Bon Appetit v. Schwan's - Bon Appetit Trademark Complaint PDF
Bon Appetit v. Schwan's - Bon Appetit Trademark Complaint PDF
Bon Appetit v. Schwan's - Bon Appetit Trademark Complaint PDF
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WESTERN DIVISION
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v.
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SCHWANS IP, LLC,
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a Minnesota Limited Liability
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Company, and
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SCHWANS CONSUMER
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BRANDS, INC.
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a Georgia Corporation,
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Defendants.
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____________________________ )
COMPLAINT
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Bon Apptit Danish, Inc. (Bon Apptit), brings this action for trademark
Schwans IP, LLC and Schwans Consumer Brands, Inc. (collectively Schwans)
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NATURE OF ACTION
1.
Bon Apptit asserts both Federal and State causes of action based
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Bon Apptits registered trademark BON APPETIT in connection with the sale of
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pizza. Schwans infringing use of the BON APPETIT trademark is likely to cause
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confusion, harming the public and damaging Bon Apptits valuable rights.
JURISDICTION
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3.
This Court has original jurisdiction over Counts One to Four under
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28 U.S.C. 1338(a) and 28 U.S.C. 1331 because they arise under the laws of the
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United States, namely the Lanham Act, 15 U.S.C. 1051 et seq., which is an Act
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This Court also has original jurisdiction over the entirety of this
action under 28 U.S.C. 1332 because the matter in controversy exceeds the sum
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different states.
PARTIES
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5.
Minnesota limited liability company with a principal place of business at 115 West
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7.
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Inc. is a Georgia corporation with a principal place of business at 100 South 5th
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danishes, cakes and muffin pastries for on the go consumers under the BON
APPETIT mark in 1990.
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Since its humble start, Bon Apptit has become the premier on the
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12.
To protect and give further notice of its rights, Bon Apptit owns a
federal trademark registration for BON APPETIT, Reg. No. 1,826,501 for danish,
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cakes and muffin pastries, with the marks date of first use and first use in
commerce on August 1, 1990. This registration issued on March 15, 1994. A copy
of the Registration certificate for this mark is attached as Exhibit A. The BON
the Lanham Act, is prima facie evidence of Bon Apptits ownership of the mark,
the validity of the mark, and its exclusive right to use the mark in connection with
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the above identified goods. Further, the BON APPETIT mark has been held
incontestable in accordance with 15 U.S.C. 1065 of the Lanham Act, which
constitutes conclusive evidence of the validity of the BON APPETIT mark and
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registration and Bon Apptits exclusive right to use the registered mark in
commerce.
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APPETITO, Reg. No. 1,960,572 for bakery goods, with the marks date of first
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use and first use in commerce on November 12, 1994. This registration issued on
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March 5, 1996. A copy of the Registration certificate for this mark is attached as
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accordance with section 1057(b) of the Lanham Act, is prima facie evidence of
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Bon Apptits ownership of the mark, the validity of the mark, and its exclusive
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right to use the mark in connection with the above identified services.
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14.
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products, with the marks date of first use and first use in commerce on 2004.
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This registration issued on June 3, 2008. A copy of the Registration certificate for
this mark is attached as Exhibit C. The BON APPETIT AMERICAS PASTRY
CHEF registration is valid and subsisting, and in accordance with section 1057(b)
of the Lanham Act, is prima facie evidence of Bon Apptits ownership of the
mark, the validity of the mark, and its exclusive right to use the mark in connection
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Bon Apptit has sold millions of dollars of goods using its BON
APPETIT Marks and has spent millions of dollars to promote and distribute its
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investment, Bon Apptit owns valuable trademark rights in its BON APPETIT
Marks.
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BON APPETIT Marks are strongly associated with Bon Apptit and represent an
extremely valuable goodwill owned by Bon Apptit throughout the United States.
SCHWANS INFRINGEMENT OF THE BON APPETIT MARKS
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APPETIT pizza product, which Schwans touts on a new BON APPETIT website
<www.bonappetitpizza.com>:
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product even after the United States Patent and Trademark Office (USPTO)
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expressly told Schwans that its use of the BON APPETIT mark on such products
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is likely to cause confusion with Bon Apptit because of Bon Apptits prior rights.
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[Schwans] and registrant [Bon Apptit] are closely related because the goods are
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all baked dough-based food items that often emanate from a single source under a
single trademark.
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use of BON APPETIT for pizza and Bon Apptits BON APPETIT Marks.
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USPTO is that Schwans own BON APPETIT trademark registrations for use on
other productsall of which post-date Bon Apptits trademark registrations
somehow permit Schwans new and expanded use of BON APPETIT.
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Registration No. 4,139,732 for BON APPETIT, which issued on May 8, 2012, for
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use in connection with frozen prepared entrees consisting primarily of meat, fish,
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Registration
3,741,789
for
the
following
design
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connection with frozen hors doeuvres comprised of meat, cheese and vegetables,
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Indeed, on May 29, 2014, the USPTO rejected Schwans arguments and
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Marks.
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Despite being told by the USPTO that its use of BON APPETIT in
connection with pizza is likely to cause confusion with Bon Apptits BON
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APPETIT Marks, Schwans brazenly proceeded with the launch of its confusingly
similar BON APPETIT product.
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and its BON APPETIT Marks, Schwans was, on information and belief, aware of
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Bon Apptit and its BON APPETIT marks well prior to Schwans application for
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and will continue to damage Bon Apptit, and the public, unless and until enjoined
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herein.
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39.
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permanently enjoined will continue to cause, irreparable harm to Bon Apptit and
to the public. Bon Apptit has no adequate remedy at law.
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42.
herein.
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Bon Apptit has common law rights in its BON APPETIT Marks,
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which are uniquely associated with Bon Apptit as the source of goods offered in
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connection therewith.
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44.
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1125(a)(1)(A).
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By reason of the foregoing acts, Schwans use has caused and will
continue to cause irreparable harm to Bon Apptit, and to the public, unless and
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SECTION 17200
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48.
herein.
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herein.
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from Burris-Phila, Inc. in Registration No. 3,741,789 for the following design
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Registration No. 3,741,789 in July of 2010, Schwans has never used in commerce
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3,741,789.
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the goods identified in Reg. No. 3,741,789, requiring that said registration be
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A.
Enter judgment that Schwans has violated the Lanham Act, 15 U.S.C.
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Section 17200;
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B.
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agents, employees, attorneys, successors, and assigns, and all other in active
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c.
1127, ordering the Director to enter upon the records of the Patent and
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Exemplary damages;
1v.
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E.
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Respectfully submitted,
Award Bon Appetit such other and further relief as this Court deems
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Paul R. Garcia
Colin T. J. O'Brien
PARTRIDGE & GARCIA, P.C.
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Paul D. Supnik
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By:_
il_vJfJ
_.~-'_
Paul D. Supnik
Attorneys for Plaintiff
BON APPETIT DANISH, INC.
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Respectfully submitted,
Paul R. Garcia
Colin T. J. O'Brien
PARTRJDGE & GARCIA, P.C.
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Paul D. Supnik
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By:_o_~
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Paul D. Supnik
Attorneys for Plaintiff
BON APPETIT DANISH, INC.
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