UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TENNESSEE
`
`
`JACK DANIEL’S PROPERTIES, INC., a
`Delaware corporation,
`
`
`Plaintiff,
`
`
`
`
`ATOMIC DOG, LLC, a Delaware limited
`liability company doing business as Atomic
`Dog Cidery LLC; and ATOMIC DOG LLC, a
`Pennsylvania limited liability company,
`
`
`Defendants.
`
`
`
`
`
`
`
` Case No.
`
`COMPLAINT FOR FEDERAL
`TRADEMARK INFRINGEMENT,
`FEDERAL UNFAIR COMPETITION AND
`FALSE DESIGNATION OF ORIGIN,
`FEDERAL TRADEMARK DILUTION,
`BREACH OF CONTRACT, TENNESSEE
`UNFAIR COMPETITION, TENNESSEE
`TRADEMARK DILUTION, COMMON
`LAW TRADEMARK INFRINGEMENT,
`AND COMMON LAW UNJUST
`ENRICHMENT
`
`DEMAND FOR JURY TRIAL
`
`
`
`Plaintiff Jack Daniel’s Properties, Inc. (“JDPI” or “Plaintiff”), for its complaint against
`
`Atomic Dog, LLC, a Delaware limited liability company doing business as Atomic Dog Cidery
`
`LLC, and Atomic Dog LLC, a Pennsylvania limited liability company (collectively, “Atomic
`
`Dog” or “Defendant”), alleges, upon personal knowledge with respect to itself and its acts and on
`
`information and belief as to all others, as follows.
`
`Nature of Action
`
`1.
`
`Jack Daniel’s Tennessee Whiskey is one of the oldest, longest-selling, and most
`
`iconic consumer products in American history. e JACK DANIEL’S trademark is famous, and
`
`Jack Daniel’s Tennessee Whiskey has been named the most valuable spirits brand in the world.
`
`From the original JACK DANIEL’S trademark to JACK-formative marks such as JACK,
`
`GENTLEMAN JACK, WINTER JACK, BLACK JACK, JACK FIRE, and JACK HONEY,
`
`
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`among others, JDPI has built up widespread goodwill and consumer recognition across a range
`
`of beverage alcohol products.
`
`2. is action arises from a dispute between JDPI and Atomic Dog concerning
`
`Atomic Dog’s ongoing and repeated acts of trademark infringement and efforts to cause
`
`consumer confusion with Jack Daniel’s Tennessee Whiskey and family of related beverage
`
`alcohol products. Many years ago, JDPI informed Atomic Dog’s predecessor-in-interest, a
`
`producer of hard alcoholic cider, that its JACK’S HARD CIDER product was likely to cause
`
`consumer confusion with the famous JACK DANIEL’S trademark for whiskey and related
`
`beverage alcohol products. To resolve the matter, the parties entered into a settlement agreement
`
`executed in 2013 which allowed for Atomic Dog’s predecessor to continue to produce and sell
`
`JACK’S HARD CIDER with critical guardrails designed to avoid consumer confusion—
`
`including but not limited to prominent use of a depiction of an individual named Jack Hauser, the
`
`claimed inspiration behind the JACK’S HARD CIDER name, as well as prominent and
`
`consistent use of the HAUSER ESTATE trademark, the house mark of Atomic Dog’s
`
`predecessor-in-interest—all in close proximity to uses of JACK’S HARD CIDER.
`
`3.
`
`Atomic Dog, aware of its inherited contractual obligations with JDPI to avoid
`
`consumer confusion, nevertheless designed, produced, and sold JACK’S HARD CIDER in cans
`
`that followed virtually none of the clear contractual obligations present in the settlement
`
`agreement. Rather, Atomic Dog stripped away the prominent connection to its predecessor-in-
`
`interest Hauser Estate and the individual named Jack Hauser, and produced a beverage alcohol
`
`product that placed great emphasis on the “JACK’S” portion of its trademark. Atomic Dog’s
`
`JACK’S HARD CIDER branded products, when encountered by consumers on store shelves, are
`
`highly likely to lead to confusion with JDPI’s well-known products sold under the JACK
`
`
`
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`DANIEL’S brand, including ready-to-drink whiskey beverages sold in cans. To protect its
`
`valuable trademark rights, JDPI brought its concerns to Atomic Dog’s attention. ereafter the
`
`parties attempted to resolve the present dispute, but ultimately a mutually satisfactory agreement
`
`could not be reached.
`
`4.
`
`Atomic Dog’s conduct constitutes both breach of contract and trademark
`
`infringement and dilution under federal and state law. JDPI is left with no choice but to bring this
`
`action to protect its invaluable trademark rights and consumer goodwill that have developed for
`
`over a century.
`
`Parties
`
`5.
`
`Plaintiff JDPI is a corporation organized and existing under the laws of the State
`
`of Delaware, with its principal place of business in San Rafael, California. Jack Daniel’s
`
`Tennessee Whiskey has been produced in this District since at least 1875, except during
`
`Prohibition.
`
`6.
`
`Defendant Atomic Dog, LLC is a limited liability company organized and existing
`
`under the laws of the State of Delaware, doing business as Atomic Dog Cidery LLC, and with its
`
`principal place of business in Gettysburg, Pennsylvania. On information and belief, the members
`
`of Atomic Dog, LLC are citizens of Pennsylvania.
`
`7.
`
`Defendant Atomic Dog LLC is a limited liability company organized and existing
`
`under the laws of the Commonwealth of Pennsylvania, with its principal place of business in
`
`Gettysburg, Pennsylvania. On information and belief, the members of Atomic Dog, LLC are
`
`citizens of Pennsylvania.
`
`8.
`
`On information and belief, Atomic Dog, LLC and Atomic Dog LLC are the agent
`
`or alter ego of each other, operate as a common enterprise, or share a unity of interest and
`
`ownership.
`
`
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`Jurisdiction and Venue
`
`9. is is an action for infringement of federally-registered trademarks in violation
`
`of 15 U.S.C. § 1114(1); for infringement of trademarks in violation of 15 U.S.C. § 1125(a)(1);
`
`for dilution of trademarks in violation of 15 U.S.C. § 1125(c); for trademark infringement under
`
`Tennessee law and common law; for trademark dilution under Tennessee law; for unfair
`
`competition under Tennessee law; for unjust enrichment under Tennessee common law; and for
`
`breach of contract. e Court has subject-matter jurisdiction over Plaintiff’s claims for relief
`
`arising under the United States Trademark Act pursuant to 15 U.S.C. § 1121 and 28 U.S.C.
`
`§ 1338(a). e Court has original or supplemental jurisdiction over the subject matter of
`
`Plaintiff’s claims for relief under state law pursuant to 28 U.S.C. §§ 1338(b) and 1367.
`
`Additionally, the Court has subject-matter jurisdiction over Plaintiff’s claims for the additional
`
`reason that this is an action between citizens of different states in which the value of the amount
`
`in controversy exceeds $75,000, exclusive of interest and costs, pursuant to 28 U.S.C. § 1332.
`
`10. e Court has personal jurisdiction over Atomic Dog because it does business in
`
`Tennessee by, among other things, selling products in this District, including the unlawful
`
`products at issue in this action. On information and belief, Atomic Dog purposefully caused the
`
`unlawful products to be sold to distributors in Tennessee and elsewhere for resale by retailers in
`
`Tennessee, including within this District.
`
`11.
`
`Further, on information and belief, Atomic Dog committed tortious acts within the
`
`State of Tennessee, or has committed tortious acts without the State of Tennessee and regularly
`
`does or solicits business, engages in other persistent courses of conduct, or derives substantial
`
`revenue from products sold or offered in the State of Tennessee and derives substantial revenue
`
`from interstate commerce. In addition, JDPI has been injured in this District.
`
`
`
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`12.
`
`Further, this Court has personal jurisdiction under Tennessee’s long-arm statute,
`
`Tenn. Code Ann. § 20-2-201 et seq., because, on information and belief, 1) Atomic Dog has
`
`transacted business in Tennessee; 2) the tortious acts or omissions occurred in Tennessee; and
`
`3) jurisdiction based on Atomic Dog’s contacts with Tennessee (including, but not limited to,
`
`sales of products) is not inconsistent with the Constitution of the State of Tennessee or the
`
`Constitution of the United States.
`
`13.
`
`Venue is proper in this Court under 28 U.S.C. § 1391(b)(1), (b)(2), and (c)(2)
`
`because Atomic Dog is considered to reside in this District, or because a substantial part of the
`
`events or omissions giving rise to Plaintiff’s claims occurred in this District, or a substantial part
`
`of the property that is the subject of the action is situated in this District.
`
`Allegations Common to All Claims for Relief
`
`Jack Daniel’s JACK Trademarks
`
`14.
`
`Plaintiff JDPI owns and licenses the use of trademarks used in connection with
`
`Jack Daniel’s Tennessee Whiskey and other Jack Daniel’s beverage alcohol products. Tennessee
`
`whiskey has been produced in this District and sold in the United States under the JACK
`
`DANIEL’S mark continuously since at least 1875, except during Prohibition, making Jack
`
`Daniel’s Tennessee Whiskey one of the oldest, longest-selling, and reportedly most iconic
`
`consumer products in American history.
`
`15.
`
`Since long prior to the commencement of Atomic Dog’s acts of infringement,
`
`dilution, unfair competition, and breach of contract complained of herein, and continuously to
`
`the present, Jack Daniel’s Tennessee Whiskey has been sold under the JACK DANIEL’S mark
`
`and promoted and marketed under the trademark JACK, including but not limited to with the
`
`following trade dress:
`
`
`
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`16.
`
`JDPI also licenses the use of the JACK DANIEL’S mark and certain JACK-
`
`formative marks, including but not limited to JACK, GENTLEMAN JACK, WINTER JACK,
`
`BLACK JACK, JACK FIRE, and JACK HONEY, among others, in connection with distilled
`
`spirits and beverage alcohol generally, as well as related merchandise. For example, for over
`
`three decades, the JACK DANIEL’S trademark has been used in connection with a ready-to-
`
`drink beverage alcohol product called JACK DANIEL’S COUNTRY COCKTAILS. Because of
`
`the wide variety of beverage alcohol products sold under JDPI’s trademarks, consumers have
`
`come to recognize JACK and JACK-formative marks as an indicator of the source for a broad
`
`range of beverage alcohol products.
`
`17.
`
`JDPI owns numerous federal registrations for the JACK DANIEL’S and JACK-
`
`formative marks for distilled spirits, whiskey, fruit-flavored beverage alcohol products, prepared
`
`cocktails with beverage alcohol, and other beverage alcohol products, as well as a wide variety
`
`
`
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`of related merchandise. ese include, but are not limited to, the following United States
`
`trademark registrations, many of which are incontestable:
`
`U.S. Reg. No. Mark
`582789
`
`Goods
`Whiskey
`
`
`GENTLEMAN JACK Whisky
`JACK DANIEL’S
`Whiskey
`JACK DANIEL'S
`Whiskey
`MASTER DISTILLER
`JACK DANIEL'S
`SILVER SELECT
`JACK LIVES HERE
`
`Alcoholic beverages, namely whiskey
`
`Alcoholic beverages, namely distilled spirits
`Alcoholic beverages, namely distilled spirits
`
`
`
`
`
`
`
`Alcoholic beverages, namely, Tennessee sour mash
`whiskey
`
`Alcoholic beverages, namely distilled spirits
`Alcoholic beverages, namely whiskey
`Alcoholic beverages, namely, pre-mixed alcoholic
`cocktails
`Distilled spirits
`
`Distilled spirits
`
`Alcoholic beverages, namely, distilled spirits
`Alcoholic beverages, namely, distilled spirits
`
`1538377
`1923981
`2026758
`
`2209684
`
`2572051
`2624566
`
`2789278
`
`2795048
`2815221
`3259938
`
`3297091
`
`3297092
`
`
`JACK DANIEL
`JACK
`BLACK JACK
`
`3576142
`4106179
`
`JD
`
`
`
`
`
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`U.S. Reg. No. Mark
`4168845
`
`Goods
`Distilled spirits
`
`4404637
`
`4511173
`4652135
`
`4740015
`
`5478634
`
`5680795
`
`5984451
`
`6076253
`
`
`
`WINTER JACK
`
`JACK HONEY
`
`
`
`JACK DANIEL’S
`TENNESSEE FIRE
`
`Alcoholic beverages, namely, pre-mixed alcoholic
`cocktails
`Distilled spirits
`Distilled Spirits
`
`Alcoholic beverages except beers
`
`Alcoholic beverages, except beer
`
`
`
`Cinnamon-flavored whiskey
`
`
`JACK DANIEL'S
`TENNESSEE
`TASTERS'
`
`Alcoholic beverages, except beer
`
`Alcoholic beverages, including distilled spirits
`
`6153677
`6165199
`
`
`JACK DANIEL'S
`
`Alcoholic bitters
`Prepared alcoholic cocktail
`
`
`
`
`
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`6228202
`6355663
`6364253
`
`6380051
`
`U.S. Reg. No. Mark
`6195501
`JACK BY NAME.
`HONEY BY NATURE.
`JACK FIRE
`JACK DANIEL’S
`JACK DANIEL’S
`TENNESSEE APPLE
`JACK DANIEL’S
`TENNESSEE HONEY
`JACK DANIEL’S
`COUNTRY
`COCKTAILS
`
`6576611
`
`6655020
`
`6686743
`6686792
`
`6686793
`
`6686953
`
`6704457
`
`6704458
`
`Goods
`Alcoholic beverages, except beer
`
`Distilled Spirits
`Alcoholic beverages except beers
`Alcoholic beverages except beers
`
`Alcoholic beverages except beers
`
`Alcoholic beverages, except beer; Alcoholic mixed
`beverages, except beers; Alcoholic fruit-flavored
`beverages except beer; Alcoholic carbonated
`beverages, except beer
`Alcoholic beverages, except beers
`
`JACK DANIEL’S
`TENNESSEE
`TRAVELERS
`GENTLEMAN JACK Alcoholic beverages, except beer
`Alcoholic beverages, namely, whiskey and mixed
`alcoholic cocktails containing whiskey
`
`
`
`JACK
`
`JACK DANIEL’S
`DOWNHOME
`PUNCH
`
`Alcoholic beverages, namely, mixed alcoholic
`cocktails containing whiskey
`Flavored malt-based alcoholic beverages, excluding
`beers; Alcoholic fruit-flavored beverages, except beer
`
`Alcoholic beverages, except beer; Alcoholic mixed
`beverages, except beer; Alcoholic fruit-flavored
`beverages
`
`
`
`Alcoholic beverages, except beer; Alcoholic mixed
`beverages, except beer; Alcoholic fruit-flavored
`beverages
`
`
`
`
`Copies of the valid and subsisting certificates of registration of these marks are attached hereto as
`
`
`
`Exhibit 1. All of these JACK-formative marks create a “family” of JACK marks (collectively,
`
`the “JACK Trademarks”)
`
`
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`18.
`
`JDPI and its predecessors-in-interest and licensees have expended many hundreds
`
`of millions of dollars over many decades advertising and promoting beverage alcohol products
`
`offered under the JACK Trademarks in the United States. Such advertising and promotion have
`
`taken place in the print and electronic media, over the internet, on billboards, on stadium
`
`signage, in film and television productions, through branded bars and restaurants, and in a variety
`
`of other manners and media. For example, the primary print advertising campaign for Jack
`
`Daniel’s Tennessee Whiskey, which has prominently featured the JACK Trademarks,
`
`commenced in 1955 and has continued since then, making the campaign one of the longest
`
`continuous consumer advertising campaigns in American history. Beverage alcohol products
`
`featuring the JACK Trademarks have been seen in numerous motion pictures and television
`
`programs viewed by many millions of Americans, and have also received extensive unsolicited
`
`media coverage and public exposure as the unofficial drink of choice of celebrities such as Frank
`
`Sinatra.
`
`19.
`
`JDPI’s predecessors-in-interest and licensees have achieved billions of dollars in
`
`sales of beverage alcohol products under the JACK Trademarks. Jack Daniel’s Tennessee
`
`Whiskey is currently reported to be the best-selling whiskey in the United States, and the JACK
`
`DANIEL’S brand has consistently been ranked among the world’s most successful and valuable
`
`beverage alcohol brands. In the most recent Interbrand annual report of the “Best Global Brands
`
`2021,” the JACK DANIEL’S brand was ranked as the most valuable spirit brand in the world.
`
`20. e JACK Trademarks are famous in the United States for whiskey, distilled
`
`spirits, and beverage alcohol, and they became famous long prior to Atomic Dog’s acts of
`
`infringement, dilution, unfair competition, and breach of contract alleged herein. e JACK
`
`
`
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`DANIEL’S trademark has been adjudicated famous in the United States within the meaning of
`
`15 U.S.C. § 1125(c)(2)(A).
`
`Infringement of the JACK Trademarks and the Settlement Agreement
`
`21.
`
`In or about 2010, JDPI became aware that Hauser Estate, Inc., a Pennsylvania
`
`corporation doing business as Hauser Estate Winery (“Hauser”), had been selling an alcoholic
`
`hard cider (the “Accused Product”) under the mark “JACK’S HARD CIDER” (the “JACK’S
`
`HARD CIDER Mark”). On January 22, 2010, Hauser filed U.S. application serial no. 77917903
`
`to register the JACK’S HARD CIDER Mark in connection with “alcoholic beverages, except
`
`beer; hard cider.” Hauser’s use of and application for the JACK’S HARD CIDER Mark was in
`
`the following stylization:
`
`22.
`
`On information and belief, Hauser was founded by Jonathan Patrono as an
`
`homage to his grandfather, Jack Hauser, whose name formed the inspiration for the JACK’S
`
`HARD CIDER Mark. Jack Hauser was occasionally depicted as shown in the following image:
`
`
`
`
`
`
`
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`23.
`
`Upon publication for opposition by the United States Patent and Trademark
`
`Office, JDPI filed extensions of time to oppose the application for the JACK’S HARD CIDER
`
`Mark and communicated its concerns to Hauser that its use of the mark in the above stylization
`
`on the Accused Product created a likelihood of consumer confusion with JDPI and the JACK
`
`Trademarks. On October 20, 2010, Hauser voluntarily abandoned the application to register the
`
`JACK’S HARD CIDER Mark.
`
`24.
`
`JDPI and Hauser executed a settlement agreement effective September 18, 2013
`
`(the “Settlement Agreement”) limiting Hauser’s use of the JACK’S HARD CIDER Mark on the
`
`Accused Product.
`
`25.
`
`In the Settlement Agreement, Hauser agreed, among other things, to the following
`
`terms:
`
`
`
`not to use the marks JACK DANIEL’S, JACK, or any JACK-formative marks in
`
`connection with any beverage alcohol products except for the JACK’S HARD
`
`
`
`
`
`
`
`CIDER Mark as restricted by the Settlement Agreement;
`
`not to use any of JDPI’s trade dress associated with Jack Daniel’s whiskey, or any
`
`elements thereof;
`
`to use the JACK’S HARD CIDER mark only in connection with hard cider;
`
`to always use “Hauser Estate” in close proximity to all uses of JACK’S HARD
`
`CIDER, “on all products, packaging, advertising, and promotional materials and
`
`merchandise, including on its website at jackshardcider.com and in any social
`
`media”;
`
`
`
`to always use a depiction of Jack Hauser in close proximity to all uses of JACK’S
`
`HARD CIDER, “on all products, packaging, advertising, and promotional
`
`
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`materials and merchandise, including on its website at jackshardcider.com and in
`
`any social media”; and
`
`
`
`not to use the mark JACK alone without the words HARD CIDER “in the
`
`advertising, marketing, and promotion of hard cider … including on its website
`
`and in any social media.”
`
`26. e Settlement Agreement provides that the agreement is “binding upon, and shall
`
`inure to the benefit of, the parties’ respective successors, licensees, and assigns.”
`
`27. e Settlement Agreement was executed on behalf of Hauser by Jonathan
`
`Patrono, its President. On information and belief, Mr. Patrono remains an executive of Atomic
`
`Dog to date.
`
`Atomic Dog and its JACK’S HARD CIDER Packaging
`
`28.
`
`Subsequent to the Settlement Agreement, Atomic Dog acquired either Hauser,
`
`substantially all of its assets, or both. Atomic Dog is the successor-in-interest to Hauser.
`
`29.
`
`Pursuant to the Settlement Agreement, as the successor-in-interest to Hauser,
`
`Atomic Dog is bound by the terms of that agreement.
`
`30.
`
`JDPI became aware that Atomic Dog had introduced to the market substantially
`
`updated packaging for the Accused Product sold under the JACK’S HARD CIDER Mark,
`
`representative but non-exhaustive examples of which include:
`
`
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`
`
`(the “JACK’S HARD CIDER Cans”).
`
`31.
`
`Atomic Dog additionally expanded its use of JACK’S on a standalone basis and
`
`stripped away all references to and depictions of the HAUSER ESTATE trademark or Jack
`
`Hauser, in breach of the Settlement Agreement and in a manner that is likely to cause consumer
`
`confusion. For example, Atomic Dog operates physical retail and taproom locations branded in
`
`some places as “Jack’s Cider House” and other places as simply “Jack’s.” In further breach of
`
`the Settlement Agreement, Atomic Dog makes extensive use of “JACK’S”—separate from
`
`“HARD CIDER”—on its website located at www.jackshardcider.com (the “Infringing Website”),
`
`including but not limited to the following use of “FIND JACK’S”:
`
`
`
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`Atomic Dog’s Infringing Website lacked and continues to lack any reference to the HAUSER
`
`ESTATE trademark or a depiction of Jack Hauser, as required by the Settlement Agreement.
`
`32.
`
`Further, Atomic Dog’s social media accounts on Instagram, Facebook, and
`
`elsewhere, upon which Atomic Dog extensively advertises the Accused Product, prominently
`
`promotes the JACK’S HARD CIDER Cans. Atomic Dog consistently failed and continues to fail
`
`to make any reference to the HAUSER ESTATE trademark or include a depiction of Jack Hauser
`
`in virtually all of its promotional posts on these and other social media platforms, as required by
`
`the Settlement Agreement.
`
`33.
`
`JDPI and Atomic Dog advertise and promote their respective products in the same
`
`marketing channels. Likewise, they distribute and sell their products in the same channels of
`
`trade to the same classes of customers. Both the Accused Product sold under the JACK’S HARD
`
`
`
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`CIDER Mark and beverage alcohol products sold under the JACK Trademarks are members of
`
`the same overlapping category of beverage alcohol. ey are sold in the same retail stores,
`
`including stores in this District, as shown below:
`
`34.
`
`Additionally, Atomic Dog operates and transacts business through the interactive
`
`Infringing Website, through which Atomic Dog accepts and processes orders of its products,
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`including to residents of Tennessee and this District, as shown below:
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`35. rough its interactive Infringing Website and brick and mortar retailers, Atomic
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`Dog transacts business in this District by selling and accepting and processing orders of its
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`products, including, without limitation, the Accused Product.
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`36. e Infringing Website was designed to form contacts with potential customers,
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`including residents of this District, through which Atomic Dog invites potential customers to
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`“Sign … up for the newsletter!” by submitting their contact information to receive future contact
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`by Atomic Dog.
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`37.
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`Atomic Dog was certainly aware of JDPI and the famous JACK Trademarks when
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`it designed and produced the JACK’S HARD CIDER Cans. Among other things, the JACK
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`Trademarks are broadly famous. Additionally, under federal law, Atomic Dog is presumed to
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`have constructive notice of the JACK Trademarks by virtue of the associated federal
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`registrations. And, in any event, Atomic Dog is the successor-in-interest to the Settlement
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`Agreement with JDPI. On information and belief, Mr. Patrono, who negotiated and signed the
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`Settlement Agreement, became and remains an executive of Atomic Dog. On information and
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`belief, Atomic Dog intentionally and willfully adopted the JACK’S HARD CIDER Cans to trade
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`upon the goodwill embodied in the JACK Trademarks.
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`38.
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`Atomic Dog’s production and sale of Accused Product in the JACK’S HARD
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`CIDER Cans constitutes not only breach of the express terms of the Settlement Agreement but
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`also infringement of the JACK Trademarks. Specifically, consumers of the parties’ respective
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`products are likely to believe that they come from the same source, or otherwise share a common
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`sponsorship or affiliation. Atomic Dog’s use of the JACK’S HARD CIDER Cans in connection
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`with the Accused Product, and the merchandising thereof, is likely to cause consumers and
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`prospective purchasers of Atomic Dog’s products to mistakenly believe that they originate with
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`or are licensed, endorsed, authorized, or sponsored by the owner of the JACK Trademarks.
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`Consumers and prospective purchasers may mistakenly believe that there is a business
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`relationship, affiliation, connection, or association between Atomic Dog and the owner of the
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`JACK Trademarks.
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`39.
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`Atomic Dog’s use of the JACK’S HARD CIDER Cans is also likely to dilute the
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`famous JACK Trademarks by blurring. e similarities between the parties’ products have
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`impaired, and will continue to impair, the distinctive quality of the JACK Trademarks in the
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`marketplace.
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`40. rough discussions between JDPI and Atomic Dog, JDPI pointed out that the
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`updated packaging is both infringing and not compliant with the Settlement Agreement because
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`it: includes neither a reference to Hauser Estate nor a depiction of Jack Hauser, both of which are
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`required by the Settlement Agreement; uses JACK’S on a standalone basis in violation of the
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`Settlement Agreement, because the phrase “Pressed-On-Site” separates “JACK’S” from “HARD
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`CIDER”; uses elements of JDPI’s trade dress, in particular a black can that imitates the Jack
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`Daniel’s Trade Dress; and is used with a product evidently other than hard cider, such as a “rosé”
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`beverage. Additionally, JDPI raised its concerns that Atomic Dog was failing to abide by its
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`marketing and social media obligations to refer consistently to the HAUSER ESTATE trademark
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`and include a depiction of Jack Hauser in close proximity to all uses of JACK’S HARD CIDER,
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`and that these omissions were leading to consumer confusion.
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`41.
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`Although JDPI attempted to amicably resolve the dispute surrounding Atomic
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`Dog’s infringing use of the JACK’S HARD CIDER Mark, such efforts were unsuccessful.
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`Atomic Dog has continued and persisted in its unlawful use of the JACK’S HARD CIDER Mark
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`and the JACK’S HARD CIDER Cans. Since it became clear that a mutually satisfactory
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`agreement could not be reached, and that Atomic Dog would not cease its infringement of JDPI’s
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`trademark rights or breach of contract, JDPI has no choice but to bring this action.
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`First Claim for Relief
`(Infringement of Federally-Registered Trademarks; 15 U.S.C. § 1114(1))
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`JDPI repeats and realleges the above allegations as if fully set forth herein.
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`Atomic Dog’s use of the JACK’S HARD CIDER Mark and the JACK’S HARD
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`42.
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`43.
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`CIDER Cans in the manufacture, advertisement, promotion, display, shipment, offering for sale,
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`sale, and distribution of the Accused Product as alleged herein constitutes the use in commerce,
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`on or in connection with Atomic Dog’s goods, of reproductions, copies, or colorable imitations
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`of JDPI’s federally registered trademarks for the JACK Trademarks, which is likely to cause
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`confusion, to cause mistake, or to deceive, in violation of § 32(1) of the United States Trademark
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`Act, 15 U.S.C. § 1114(1).
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`44.
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`Atomic Dog’s willful and deliberate infringement of JDPI’s federally-registered
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`trademarks as alleged herein has caused and is likely to continue to cause substantial injury to the
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`public and to JDPI, and JDPI is entitled to injunctive relief and its attorneys’ fees and costs under
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`§§ 32, 34, 35, and 36 of the United States Trademark Act, 15 U.S.C. §§ 1114, 1116, 1117, and
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`1118.
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`45.
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`Atomic Dog’s infringement of JDPI’s federally-registered trademarks as alleged
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`herein has caused and is likely to continue to cause irreparable harm to JDPI. Unless restrained
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`and enjoined by this Court, Atomic Dog will persist in its infringement, thereby causing JDPI
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`further irreparable harm.
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`46.
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`JDPI has no adequate remedy at law.
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`Second Claim for Relief
`(Trademark Infringement in Violation of Federal Law; 15 U.S.C. § 1125(a))
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`47.
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`48.
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`JDPI repeats and realleges the above allegations as if fully set forth herein.
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`Atomic Dog’s use of the JACK’S HARD CIDER Mark and the JACK’S HARD
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`CIDER Cans in the manufacture, advertisement, promotion, display, shipment, offering for sale,
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`sale, and distribution of the Accused Product as alleged herein constitutes infringement of the
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`JACK Trademarks through use in commerce, in connection with Atomic Dog’s goods, of a
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`combination of symbols or devices that is likely to cause confusion, or to cause mistake, or to
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`deceive, as to the origin, sponsorship, or approval of Atomic Dog’s use of the JACK’S HARD
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`CIDER Mark and the JACK’S HARD CIDER Cans and commercial activities with or by JDPI,
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`in violation of § 43(a)(1) of the United States Trademark Act, 15 U.S.C. § 1125(a)(1).
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`49.
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`Atomic Dog’s willful and deliberate infringement of the JACK Trademarks as
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`alleged herein has caused and is likely to continue to cause substantial injury to the public and to
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`JDPI, and JDPI is entitled to injunctive relief and its attorneys’ fees and costs under §§ 32, 34,
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`35, and 36 of the United States Trademark Act, 15 U.S.C. §§ 1114, 1116, 1117, and 1118.
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`50.
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`Atomic Dog’s infringement of the JACK Trademarks as alleged herein has caused
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`and is likely to continue to cause irreparable harm to JDPI. Unless restrained and enjoined by
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`this Court, Atomic Dog will persist in its infringement, thereby causing JDPI further irreparable
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`harm.
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`51.
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`JDPI has no adequate remedy at law.
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`Third Claim for Relief
`(Dilution of JACK Trademarks in Violation of Federal Law; 15 U.S.C. § 1125(c))
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`52.
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`53.
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`JDPI repeats and realleges the above allegations as if fully set forth herein.
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`Atomic Dog’s use of the JACK’S HARD CIDER Mark and the JACK’S HARD
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`CIDER Cans in the manufacture, advertisement, promotion, display, shipment, offering for sale,
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`sale, and distribution of the Accused Product as alleged herein is likely to cause dilution by
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`blurring and by tarnishment of the JACK Trademarks, which became famous in Tennessee and
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`throughout the United States before Atomic Dog commenced its use of the JACK’S HARD
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`CIDER Mark and the JACK’S HARD CIDER Cans, by eroding the public’s exclusive
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`identification of the famous JACK Trademarks with JDPI, lessening the capacity of the famous
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`JACK Trademarks to identify and distinguish the goods and services sold under and connection
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`with them, and otherwise harming the reputation of said trademarks and trade dress, in violation
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`of § 43(c) of the United States Trademark Act, 15 U.S.C. § 1125(c).
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`54.
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`On information and belief, Atomic Dog willfully and deliberately intended to
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`trade on the reputation and goodwill of the JACK Trademarks, or to cause dilution of the JACK
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`Trademarks.
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`55.
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`Atomic Dog has diluted and is likely to continue to dilute the distinctiveness of
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`the famous JACK Trademarks, and JDPI is entitled to injunctive relief and its attorneys’ fees and
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`costs under §§ 34, 35, 36, and 43(c) of the United States Trademark Act, 15 U.S.C. §§ 1116,
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`1117, 1118, and 1125(c).
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`56.
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`Atomic Dog’s dilution of the JACK Trademarks as alleged herein has caused and
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`continues to cause irreparable harm to JDPI. Unless restrained and enjoined by this Court,
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`Atomic Dog will persist in its dilution, thereby causing JD