Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1057437
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`Filing date:
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`05/22/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`88164332
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`Lake Effect Ice Cream, LLC
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`Applied for Mark
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`LAKE EFFECT ARTISAN ICE CREAM
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`Correspondence
`Address
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`ELLEN S. SIMPSON
`SIMPSON & SIMPSON PLLC
`5555 MAIN STREET, SUITE 2
`WILLIAMSVILLE, NY 14221
`UNITED STATES
`TrademarkEFS@idealawyers.com, esimpson@idealawyers.com, trade-
`markefs@idealawyers.com
`716-626-1564
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Status Report
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`Status Report 05-22-2020.pdf(89658 bytes )
`Exhibit 1.pdf(311162 bytes )
`Exhibit 2.pdf(225540 bytes )
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`Ellen S. Simpson
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`TrademarkEFS@idealawyers.com, esimpson@idealawyers.com
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`/Ellen S. Simpson/
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`05/22/2020
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`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of U.S. Trademark Application Serial No. 88164332
`In the Matter of U.S. Trademark Application Serial No. 88164367
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`Applicant:
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`Marks:
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`LAKE EFFECT ARTISAN ICE CREAM
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`Lake Effect Ice Cream, LLC
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`STATUS REPORT
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`The following is a status report relating to the civil action 199 Delaware Avenue, Inc. v.
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`Lake Effect Artisan Ice Cream, et al. Civil Action No. 1:19-cv-00224 currently pending before
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`the United States District Court, Western District of New York, which occasioned the suspension
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`of the appeals of the refusals to register the above referenced marks.1
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`1.
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`On February 21, 2019, a complaint was filed in the United States District Court, Western
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`District of New York entitled 199 Delaware Avenue, Inc. v. Lake Effect Artisan Ice Cream, et al.
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`Civil Action No. 1:19-cv-00224 alleging claims of trademark infringement under 15 U.S.C. §
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`1114, unfair competition under 15 U.S.C. § 1125, trademark dilution under 15 U.S.C. § 1125,
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`New York unfair competition, New York trademark dilution under N.Y. Gen. Bus. L. § 360-l,
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`New York Deceptive Business Practices under N.Y. Gen. Bus. L. § 349, New York Use of Name
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`with Intent to Deceive under N.Y. Gen. Bus. L. § 133, and New York trademark infringement.
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`One of the named Defendants in this action, namely, Lake Effect Ice Cream, LLC, is the named
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`1 The Board consolidated the appeals of the above referenced applications on April 22, 2020.
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`1
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`applicant in U.S. Trademark Application Serial Nos. 88164332 and 88164367 currently on
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`appeal.
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`2.
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`On February 25, 2019, Plaintiff filed a Motion for a Preliminary Injunction seeking to
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`restrain and enjoin the named Defendants from using the mark LAKE EFFECT ARTISAN ICE
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`CREAM or the mark LAKE EFFECT ICE CREAM in association with food and drink, and ice
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`cream shop services, during the pendency of the civil action. The motion was fully briefed by
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`the parties, whereupon oral argument was held before the Hon. Elizabeth A. Wolford on April
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`17, 2019. On April 18, 2019, Judge Wolford denied the Motion for a Preliminary Injunction in a
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`fourteen (14) page opinion.
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`3.
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`An Answer and Counterclaims were filed by Defendants on March 29, 2019. Plaintiff
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`filed its Answer to the Counterclaims on April 19, 2019. These documents are attached to this
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`status report as Exhibits 1 and 2.
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`4.
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`The civil case was then assigned to the Hon. Hugh B. Scott, U. S. Magistrate Judge, for
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`further proceedings prior to trial. On May 30, 2019, Judge Scott issued a scheduling order for
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`the case, with discovery to be completed by August 7, 2020. Judge Scott also referred the case
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`to the court’s Alternative Dispute Resolution (ADR) program. The parties attended a mediation
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`session with counsel and a court appointed mediator on July 25, 2019. Despite the efforts of the
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`mediator and the parties, the case did not settle.
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`2
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`5.
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`Thereafter, the parties served their respective Initial Disclosures. On October 25, 2019,
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`Plaintiff served its first set of discovery requests on Defendants. On February 28, 2020,
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`Defendants served their first set of discovery requests on Plaintiff. As of the date of this status
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`report, Plaintiff has not yet served its responses to Defendants’ discovery requests. No
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`depositions have yet taken place.
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`6.
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`On March 11, 2020, counsel for Plaintiff and Defendants attended a status conference
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`with the Hon. Hugh B. Scott. On March 12, 2020, Judge Scott issued an amended scheduling
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`order with discovery to close on November 5, 2020 and any dispositive motions to be served by
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`December 7, 2020.
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`7.
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`On May 4, 2020, Plaintiff’s counsel contacted the undersigned to state that Plaintiff had
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`retained new counsel. Thereafter, Plaintiff’s new counsel contacted the undersigned to discuss
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`possible settlement of the civil action.
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`8.
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`Settlement negotiations have been ongoing since May 8, 2020. The parties are presently
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`discussing terms of settlement, including a possible consent agreement between the parties.
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`9.
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`The current status of the case is that discovery in the civil action is ongoing while a
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`possible settlement is being discussed.
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`DATED: May 22, 2020
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`Respectfully submitted,
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`/Ellen S. Simpson/
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`Ellen S. Simpson
`Simpson & Simpson PLLC
`5555 Main Street
`Williamsville, New York 14221
`(tel) 716-626-1564
`(fax) 716-626-0366
`(email) esimpson@idealawyers.com
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`Attorney for Applicant
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`U.S. Trademark Application Serial No. 88164332
`U.S. Trademark Application Serial No. 88164367
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`EXHIBIT 1
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`

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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 1 of 24
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`Plaintiff,
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF NEW YORK
`_____________________________________________
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`199 DELAWARE AVENUE, INC.,
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`v.
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`LAKE EFFECT ARTISAN ICE CREAM,
`LAKE EFFECT ICE CREAM HERTEL, LLC,
`LAKE EFFECT ICE CREAM, LLC,
`LAKE EFFECT ICE CREAM WHOLESALE, LLC, and
`LAKE EFFECT CANAL STREET, LLC,
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`
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`
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`Defendants.
`______________________________________________
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`Civil Action No. 1:19-cv-00224 EAW
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`ANSWER AND COUNTERCLAIMS
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`Defendants, Lake Effect Artisan Ice Cream (subject to Response No. 7 below), Lake Effect
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`
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`Ice Cream Hertel, LLC, Lake Effect Ice Cream, LLC, Lake Effect Ice Cream Wholesale, LLC, and
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`Lake Effect Canal Street, LLC (collectively hereinafter Defendants), by and through their undersigned
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`attorneys, as and for its Answer to Plaintiff’s Complaint, hereby state and allege as follows:
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`
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`THE PARTIES
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`1.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 1 of the Complaint and therefore deny those allegations.
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`2.
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`Defendants deny the allegations set forth in Paragraph 2 of the Complaint as there is
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`no unregistered business under the fictitious name of LAKE EFFECT ARTISAN ICE CREAM.
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`3.
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`4.
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`5.
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`Defendants admit the allegations set forth in Paragraph 3 of the Complaint.
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`Defendants admit the allegations set forth in Paragraph 4 of the Complaint.
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`Defendants admit the allegations set forth in Paragraph 5 of the Complaint.
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`1
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`

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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 2 of 24
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`6.
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`7.
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`Defendants admit the allegations set forth in Paragraph 6 of the Complaint.
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`Defendants admit the allegations set forth in Paragraph 7 of the Complaint, except for
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`any allegations relating to the unregistered business “LAKE EFFECT ARTISAN ICE CREAM” as
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`there is no such entity, and therefore Defendants deny the allegations as to Defendant Lake Effect
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`Artisan Ice Cream.
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`JURISDICTION
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`8.
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`Paragraph 8 of the Complaint contains conclusions of law to which no response is
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`required. To the extent an answer may be required, Defendants are without knowledge or information
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`sufficient to form a belief as to the truth of the allegations set forth in Paragraph 8 of the Complaint
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`and therefore deny those allegations.
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`9.
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`Paragraph 9 of the Complaint contains conclusions of law to which no response is
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`required. To the extent an answer may be required, Defendants are without knowledge or information
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`sufficient to form a belief as to the truth of the allegations set forth in Paragraph 9 of the Complaint
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`and therefore deny those allegations.
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`10.
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`Paragraph 10 of the Complaint contains conclusions of law to which no response is
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`required. To the extent an answer may be required, Defendants are without knowledge or information
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`sufficient to form a belief as to the truth of the allegations set forth in Paragraph 10 of the Complaint
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`and therefore deny those allegations.
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`11.
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`Paragraph 11 of the Complaint contains conclusions of law to which no response is
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`required. To the extent Plaintiff characterizes Defendants conduct as “wrongful” or “infringing,”
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`Defendant deny those allegations. To the extent that an answer may be required, Defendants are
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`without knowledge or information sufficient to form a belief as to the truth of the allegations set forth
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`in Paragraph 11 of the Complaint and therefore deny those allegations.
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`2
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 3 of 24
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`VENUE
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`12.
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`Paragraph 12 of the Complaint contains conclusions of law to which no response is
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`required. To the extent an answer may be required, Defendants are without knowledge or information
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`sufficient to form a belief as to the truth of the allegations set forth in Paragraph 12 of the Complaint
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`and therefore deny those allegations.
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`COUNT I
`(Trademark Infringement Under 15 U.S.C. §1114)
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`13.
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`Defendants repeat and reallege their responses to Paragraphs 1 through 12 above as if
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`fully set forth herein.
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`14.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 14 of the Complaint and therefore deny those allegations.
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`15.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 15 of the Complaint and therefore deny those allegations.
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`16.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 16 of the Complaint and therefore deny those allegations.
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`17.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 17 of the Complaint and therefore deny those allegations.
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`18.
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`Defendants admit that Plaintiff has registered the composite mark
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`as
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`U.S. Service Mark Registration No. 3,185,742. As to Plaintiff’s characterization that its registered
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`mark contains a “word mark” and a “design mark,” Defendants deny such allegations as Plaintiff is
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`the purported owner of only one registration of a composite mark. Except for the above, to the extent
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`3
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`

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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 4 of 24
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`a further answer may be required, Defendants deny the allegations as set forth in Paragraph 18 of the
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`Complaint.
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`19.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 19 of the Complaint and therefore deny those allegations.
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`20.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 20 of the Complaint and therefore deny those allegations.
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`21.
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`Defendants deny the allegations as set forth in Paragraph 21 of the Complaint, except
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`that Defendants admit that a Combined Declaration of Use and Incontestability under Sections 8 &
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`15 of the Lanham Act, 15 U.S.C. §§1058 and 1065, was filed by Plaintiff in relation to U.S. Service
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`Mark Reg. No. 3,185,742 and that such Declaration was accepted by the U.S Patent & Trademark
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`Office.
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`22.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 22 of the Complaint and therefore deny those allegations.
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`23.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations as set forth in Paragraph 23 of the Complaint and therefore deny those
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`allegations.
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`24.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations as set forth in Paragraph 24 of the Complaint and therefore deny those
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`allegations.
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`25.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations as set forth in Paragraph 25 of the Complaint and therefore deny those
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`allegations.
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`4
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`

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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 5 of 24
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`26.
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`As Defendants use the trademark LAKE EFFECT ARTISAN ICE CREAM in
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`connection with ice cream, frozen confections, and ice cream scoop shops, Defendants deny the
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`allegations as set forth in Paragraph 26 of the Complaint as to restaurant and food services.
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`27.
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`Defendants deny the allegations as set forth in Paragraph 27 of the Complaint.
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`28.
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`Defendants deny the allegations as set forth in Paragraph 28 of the Complaint.
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`29.
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`Defendants admit the allegations as set forth in Paragraph 29 of the Complaint.
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`30.
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`Defendants deny the allegations as set forth in Paragraph 30 of the Complaint.
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`31.
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`Defendants deny the allegations as set forth in Paragraph 31 of the Complaint.
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`32.
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`Defendants deny the allegations as set forth in Paragraph 32 of the Complaint.
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`33.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations as set forth in Paragraph 33 of the Complaint and therefore deny those
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`allegations.
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`34.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations as set forth in Paragraph 34 of the Complaint and therefore deny those
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`allegations.
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`35.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations as set forth in Paragraph 35 of the Complaint and therefore deny those
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`allegations.
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`36.
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`Defendants admit the allegations as set forth in Paragraph 36 of the Complaint.
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`37.
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`Defendants admit the allegations as set forth in Paragraph 37 of the Complaint.
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`38.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations as set forth in Paragraph 38 of the Complaint and therefore deny those
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`allegations.
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`39.
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`Defendants deny the allegations as set forth in Paragraph 39 of the Complaint.
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`5
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 6 of 24
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`40.
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`Defendants admit the allegations as set forth in Paragraph 40 of the Complaint.
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`41.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations as set forth in Paragraph 41 of the Complaint and therefore deny those
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`allegations.
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`42.
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`Defendants admit that the source of the quote constituting the first sentence of
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`Paragraph 42 of the Complaint is accurate, but deny that the legal conclusion set forth in the quote is
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`dispositive on the issue of likelihood of confusion. Defendants admit that the source of the quote
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`constituting the fourth sentence of Paragraph 42 of the Complaint is accurate, but deny that the legal
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`conclusion set forth in the quote is dispositive of the issue of likelihood of confusion. Defendants
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`are without knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations as set forth in Paragraph 42 of the Complaint as trademarks may not be dissected when
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`analyzing the likelihood of confusion between two marks and therefore deny the remaining allegations.
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`43.
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`Defendants admit that the source of the quote constituting the first sentence of
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`Paragraph 43 of the Complaint is accurate, but deny that the legal conclusion set forth in the quote is
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`dispositive on the issue of likelihood of confusion. Defendants deny the remaining allegations as set
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`forth in Paragraph 43 of the Complaint.
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`44.
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`Defendants deny the allegations as set forth in Paragraph 44 of the Complaint, except
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`that, as to Plaintiff’s allegation that Plaintiff’s use of its Mark predates Defendants’ use of their marks,
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`Defendants are without knowledge or information sufficient to form a belief as to the truth of those
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`allegations and therefore deny the same.
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`45.
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`Defendants deny the allegations as set forth in Paragraph 45 of the Complaint.
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`46.
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`Defendants deny the allegations as set forth in Paragraph 46 of the Complaint, except
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`to the extent that Defendants admit the receipt of a cease and desist letter dated August 18, 2017.
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`6
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 7 of 24
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`47.
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`Defendants admit that Defendants’ attorneys and Plaintiff’s attorney engaged in
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`discussions regarding Plaintiff’s allegations until April 16, 2018, but are without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations as set forth in
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`Paragraph 47 of the Complaint and therefore deny the same.
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`48.
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`Defendants admit that they continued to use their trademarks subsequent to the
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`receipt of Plaintiff’s August 18, 2017 cease and desist letter, but as to the allegations set forth in
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`Paragraph 48 that such use was infringing, Defendants deny those allegations.
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`49.
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`Defendants deny the allegations as set forth in Paragraph 49 of the Complaint.
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`50.
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`Defendants deny the allegations as set forth in Paragraph 50 of the Complaint.
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`51.
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`Defendants admit that the source of the quote constituting the second sentence of
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`Paragraph 51 of the Complaint is accurate, but deny that the legal conclusion set forth in the quote is
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`dispositive on the issue of likelihood of confusion. Defendants deny the remaining allegations as set
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`forth in Paragraph 51 of the Complaint.
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`52.
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`Defendants deny the allegations as set forth in Paragraph 52 of the Complaint.
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`
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`COUNT II
`(Unfair Competition Under 15 U.S.C. §1125 – False Designation of Origin, False
`Advertising)
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`Defendants repeat and reallege their responses to Paragraphs 1 through 52 above as if
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`53.
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`fully set forth herein.
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`54.
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`Defendants deny the allegations as set forth in Paragraph 54 of the Complaint.
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`55.
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`Defendants deny the allegations as set forth in Paragraph 55 of the Complaint.
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`56.
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`Defendants deny the allegations as set forth in Paragraph 56 of the Complaint.
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`57.
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`Defendants deny the allegations as set forth in Paragraph 57 of the Complaint.
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`7
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 8 of 24
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`COUNT III
`(Trademark Dilution Under 15 U.S.C. §1125)
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`Defendants repeat and reallege their responses to Paragraphs 1 through 57 above as if
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`58.
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`fully set forth herein.
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`59.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 59 of the Complaint and therefore deny those allegations.
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`60.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 60 of the Complaint and therefore deny those allegations.
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`61.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 61 of the Complaint and therefore deny those allegations.
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`62.
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`Defendants deny the allegations as set forth in Paragraph 62 of the Complaint.
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`63.
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`Defendants deny the allegations as set forth in Paragraph 63 of the Complaint.
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`64.
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`Defendants deny the allegations as set forth in Paragraph 64 of the Complaint.
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`65.
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`Paragraph 65 contains conclusions of law to which no response is required. To the
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`extent an answer may be required, Defendants deny the allegations as set forth in Paragraph 65 of the
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`Complaint.
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`66.
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`COUNT IV
`(New York Unfair Competition)
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`Defendants repeat and reallege their responses to Paragraphs 1 through 65 above as if
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`fully set forth herein.
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`67.
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`Defendants deny the allegations as set forth in Paragraph 67 of the Complaint.
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`68.
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`Defendants deny the allegations as set forth in Paragraph 68 of the Complaint.
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`69.
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`Defendants deny the allegations as set forth in Paragraph 69 of the Complaint.
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`70.
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`Defendants deny the allegations as set forth in Paragraph 70 of the Complaint.
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`8
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 9 of 24
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`71.
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`Defendants deny the allegations as set forth in Paragraph 71 of the Complaint.
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`72.
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`Paragraph 72 contains conclusions of law to which no response is required. To the
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`extent an answer may be required, Defendants deny the allegations as set forth in Paragraph 72 of the
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`Complaint.
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`73.
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`COUNT V
`(New York Trademark Dilution Under N.Y. Gen. Bus. L. 360-1)
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`Defendants repeat and reallege their responses to Paragraphs 1 through 72 above as if
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`fully set forth herein.
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`74.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 74 of the Complaint and therefore deny those allegations.
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`75.
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`Defendants deny the allegations as set forth in Paragraph 75 of the Complaint.
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`76.
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`Defendants deny the allegations as set forth in Paragraph 76 of the Complaint.
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`77.
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`Paragraph 77 contains conclusions of law to which no response is required. To the
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`extent an answer may be required, Defendants deny the allegations as set forth in Paragraph 77 of the
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`Complaint.
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`
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`COUNT VI
`(New York Deceptive Business Practices Under N.Y. Gen. Bus. L. § 349)
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`Defendants repeat and reallege their responses to Paragraphs 1 through 77 above as if
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`78.
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`fully set forth herein.
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`79.
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`Defendants admit that they advertise their goods and services via online promotion,
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`but, Defendants are without knowledge or information sufficient to form a belief as to the truth of
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`the allegations set forth in Paragraph 79 of the Complaint and therefore deny those allegations.
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`80.
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`Defendants deny the allegations as set forth in Paragraph 80 of the Complaint.
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`9
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 10 of 24
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`81.
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`Defendants deny the allegations as set forth in Paragraph 81 of the Complaint.
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`82.
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`Defendants deny the allegations as set forth in Paragraph 82 of the Complaint.
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`83.
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`Defendants deny the allegations as set forth in Paragraph 83 of the Complaint.
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`84.
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`Defendants deny the allegations as set forth in Paragraph 84 of the Complaint.
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`85.
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`Paragraph 85 contains conclusions of law to which no response is required. To the
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`extent an answer may be required, Defendants deny the allegations as set forth in Paragraph 85 of the
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`Complaint.
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`COUNT VII
`(New York Use of Name with Intent to Deceive Under N.Y. Gen. Bus. L. §133)
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`Defendants repeat and reallege their responses to Paragraphs 1 through 85 above as if
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`86.
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`fully set forth herein.
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`87.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 87 of the Complaint and therefore deny those allegations.
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`88.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 88 of the Complaint and therefore deny those allegations.
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`89.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 89 of the Complaint and therefore deny those allegations.
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`90.
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`Defendants deny the allegations as set forth in Paragraph 90 of the Complaint.
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`91.
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`Defendants deny the allegations as set forth in Paragraph 91 of the Complaint.
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`92.
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`Defendants deny the allegations as set forth in Paragraph 92 of the Complaint.
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`93.
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`Defendants deny the allegations as set forth in Paragraph 93 of the Complaint.
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`94.
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`Paragraph 94 contains conclusions of law to which no response is required. To the
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`extent an answer may be required, Defendants deny the allegations as set forth in Paragraph 94 of the
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`Complaint.
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 11 of 24
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`COUNT VIII
`(New York Trademark Infringement)
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`Defendants repeat and reallege their responses to Paragraphs 1 through 94 above as if
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`95.
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`fully set forth herein.
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`96.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 96 of the Complaint and therefore deny those allegations.
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`97.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 97 of the Complaint and therefore deny those allegations.
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`98.
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`Defendants are without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 98 of the Complaint and therefore deny those allegations.
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`99.
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`Defendants deny the allegations as set forth in Paragraph 99 of the Complaint.
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`100. Defendants deny the allegations as set forth in Paragraph 100 of the Complaint.
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`101. Defendants deny the allegations as set forth in Paragraph 101 of the Complaint.
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`102. Defendants deny the allegations as set forth in Paragraph 102 of the Complaint.
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`103. Defendants deny the allegations as set forth in Paragraph 103 of the Complaint.
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`104. Paragraph 104 contains conclusions of law to which no response is required. To the
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`extent an answer may be required, Defendants deny the allegations as set forth in Paragraph 104 of
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`the Complaint.
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`
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`PRAYER FOR RELIEF
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`Plaintiff’s requests following Paragraph 104 of the Complaint (as numbered in Paragraphs 105
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`– 120) constitute “Requests for Relief” that do not require a response. Defendants deny that Plaintiff
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`is entitled to any of the requested relief. Each averment and/or allegation contained in Plaintiff’s
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`Complaint that is not specifically admitted herein is hereby denied.
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 12 of 24
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`Defendants rely on Plaintiff’s demand for a trial by jury on all issues so triable.
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`JURY DEMAND
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`
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`AFFIRMATIVE DEFENSES
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`
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`FIRST AFFIRMATIVE DEFENSE
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`Plaintiff has failed to state a claim upon which relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE
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`Plaintiff’s claims are barred, in whole or in part, by virtue of the applicable statute of
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`limitations.
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`THIRD AFFIRMATIVE DEFENSE
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`Plaintiff’s claims are barred, in whole or in part, by virtue of the doctrine of laches.
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`FOURTH AFFIRMATIVE DEFENSE
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`Plaintiff’s claims are barred, in whole or in part, by virtue of the doctrine of acquiescence.
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`FIFTH AFFIRMATIVE DEFENSE
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`Plaintiff’s claims are barred, in whole or in part, by virtue of the doctrines of waiver and
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`estoppel.
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`SIXTH AFFIRMATIVE DEFENSE
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`Plaintiff’s claims are barred, in whole or in part, by virtue of the doctrine of unclean hands.
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`SEVENTH AFFIRMATIVE DEFENSE
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`Plaintiff is not entitled to any relief because it has sustained no injury or damages.
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`EIGHTH AFFIRMATIVE DEFENSE
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`Plaintiff is not entitled to any damages because any alleged damages are speculative.
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`
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 13 of 24
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`NINTH AFFIRMATIVE DEFENSE
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`Defendants’ use of its marks is not likely to cause confusion, mistake, or deception, or confuse
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`the relevant public as to source, sponsorship, or affiliation with Plaintiff or Plaintiff’s use of its
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`purported service mark.
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`TENTH AFFIRMATIVE DEFENSE
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`Plaintiff procured U.S. Service Mark Registration No. 3,185,742 through false or fraudulent
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`statements and the registration is invalid.
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`ELEVENTH AFFIRMATIVE DEFENSE
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`Defendants reserve the right to rely on additional affirmative and other defenses that might
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`become evident and applicable through information obtained by discovery.
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`
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`COUNTERCLAIMS
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`Defendants, Lake Effect Artisan Ice Cream, et al., for its counterclaims in this action allege as
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`follows:
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`
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`PARTIES
`
`1.
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`Counter-Plaintiffs Lake Effect Ice Cream Hertel, LLC, Lake Effect Ice Cream, LLC,
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`Lake Effect Ice Cream Wholesale, LLC, and Lake Effect Canal Street, LLC are New York limited
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`liability companies, all with a principal place of business at 79 Canal Street, Lockport, New York
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`14094. Counter-Plaintiff Lake Effect Artisan Ice Cream, is allegedly an unregistered business with a
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`principal place of business at 79 Canal Street, Lockport, New York 14094 (all Counter-Plaintiffs
`
`hereinafter “Lake Effect Artisan Ice Cream”).
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 14 of 24
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`2.
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`On information and belief, Counter-Defendant, 199 Delaware Avenue, Inc., is a
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`corporation organized under the laws of the State of New York, with its principal place of business at
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`3165 Main Street, Buffalo, New York 14214 (hereinafter “Lake Effect Diner).
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`
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`JURISDICTION AND VENUE
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`3.
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`These counterclaims are brought under the Declaratory Judgment Act, 28 U.S.C.
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`§§2201-2202, the Lanham Act, 15 U.S.C. §§ 1051, et seq., and New York statutory and common law.
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`4.
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`Subject matter jurisdiction exists under 15 U.S.C. §§ 1119 and 1121 and 28 U.S.C. §§
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`1331, 1338 and 2201-2202.
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`5.
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`This Court has personal jurisdiction over Lake Effect Diner and venue is proper in
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`this District because, inter alia, Lake Effect Diner has submitted itself to the personal jurisdiction of
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`this Court and venue in this District by commencing this action, and, upon information and belief,
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`Lake Effect Artisan Ice Cream’s counterclaims are compulsory pursuant to Fed. R. Civ. P. 13.
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`
`
`FACTS
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`Lake Effect Artisan Ice Cream
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`6.
`
`Counter-Plaintiffs Lake Effect Artisan Ice Cream et al., limited liability companies all
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`formed in the State of New York, are owned by two individuals, Erik Bernardi and Jason Wulf, life-
`
`long friends who now teach at the same high school they attended as children. Starting as a
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`competitive hobby, Erik and Jason made ice cream at home using any ingredient no matter how
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`unusual to see what flavors they could conceive of. Joining forces, when the quality and taste of the
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`ice cream received rave reviews from family and friends, Erik and Jason decided to produce the ice
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`cream for sale to the public.
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`Case 1:19-cv-00224-EAW Document 19 Filed 03/29/19 Page 15 of 24
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`7.
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`In deference to a well-known weather phenomenon known to Western New Yorkers,
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`Bernardi and Wulf called their product “Lake Effect Ice Cream.”
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`8.
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`Beginning on June 28, 2008, Lake Effect Artisan Ice Cream first sold their unique,
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`inventive brand of ice cream, in flavors derived from any suggested ingredient, at an outdoor craft and
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`food festival held in Lockport, New York. They quickly sold out, and Lake Effect Artisan Ice Cream
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`brand ice cream was launched.
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`
`
`9.
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`Following its initial success, Lake Effect Artisan Ice Cream attended and sold ice
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`cream at different fairs and festivals in the region, such as Taste of Lockport, the Niagara Celtic
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`Festival, the Lewiston Jazz Festival, and the Molson Canal Concert Series among others.
`
`
`
`10.
`
`Soon after, Lake Effect Artisan Ice Cream began producing their ice cream for sale in
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`retail outlets, such as Niagara County Produce in Amherst, New York, and Tops Market in Lockport,
`
`New York.
`
`
`
`11.
`
`In 2009, Lake Effect Artisan Ice Cream began to expand into the Buffalo market,
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`attending events and festivals in Buffalo, such as the Allentown Art Festival-Allen West and the
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`National Buffalo Chicken Wing Festival, and distributing their ice cream for sale at retail outlets such
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`as the Lexington Co-op on Elmwood Avenue in Buffalo and Premier Gourmet on Delaware Avenue
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`in Kenmore.
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`
`
`12.
`
`In September, 2009, Lake Effect Artisan Ice Cream was an authorized food vendor
`
`for sale of pre-packaged ice cream at the Music is Art Festival, held at the Albright-Knox Art Gallery
`
`in Buffalo, New York.
`
`
`
`13.
`
`Upon information and belief, Lake Effect Diner was also an authorized food vendor
`
`at the 2009 Music is Art Festival, selling Sahlen’s hot dogs, local hor