,000 retail outlets throughout the United States, including supermarkets, mass retail
`
`stores, wholesale clubs, drug stores, and convenience stores. It is also available for home
`
`delivery through Peapod and Amazon and for office delivery through Costco Business.
`
`12.
`
`SPARKLING ICE products have enjoyed tremendous consumer acceptance. In
`
`June 2009, Talking Rain introduced the SPARKLING ICE bottle trade dress – the overall “look”
`
`of the product – that it has used continuously since that time. Talking Rain intentionally
`
`designed the new trade dress to be unlike any other packaging in the flavored water category at
`
`the time and to visually distinguish SPARKLING ICE products from the competition on store
`
`shelves. At roughly the same time, the company also improved the flavorings used in the
`
`product. Since Talking Rain made those changes, sales of SPARKLING ICE products have
`
`increased over one hundred fold – a growth rate virtually unheard of in the beverage industry.
`
`- 4 -
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 5 of 20 PageID #:361
`
`Today it is the nation’s number one brand of bottled sparkling water, both by market share and
`
`sales volume, ahead of such well-known brands as Perrier, Poland Spring, and Arrowhead.
`
`The SPARKLING ICE Trademarks
`
`13.
`
`Talking Rain has continuously used and owned the trademark ICE since at least
`
`1993. Talking Rain owns United States Trademark Registration No. 2,040,885 for the mark ICE
`
`for “carbonated and noncarbonated flavored and unflavored water” in Class 32.
`
`14.
`
`Talking Rain has continuously used and owned the trademark SPARKLING ICE
`
`since at least 1995. Talking Rain owns United States Trademark Registration No. 1,944,414 for
`
`the mark SPARKLING ICE for “non-alcoholic soft drinks” in Class 32.
`
`15.
`
`The ICE and SPARKLING ICE registrations are valid, subsisting, in full force
`
`and effect, and have become incontestable pursuant to 15 U.S.C. § 1065.
`
`16.
`
`The registration of the ICE and SPARKLING ICE trademarks constitutes prima
`
`facie evidence of their validity and conclusive evidence of Talking Rain’s exclusive right to use
`
`the ICE and SPARKLING ICE trademarks in connection with the goods identified in the
`
`registrations.
`
`17.
`
`The ICE and SPARKLING ICE marks are inherently distinctive and the public
`
`has come to associate those marks exclusively with the unique source of the products bearing
`
`them, namely, Talking Rain. Talking Rain’s advertising, promotion, and marketing efforts have
`
`resulted in favorable public acceptance and recognition of the ICE and SPARKLING ICE
`
`trademarks. As a result of Talking Rain’s efforts, and the millions of dollars in sales of products
`
`bearing the trademarks, consumers have come to understand those trademarks as signifying a
`
`unique source for the SPARKLING ICE brand.
`
`- 5 -
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 6 of 20 PageID #:362
`
`18.
`
`Talking Rain has invested large sums of money to promote its SPARKLING ICE
`
`products so consumers will readily recognize the ICE and SPARKLING ICE marks used in
`
`connection with SPARKLING ICE products on store shelves. Advertising for SPARKLING
`
`ICE flavored sparkling water consistently features the ICE and SPARKLING ICE marks as
`
`Talking Rain uses those marks on bottles—not the product being poured or already in a glass,
`
`but rather the packaging as a consumer would see it on the store shelf.
`
`The KLARBRUNN VITA ICE Registration
`
`19.
`
`Klarbrunn owns U.S. Registration No. 4,482,516 for KLARBRUNN VITA ICE,
`
`which issued on February 11, 2014. The application for that registration was filed on February
`
`28, 2013.
`
`20.
`
`The KLARBRUNN VITA ICE registration claims first use of the KLARBRUNN
`
`VITA ICE mark on April 23, 2013.
`
`21.
`
`The KLARBRUNN VITA ICE registration covers “flavor enhanced sparkling
`
`water.”
`
`22.
`
`Talking Rain’s use and registration of its ICE and SPARKLING ICE marks
`
`predates Klabrunn’s first use date and filing date for the KLABRUNN VITA ICE mark by
`
`roughly twenty years.
`
`Klarbrunn’s Infringement
`
`23.
`
`Klarbrunn’s ICE product competes directly with Talking Rain’s SPARKLING
`
`ICE products in the same specialized product category: zero-calorie flavored sparkling water.
`
`ICE beverages are and (absent an injunction) will be sold in the same trade channels, including
`
`in some of the very same stores, as SPARKLING ICE beverages. Indeed, the products are sold
`
`virtually side by side in some store aisles.
`
`- 6 -
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 7 of 20 PageID #:363
`
`24. With its ICE product, Klarbrunn has deliberately imitated virtually every feature
`
`of the SPARKLING ICE product. The names of the products are highly similar, particularly
`
`with Klarbrunn’s label and store displays that prominently feature the ICE mark. Klarbrunn has
`
`even copied some of SPARKLING ICE’s flavors.
`
`25.
`
`Given the striking similarity between the products’ respective names, there is a
`
`high likelihood that consumers will mistakenly believe that Klarbrunn’s ICE product is actually
`
`the SPARKLING ICE product or mistakenly believe that Klarbrunn’s product comes from, is
`
`sponsored or licensed by, or is associated or affiliated with, Talking Rain, the maker of
`
`SPARKLING ICE beverages. In addition to Klarbrunn’s ICE products’ emphasizing the ICE
`
`mark on labeling, Klarbrunn displays its ICE products in stores in boxes that prominently feature
`
`the ICE mark as well:
`
`Talking Rain’s SPARKLING ICE display (left); Klarbrunn’s ICE display (right)
`
`
`
`- 7 -
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 8 of 20 PageID #:364
`
`26.
`
`Klarbrunn has registered the mark KLARBRUNN VITA ICE, but its ICE
`
`products do not prominently feature KLARBRUNN and VITA. Rather, Klarbrunn effectively
`
`uses ICE as a stand-alone mark.
`
`27.
`
`The likelihood of confusion is exacerbated by the fact that flavored sparkling
`
`water is a low-cost item (generally less than $2 per bottle), meaning that consumers are unlikely
`
`to exercise substantial care in making a purchase. In fact, single-serve bottles are frequently an
`
`impulse purchase, and stores often place them in high-visibility locations at the end of aisles or
`
`near checkout counters so that consumers can quickly grab a bottle or two as they pass by.
`
`28.
`
`On information and belief, consumers have experienced actual confusion between
`
`the Klarbrunn ICE and Talking Rain SPARKLING ICE products.
`
`29.
`
`Klarbrunn is willfully infringing Talking Rain’s ICE and SPARKLING ICE
`
`trademarks.
`
`30.
`
`Klarbrunn has been on notice of its infringement since at least 2013, when
`
`Talking Rain notified Klarbrunn of its infringing conduct via letter. Talking Rain has since sent
`
`multiple letters to Klarbrunn regarding the infringement, but Klarbrunn has refused to cease its
`
`use of the ICE mark.
`
`31.
`
`Additionally, Klarbrunn’s registered KLARBRUNN VITA ICE mark
`
`is
`
`confusingly similar to Talking Rain’s ICE and SPARKLING ICE marks, as the parties’
`
`respective marks all prominently feature the term “ICE”.
`
`32.
`
`The goods covered by Klarbrunn’s registered KLARBRUNN VITA ICE
`
`registration are identical to or highly similar to goods covered by Talking Rain’s ICE and
`
`SPARKLING ICE marks, namely, flavored sparkling water.
`
`- 8 -
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 9 of 20 PageID #:365
`
`Injury to Talking Rain and the Public
`
`33.
`
`In developing and marketing its ICE beverages, Klarbrunn has intentionally
`
`adopted a product name and imagery that is likely to deceive consumers into thinking they are
`
`buying SPARKLING ICE products or that they come from or are affiliated with Talking Rain.
`
`Deception of consumers is an injury to the public interest.
`
`34.
`
`If Klarbrunn’s infringement is not enjoined, Talking Rain will continue to suffer
`
`irreparable damage to its hard-earned brand recognition in the flavored sparkling water category.
`
`As the latecomer, Klarbrunn’s product will unfairly gain recognition and sales at Talking Rain’s
`
`expense by borrowing from the reputation, goodwill, and recognition that Talking Rain has built
`
`in its ICE and SPARKLING ICE trademarks.
`
`35.
`
`Klarbrunn’s unlawful conduct will also cause Talking Rain to lose sales and
`
`revenues as consumers are confused into purchasing Klarbrunn’s ICE beverages under the
`
`mistaken belief that they are buying SPARKLING ICE beverages or another product produced
`
`by or affiliated with Talking Rain. Klarbrunn’s conduct will also damage Talking Rain as others
`
`in sales and distribution channels are confused into believing that Klarbrunn’s ICE beverages are
`
`SPARKLING ICE beverages or are produced by or affiliated with Talking Rain.
`
`36.
`
`In addition, Talking Rain is being and will be irreparably injured by losing control
`
`of its brand’s reputation. Klarbrunn’s unauthorized imitation of Talking Rain’s trademarks
`
`causes Talking Rain to be associated with a product over which it has no control. That
`
`involuntary association will injure Talking Rain, especially if consumers are dissatisfied with
`
`Klarbrunn’s product for any reason and consequently have a less favorable opinion of
`
`- 9 -
`
`SPARKLING ICE.
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 10 of 20 PageID #:366
`
`37.
`
`The continued registration of Klarbrunn’s KLARBRUNN VITA ICE mark is
`
`likely to cause confusion, to cause mistake, or to deceive consumers regarding Klarbrunn’s mark
`
`and Talking Rain’s ICE and SPARKLING ICE marks, resulting in injury to Talking Rain and the
`
`public.
`
`COUNT I
`Infringement of Federally Registered Trademark—ICE
`(Lanham Act § 32, 15 U.S.C. § 1114)
`
`38.
`
`Talking Rain repeats and realleges each allegation of the foregoing paragraphs as
`
`if fully set forth herein.
`
`39.
`
`Klarbrunn uses in interstate commerce a counterfeit or colorable imitation of
`
`Talking Rain’s registered ICE trademark in connection with Klarbrunn’s promotion and sale of
`
`its ICE flavored sparkling water products.
`
`40.
`
`Klarbrunn’s unauthorized imitation of the ICE mark is likely to cause confusion
`
`and mistake among consumers and others as to the source, origin, or sponsorship of Klarbrunn’s
`
`ICE products.
`
`41.
`
`Klarbrunn’s unauthorized imitation of the ICE mark in interstate commerce
`
`constitutes trademark infringement under Section 32 of the Lanham Act, 15 U.S.C. § 1114, and
`
`use of a counterfeit mark under Section 35 of the Lanham Act, 15 U.S.C. § 1117(b), (c).
`
`42.
`
`Klarbrunn’s unauthorized imitation of the ICE mark is a knowing, willful, and
`
`intentional violation of Talking Rain’s rights.
`
`43.
`
`Klarbrunn’s infringement diminishes the value of Talking Rain’s trademark,
`
`goodwill, and business reputation. Further, Klarbrunn’s acts of infringement, unless restrained,
`
`will cause great and irreparable injury to Talking Rain and to the recognition and goodwill
`
`- 10 -
`
`
`
`

`

`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 11 of 20 PageID #:367
`
`represented by the ICE mark, in an amount that cannot be ascertained at this time, leaving
`
`Talking Rain with no adequate remedy at law.
`
`44.
`
`By reason of the foregoing, Talking Rain is entitled to injunctive relief restraining
`
`Klarbrunn from any further infringement of the ICE mark and is also entitled to recovery of
`
`Klarbrunn’s profits, actual damages, enhanced profits and damages (including trebling), costs,
`
`reasonable attorneys’ fees, and interest under 15 U.S.C. §§ 1114, 1116, and 1117.
`
`COUNT II
`Infringement of Federally Registered Trademark—SPARKLING ICE
`(Lanham Act § 32, 15 U.S.C. § 1114)
`
`45.
`
`Talking Rain repeats and realleges each allegation of the foregoing paragraphs as
`
`if fully set forth herein.
`
`46.
`
`Klarbrunn uses in interstate commerce a counterfeit or colorable imitation of
`
`Talking Rain’s registered SPARKLING ICE trademark in connection with Klarbrunn’s
`
`promotion and sale of its ICE flavored sparkling water products.
`
`47.
`
`Klarbrunn’s unauthorized use of the SPARKLING ICE mark is likely to cause
`
`confusion and mistake among consumers and others as to the source, origin, or sponsorship of
`
`Klarbrunn’s ICE products.
`
`48.
`
`Klarbrunn’s unauthorized use of the SPARKLING ICE mark in interstate
`
`commerce constitutes trademark infringement under Section 32 of the Lanham Act, 15 U.S.C.
`
`§ 1114, and use of a counterfeit mark under Section 35 of the Lanham Act, 15 U.S.C. § 1117(b),
`
`(c).
`
`49.
`
`Klarbrunn’s unauthorized use of the SPARKLING ICE mark is a knowing,
`
`willful, and intentional violation of Talking Rain’s rights.
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`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 12 of 20 PageID #:368
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`50.
`
`Klarbrunn’s infringement diminishes the value of Talking Rain’s trademark,
`
`goodwill, and business reputation. Further, Klarbrunn’s acts of infringement, unless restrained,
`
`will cause great and irreparable injury to Talking Rain and to the recognition and goodwill
`
`represented by the SPARKLING ICE mark, in an amount that cannot be ascertained at this time,
`
`leaving Talking Rain with no adequate remedy at law.
`
`51.
`
`By reason of the foregoing, Talking Rain is entitled to injunctive relief restraining
`
`Klarbrunn from any further infringement of the SPARKLING ICE mark and is also entitled to
`
`recovery of Klarbrunn’s profits, actual damages, enhanced profits and damages (including
`
`trebling), costs, reasonable attorneys’ fees, and interest under 15 U.S.C. §§ 1114, 1116, and
`
`1117.
`
`COUNT III
`False Designation of Origin—ICE Mark
`(Lanham Act § 43(a), 15 U.S.C. § 1125(a))
`
`52.
`
`Talking Rain repeats and realleges each and every allegation in the foregoing
`
`paragraphs as if fully set forth herein.
`
`53.
`
`Talking Rain uses and owns the ICE mark in connection with its sale of
`
`SPARKLING ICE products. The trademark is inherently distinctive and has also acquired
`
`secondary meaning as a designation of origin for Talking Rain.
`
`54.
`
`In connection with its promotion and sale of its ICE product, Klarbrunn uses in
`
`interstate commerce the ICE mark. Klarbrunn’s promotion and sale of ICE is likely to cause
`
`confusion and mistake and to deceive consumers and others as to the origin, sponsorship, or
`
`affiliation of the parties’ products. Consumers seeing ICE in the marketplace are likely to
`
`believe it is sponsored by, associated with, or otherwise affiliated with SPARKLING ICE and/or
`
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`Talking Rain, or vice versa.
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`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 13 of 20 PageID #:369
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`55.
`
`Klarbrunn’s use of the ICE mark constitutes false designation of origin in
`
`violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`56.
`
`Klarbrunn’s use of the ICE mark is a knowing, willful, and intentional violation
`
`of Talking Rain’s rights.
`
`57.
`
`Klarbrunn’s acts of false designation of origin, unless restrained, will cause great
`
`and irreparable harm to Talking Rain and to the business goodwill represented by the ICE mark,
`
`in an amount that cannot be ascertained at this time, leaving Talking Rain with no adequate
`
`remedy at law.
`
`58.
`
`By reason of the foregoing, Talking Rain is entitled to injunctive relief against
`
`Klarbrunn, restraining it from any further acts of false designation of origin, and is also entitled
`
`to recovery of Klarbrunn’s profits, actual damages, enhanced profits and damages (including
`
`trebling), costs, and reasonable attorneys’ fees under 15 U.S.C. §§ 1116, 1117, and 1125.
`
`COUNT IV
`False Designation of Origin—SPARKLING ICE Mark
`(Lanham Act § 43(a), 15 U.S.C. § 1125(a))
`
`59.
`
`Talking Rain repeats and realleges each and every allegation in the foregoing
`
`paragraphs as if fully set forth herein.
`
`60.
`
`Talking Rain uses and owns the SPARKLING ICE mark in connection with its
`
`sale of SPARKLING ICE products. The trademark is inherently distinctive and has also
`
`acquired secondary meaning as a designation of origin for Talking Rain.
`
`61.
`
`In connection with its promotion and sale of its ICE product, Klarbrunn uses in
`
`interstate commerce the ICE mark, which is confusingly similar to the SPARKLING ICE mark.
`
`Klarbrunn’s promotion and sale of ICE is likely to cause confusion and mistake and to deceive
`
`consumers and others as to the origin, sponsorship, or affiliation of the parties’ products.
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`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 14 of 20 PageID #:370
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`Consumers seeing ICE in the marketplace are likely to believe it is sponsored by, associated
`
`with, or otherwise affiliated with SPARKLING ICE and/or Talking Rain, or vice versa.
`
`62.
`
`Klarbrunn’s use of the ICE mark constitutes false designation of origin in
`
`violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`63.
`
`Klarbrunn’s use of the ICE mark is a knowing, willful, and intentional violation
`
`of Talking Rain’s rights.
`
`64.
`
`Klarbrunn’s acts of false designation of origin, unless restrained, will cause great
`
`and irreparable harm to Talking Rain and to the business goodwill represented by the
`
`SPARKLING ICE mark, in an amount that cannot be ascertained at this time, leaving Talking
`
`Rain with no adequate remedy at law.
`
`65.
`
`By reason of the foregoing, Talking Rain is entitled to injunctive relief against
`
`Klarbrunn, restraining it from any further acts of false designation of origin, and is also entitled
`
`to recovery of Klarbrunn’s profits, actual damages, enhanced profits and damages (including
`
`trebling), costs, and reasonable attorneys’ fees under 15 U.S.C. §§ 1116, 1117, and 1125.
`
`COUNT V
`Violation of Illinois Consumer Fraud and Deceptive Business Practices Act
`(815 ILCS 505/1, et seq.)
`
`
`66.
`
`Talking Rain repeats and re-alleges each and every allegation in the foregoing
`
`paragraphs as if fully set forth herein.
`
`67.
`
`The acts, practices and conduct of Klarbrunn, as alleged above in this Complaint,
`
`constitute unfair or deceptive business practices in violation of 815 ILCS 505/1, et seq., in that
`
`said acts, practices, and conduct are likely to lead the public to conclude, incorrectly, that ICE
`
`products sold by Klarbrunn originate with, are sponsored by, or are authorized by Talking Rain,
`
`to the damage and harm of Talking Rain and the public.
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`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 15 of 20 PageID #:371
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`68.
`
`Klarbrunn’s use of confusingly and deceptively similar imitations of the ICE
`
`mark and SPARKLING ICE mark is willful and intentional, with the intention of deceiving the
`
`public as to the source of Klarbrunn’s goods and services.
`
`69.
`
`As a direct and proximate result of Klarbrunn’s acts, practices and conduct, as
`
`alleged, Talking Rain has been and will likely continue to be injured and damaged, and Talking
`
`Rain has no adequate remedy at law for this injury.
`
`70.
`
`As a result of Klarbrunn’s acts, Klarbrunn has been unjustly enriched and Talking
`
`Rain has been damaged in an amount not as yet determined or ascertainable. At a minimum,
`
`however, Talking Rain is entitled to injunctive relief and an accounting of Klarbrunn’s profits,
`
`damages, and costs.
`
`COUNT VI
`Violation of Illinois Uniform Deceptive Trade Practices Act
`(815 ILCS 510/1, et seq.)
`
`Talking Rain repeats and re-alleges each and every allegation in the foregoing
`
`71.
`
`paragraphs as if fully set forth herein.
`
`72.
`
`The acts, practices and conduct of Klarbrunn as set forth above are likely to cause
`
`confusion or misunderstanding as to the source, sponsorship, approval or certification of goods
`
`provided by Klarbrunn, and thus constitute unfair and deceptive acts or practices in the conduct
`
`of a business, trade or commerce in violation of Illinois statute 815 ILCS 510/1, et seq.
`
`73.
`
`The public is likely to be damaged as a result of Klarbrunn’s deceptive trade
`
`practices or acts.
`
`74.
`
`Klarbrunn’s acts, practices, and conduct as alleged above have been willful and
`
`caused, and are likely to continue to cause, injury and damage to Talking Rain.
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`Case: 1:16-cv-05084 Document #: 50 Filed: 12/14/16 Page 16 of 20 PageID #:372
`
`COUNT VII
`Illinois Common Law Unfair Competition
`
`
`75.
`
`Talking Rain repeats and re-alleges each and every allegation in the foregoing
`
`paragraphs as if fully set forth herein.
`
`76.
`
`Klarbrunn’s marketing, promotion, offering for sale, and sale of goods under the
`
`ICE mark constitute unfair competition under the common law of the State of Illinois.
`
`77.
`
`As a result of Klarbrunn’s conduct, the public is likely to believe that Klarbrunn’s
`
`g