Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA107545
`ESTTA Tracking number:
`11/02/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91170580
`Plaintiff
`AMERICAN STORES COMPANY
`RAMON A. KLITZKE II
`KLARQUIST SPARKMAN, LLP
`121 SW SALMON STREET ONE WORLD TRADE CENTER, SUITE 1600
`PORTLAND, OR 97204
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`ptotmdocket@klarquist.com
`Other Motions/Papers
`J. Christopher Carraway
`chris.carraway@klarquist.com
`/J. Christopher Carraway/
`11/02/2006
`American Stores v GWG-Complaint.pdf.pdf ( 40 pages )(6522411 bytes )
`
`

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`CIVIL COVER SHEET
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`The civil cover sheet and the information contained herein neither refplace nor sup lement the filing and service ofplcadi -
`law, except as provided by local rules ofcourt. This form isrequircd or the use of tlie Clerk ofCourt for the purpose ofini
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`INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`I
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`DEFENDANTS
`
`‘I IGLOBAL WINE GROUP
`
`
`
`(a) PLAINTIFFS
`AMERICAN STORES COMPANY, LLC, and
`STORES, INC.,
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`F .,,
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`OD
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`(b) County ofResidence ofFirst Listed Plaintiff Ada COUDEZ (ID)
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`
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`County of Residence ofFirst Listed Defendant
`
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`(C) Attomey’s (Firm Name, Address, and Telephone Number)
`Steven P. Rouse, MENGES & MOLZAHN, LLC, 20 North Clark
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`
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`Street, Suite 2300, Chicago, IL 60602-5002, Phone: 312-917-I880
`' in One Box for Plaintilf
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`II. BASIS OF JURISDICTION (Place an “X" in One Box orily)
`III. CITIZENSHIP OF:P
`at
`for Defendant)
`(For Diversity Cases Only)PTF
`DEF
`
`PTF
`DEF
`Citizen ofThis State U I D I
`Incorporated orPrincipal Place E! 4 D 4
`ofBusiness In This State
`Citizen ofAnother State G 2 D2 Incorporated andPrincipal Place [1 5 E] 5
`of Business In Another State
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`IEI3 Federal Question
`Ell U.S. Government
`(US. Government Not a Party)
`Plaintiff
`Q4 Diversity
`E] 2 U.S. Government
`(Indicate Citizenship of Parties
`Defendant
`in Item III)
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`Foreign Nation
`Citizen or Subject ofa El 3 D3
`rl Count E] 6 D6
`Forei
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`IV. NATURE OF SUIT
`Place an “X” in One Box Onl
`CONTRACT FORFEITURE/PENALTY
`BANKRUPTCY
`OTHER STATUTES
`D 110 Insurance
`PERSONAL INJURY
`PERSONAL INJURY
`D610 Agriculture
`D422 Appeal 28 USC 158
`D400 State Reapportionment
`E] 120 Marine
`[1310 Airplane
`1:|362 Personal liijiiry—
`[3620 other Food & Drug
`l:l4l0 Antitrust
`E] 130 Miller Act
`[3315 Airplane Product
`Med. Malpractice
`D625 Drug Related Seizure D423 Withdrawal
`[3430 Banks and Biurkirig
`D 140 Negotiable Instrument
`Liability
`D365 Personal Injury—
`ofProperty 21 USC 881
`28 USC 157
`D450 Colruneree/ICC Rates/etc,
`l'—] 150 Recovery ofOverpayment D320 AssaulL_ Libel &
`Product Liability
`D630 Liquor Laws
`~—
`" ' E460 Deportation
`7
`‘T4 & Enforcement of Judgment
`Slander
`D368 Asbestos Personal
`D640 R.R. & Truck
`PROPERTY RIGHTS D470 Racketeer Influenced and
`CI I51 Medicare Act
`D330 Federal Employers’
`Injury Product
`D650 Airline Regs.
`D820 C0
`Corrupt Organizations
`gms
`1:] 152 Recovery ofocrriiiltcrl
`Liability
`Liability
`D660 Occupational
`S30 Patgfxz‘
`l:l-430 corisiiiricr Credit
`Strident Loans (excl. vet.) D340 Marine
`PERSONAL PROPERTY
`Safety/Hcaltli
`D840 T d
`_k
`E] 490 Cable/Satellite TV
`D153 Recovery of Overpayment D345 Marine Product
`E1370 Other Fraud
`D690 Other
`H1 mm
`D 810 Selective Service
`E]
`of Veteran's Benefits
`Liability
`D371 Truth in Lending
`850 Seclrrity/Commodity/Exch.
`LABOR
`1:] 160 Stockholders’ siiits
`[3350 Motor Vehicle
`[3330 Other PCl'S0l1fl.I
`375 Customer Challenge
`SOCIAL SECURITY
`.
`.
`D190 Other Contract
`D355 Motor Vehicle
`Property Damage
`12 USC 3410
`Em iii: mmStandards
`D195 Contract Product Liability
`Product Liability
`|j335 Property Damage
`E39‘ "g“°“““”“ A“
`glliilgI5u9l15gfl()9Z3)
`
`E720 Labor/Mm, Relations
`D196 Friiiicbisc
`D360 otlier Personal Inj.
`Product Liability
`[:1 892 Economic Stabilization Act
`[3863 DIWC/mww (405%))
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`‘
`g
`_ V
`D893 Environmental Matters
`E3864 SS”) T. I XVI
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`REAL PROPILR1 Y
`CIVIL RIGII I S
`PRISONER PETITIONS
`D 894 Energy Allocation Act
`" 5
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`[:]73o Labor/Mgmt.RepDrtlr1g
`E1895 Freedom mnfmmmn A“
`|:la65 RSI (405(g))
`& Disclosure Act
`~
`El 210 Land Condemnation
`D441 Voting
`D510 Motions to Vacate
`900 A
`a] {F
`‘
`W
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`D740 Railway Labor Act
`1‘ EDERAL TAX 5UIT5 D Dgfeennfnafiei U def
`D 220 Foreclosure
`E1442 Employment
`Sentence
`D230 Rent Lease & Ejectment D443 Housiugl
`Habeas Corpus:
`D870 Taxes (U S Plaintiff
`Equal A605; to Jltmice
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`D790 Other Labor Litigation
`V
`E] 240 Torts to Land ‘
`Accommodations
`530 General
`or Defenamh)
`D950 Consfimfionamy of
`V
`_
`[:1 245 Tort rrotiiict Llilblllty
`E444 Welfare
`l_—_|535 Death rciitilty
`Sm statutes
`l:]79l Empl.‘ Ret. liic.
`D371 IRS__m.rd PM
`:1 290 All Other Real Property @445 ADA~-Employment [3540 lw-iiiidaiiius & Other
`E3890 other smmow Actions
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`Security Act
`25 USC 7509
`E3446 ADA -« Other
`i:l550 Cml Rights
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`CI555 Prisoii Coiirlitioii
`[3440 Other ciyil Rights
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`«
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`Aefeal to District
`(PLACE AN “X” IN ONE BOX ONLY)
`V‘ ORIGIN
`111 g_e from
`Transferred from
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`D7 $43315“me
`D6 Multidistrict
`El 4 Reinstated or [:5 a“°th,e}' dlsmcl
`E] 2 Removed from D 3
`Rernanded from
`Ell Original
`“ gmm.”
`Liti ation
`Reo erred
`I5P9C‘t}’)
`State Court
`A ellate Court
`Proceedin
`VI. CAUSE OF ACTION (Enter US, Cm; stamta under which you are filjng and write VII. PREVIOUS BANKRUPTCY MATTERS (For nature of
`a briefsiatemem ofcausg)
`suit 422 and 423, enter the case number andjudge for any associated
`bankruptcy matter perviously adjudicated by ajudge ofthis Court. Use a
`separate attachment if necessary)
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`
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`15 U.S.C. § 1051 et seq. (trademark infringement, unfair
`Competition, dilution); state law unfair trade and business acts
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`
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`DCHECK IF THIS is A CLASS ACTION
`DEMAND 3 A
`vm. REQUESTED IN
`TBD CHECK YES only ifdemanded in com laint:
`COMPLAINT: No UNDER F.R.C.P. 23 mount JURY DEMAND: i:iYes
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`IV This case
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`Elis not a refiling ofa previously dismissed action.
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`. previously dismissed by Judge
`TURE O ATTORNEY OF RECORD
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`SIG
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`Dis 2 refiling of case number
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`

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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`“j
`
`
`
`
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT, UNFAIR
`COMPETITION, TRADE
`DILUTION,DECEPTIVE * Am; »
`PRACTICES, AND DECEPTIVE
`BUSINESS PRACTICES
`
`
`
`Civil Action No.
`
`JURY DEMANDED
`
`)
`)
`)
`)
`)
`)
`)
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`) ) ) ) I ) )
`
`AMERICAN STORES COMPANY,
`LLC, a Delaware limited liability
`company, and JEWEL FOOD STORES,
`INC., a New York corporation,
`
`Plaintiffs,
`
`v.
`
`GLOBAL WINE GROUP, a Nevada
`corporation,
`
`Defendant.
`
`Plaintiffs American Stores Company, LLC (“American Stores”) and Jewel Food Stores,
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`Inc. (“Jewel”), collectively referred to herein as “Plaintiffs,” respectfully make the following
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`allegations for their Complaint against Defendant Global Wine Group (“Defendant”). These
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`allegations are made upon knowledge with respect to Plaintiffs and their own acts, and upon.
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`information and belief as to all other matters.
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`INTRODUCTION
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`1.
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`For more than seventy years, Plaintiffs and their predecessors have operated
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`grocery stores under the service mark JEWEL. Today, there are over 200 Jewel and Jewel-Osco
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`grocery stores in Illinois, Indiana, and Wisconsin, and the stores have the largest share of the
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`grocery market in the Chicago metropolitan area. In addition to and as part of their grocery store
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`services, Jewel and Jewel-Osco stores sell many house—branded products under the trademark
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`JEWEL. The public has come to recognize and look for the JEWEL marks as an assurance of
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`quality grocery products and services.
`
`

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`2.
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`Less than six years ago, Defendant Global Wine Group began selling a series of
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`wines under the names “Jewel” and “Jewel Collection.” Defendant distributes its wines to
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`restaurants, grocery stores, and other retail stores. Recently, Plaintiffs learned that Defendant
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`was distributing its Jewel—labeled wines to grocery and other retail stores in Illinois, Indiana, and
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`Wisconsin.
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`3.
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`Because of the excellent reputation of Jewel and Jewel-Osco grocery stores and
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`the house-branded grocery products sold under the JEWEL trademark and service mark,
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`consumers in the Midwest are likely to be confused, and almost certainly have already been
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`confused, by Defendant’s sales of its wine. Because Defendant has unlawfully adopted the
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`valuable JEWEL marks, Plaintiffs have been forced to bring this action for trademark
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`infringement, unfair competition, trademark dilution, deceptive trade practices, and deceptive
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`business practices.
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`PARTIES
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`4.
`
`Plaintiff American Stores Company, LLC is a limited liability company organized
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`and existing under the laws of Delaware, and is located and doing business at 250 E. Parkcenter
`
`Blvd., Boise, Idaho 83706.
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`5.
`
`Jewel Food Stores, Inc. is a corporation organized and existing under the laws of
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`New York, and is located and doing business at 250 E. Parkcenter Blvd., Boise, Idaho 83706.
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`Jewel operates grocery and drug stores throughout this judicial district.
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`6.
`
`Defendant Global Wine Group is a Nevada corporation located at 3750 E.
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`Woodbridge Road, Woodbridge, California 95220.
`
`

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`JURISDICTION AND VENUE
`
`7.
`
`This is a civil action for trademark infringement, trademark dilution, and unfair
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`competition, arising under the common law and the Lanham Act, 15 U.S.C. § 1051 et seq., and
`
`for violations of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/1 et seq.,
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`Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/1 et seq., and the
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`anti-dilution laws of the State of Illinois, 765 ILCS 1036/65. Federal subject matterjurisdiction
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`is found in 28 U.S.C. §§ 1331 (federal question), 1367 (supplemental), l338(a) (trademark), and
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`133 8(b) (related claims of unfair competition), and 15 U.S.C. § 1121 (Lanham Act actions).
`
`8.
`
`Defendant does regular business in this judicial district. ‘Defendant has also
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`committed acts of trademark infringement,trademark dilution, unfair competition, deceptive
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`trade practices, and deceptive business practices by selling, distributing, advertising, and
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`marketing its Jewel—labeled wines in thisjudicial district.
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`9.
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`Venue is proper in this district under 28 U.S.C. § 1391.
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`PLAINTIFFS’ RIGHTS IN THE JEWEL MARKS
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`10.
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`In 1902, the Jewel Tea Company was founded to sell coffee and tea from the back
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`of horse—drawn wagons in Chicago. In 1932, the company moved into the grocery store business
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`by acquiring the Chicago chain of Loblaw grocery stores, which were then operated as Jewel
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`Food Stores using the mark JEWEL. The company acquired Osco Drug Stores in 1961 and
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`continued to use the mark JEWEL by operating side-by—side Jewel and Osco stores and later
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`both standalone Jewel stores as well as combination Jewel—Osco stores.
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`1 1.
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`Plaintiff Jewel was acquired by Plaintiff American Stores in 1984. Since then,
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`Plaintiffs have continued to operate Jewel and Jewel—Osco stores using the JEWEL trademark
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`

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`and service marks. Today, there are over two hundred Jewel—Osco grocery and drug stores as
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`well as several dozen Jewel grocery stores in Illinois, Indiana, and Wisconsin.
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`12.
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`Plaintiffs use the JEWEL marks for retail grocery stores which promote and sell
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`(among many other goods) wine, beer, and distilled spirits. Plaintiffs also sell through their retail
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`grocery stores a wide array of products under the house-brand trademark “JEWEL.” Some of the
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`JEWEL—branded products sold by Plaintiffs in their Jewel and Jewel-Osco stores include juice,
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`bottled water, soda, cheese, and crackers.
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`13.
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`Plaintiff American Stores is the owners of numerous federal registrations for the
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`JEWEL marks. Among others, Plaintiff American Stores own the following federal trademarks
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`and service marks registered on the Principal Register of the United States Patent and Trademark
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`
`,
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`
`.
`T
`lGoo‘ds/Services7‘?‘7jii5 5
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`Retail grocery and general merchandise store
`services
`
`Office (“USPTO”):
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`
`
`’ .7 iRegi"strationlDate
`JEWEL &
`1,219,505
`December 7, 1982
`
`2,119,541
`
`Design
`JEWEL
`
`2,105,514
`2,107,247
`2,112,225
`2,138,475
`
`JEWEL
`JEWEL
`JEWEL
`JEWEL
`
`December 12, 1997
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`Retail supermarket services featuring food, drugs,
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`J household goods, automotive goods and like
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`Plastic cu s and aper plates
`October 14, 1997
`Distilled water
`October 21, 1997
`November 11, 1997 Fruit juices, vegetable juices, soft drinks
`February 24, 1993
`Baked beans, breakfast drinks, namely, milk, butter,
`canned beans, canned fruits, canned pork and beans,
`canned processed tomatoes, canned vegetables,
`cheese, chili with beans, condensed milk, dips,
`dried fruits, frozen, packaged, and canned meals
`consisting primarily of meat, fish, poultry, or
`vegetables, egg substitute, evaporated milk, flaked
`coconut, frozen fruit, frozen and french fried
`potatoes, frozen vegetables, hash browns, instant
`potatoes,jellies andjams, luncheon meats,
`margarine, meats, non-dairy creamer, peanut butter,
`pickles, potato chips, processed nuts, processed
`olives, refried beans, shortening, soups, tunafish,
`vegetable oil, whipped topping and yogurt, and as a
`. house mark for food products
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`_l
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`

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`»Goods/Services:
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`9
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`‘
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`0
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`.
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`~ .
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`\
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`.
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`,.
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`Baking soda, Barbecue sauce, biscuits, bread
`crumbs, breakfast cereal, candy, cheese flavored
`puffed corn snacks, chocolate chips, chocolate
`syrup, coffee, cookie dough, cookies, corn chips,
`crackers, frozen and packaged meals consisting
`primarily of pasta or rice, flour, frozen pizza frozen
`pretzels, honey, ice cream cones, ice cubes,
`ketchup, macaroni and cheese, marshmallows,
`mayonnaise, mixes for bakery goods, muffins,
`mustard, oatmeal, pancake and waffle mixes, pasta,
`pastries, pie crusts, popped popcorn, pot pies,
`pretzels, relish, rice, rolls, seasoning mixes for chili,
`gravy, spaghetti sauce and tacos, seasonings, spices,
`stuffing mixes containing bread, sugars, pancake
`and waffle syrup, tea, tomato sauce, tortilla chips
`and vinegar, and as a house mark for those and
`other food products
`Cat food, dog biscuits, dog food, raw nuts, and
`unpopped popcorn
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`2,109,070
`
`JEWEL
`
`October 28, 1997
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`These registrations are all valid and subsisting. Copies of the registrations (or equivalent
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`government database entries for such registrations) are attached hereto as Exhibit A. Plaintiff
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`Jewel is a licensee that uses the JEWEL marks in its operation of Jewel and Jewel-Osco stores.
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`14.
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`The registrations identified in paragraph 13 are incontestable under 15 U.S.C. §
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`1065 and constitute conclusive evidence of the validity of the JEWEL marks and of Plaintiffs’
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`exclusive right to control the use of the marks on and in connection with the goods and services
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`recited in the registration
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`certificates.
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`15.
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`Since long prior to the acts of Defendant complained of herein, Plaintiffs and their
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`predecessors have used the JEWEL marks on and in connection with the goods and services
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`recited in the federal registrations identified above and on and in connection with goods and
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`services related thereto.
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`I
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`UI
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`

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`16.
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`During their many decades of continuous use of the JEWEL marks, Plaintiffs and
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`their predecessors have spent significant amounts of money advertising and promoting their
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`goods and services under the JEWEL marks.
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`17.
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`As a result of Plaintiffs’ long, continuous, and exclusive use of the JEWEL marks,
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`these marks have become highly distinctive and extremely well known among consumers and
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`have acquired a strong secondary meaning signifying Plaintiffs and their quality products and
`services. Said marks represent and embody Plaintiffs’ enviable reputation and very valuable
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`goodwill among members of the trade and the purchasing public. Over their decades of
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`commercial use, Plaintiffs’ JEWEL marks have built up substantial good will among consumers.
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`The JEWEL marks are very Valuable.
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`18.
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`Since its original use for grocery store services in 1932, the JEWEL mark has
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`become a famous mark for Plaintiffs’ grocery store services
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`products in at least Illinois,
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`Indiana, and Wisconsin.
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`DEFENDANT’S INFRINGIN G ACTIVITIES
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`19.
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`Defendant Global Wine Group is a winery based in the Lodi/Woodbridge region
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`of California.
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`In November 2000, Defendant began marketing and/or selling wines under the
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`names “Jewel”-and “Jewel Collection (hereinafter “Jewel wine”). According to Defendant’s
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`website, “JEWEL is the ‘flagship’ brand of the winery.”
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`20.
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`On labelsand other marketing and promotional materials for Jewel wine,
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`Defendant emphasizes the word “JEWEL” instead of the word “COLLECTION” and often refers
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`to the wine simply as “JEWEL.” The bottle labels for Defendant’s Jewel wine state that the wine
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`is “Vinted & Bottled by Jewel, Woodbriclge, California” and lists Defendant’s website as
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`

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`www.jewelwine.com. Shown below is an exemplary label from one of Defendant’s bottles of
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`Jewel wine:
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`..t»t.............—.a.:'Li:-.4.-»-- \
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`
`
`
`
`
`ea’
`‘*<mor‘pai~i<aL"'
`.
`it %§!H£8F..KQ¥.aR?HDEFEGT8.K,lCflM
`-HMIR3 mun ~aaIi;fiv—ro f3RliiE> 9%
`. raemvmuaa aaoatams,
`
`97
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`VSa\71iT%p(3
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`Attached hereto as Exhibit B is information from Defendant’s website showing bottles of the
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`different varieties of Jewel wine sold by Defendant.
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`2].
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`Defendant markets and distributes its Jewel wine to restaurants, hotels, grocery
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`stores, and other retail stores.
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`22.
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`Jewel wine has been and continues to be distributed by Defendant to grocery
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`stores and retails stores in Illinois, Indiana, and Wisconsin. For example, Defendant’s Jewel
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`wine has been available for purchase in the past six months at least in Whole Foods grocery ,
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`stores in the Chicago metropolitan area and Indiana and in Wild Oats grocery stores in the
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`Chicago metropolitan area and Wisconsin. Defendant also has engaged a regional sales
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`representative in Chicago to market its Jewel wine in the Midwest. Attached hereto as Exhibit C
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`is information from Defendant’s website regarding its sales and distribution of Jewel wine.
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`23.
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`Defendant also markets and promotes its Jewel wine on its website located at
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`httg://www.jewelwinecom. This website is accessible by consumers located in Illinois, Indiana,
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`and Wisconsin. Defendant’s website also includes a user interface for interactively soliciting
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`-7-
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`

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`orders for Jewel wine directly from consumers through this website. Attached hereto as Exhibit
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`D are pages showing the website’s interactive solicitation of Jewel wine orders. On information
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`and belief, Defendant has shipped Jewel wine directly to customers in Illinois, lndiana, and
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`Wisconsin in response to orders solicited through this website.
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`24.
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`Defendant’s sale, distribution, marketing, and advertising of goods that
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`incorporate the JEWEL marks are likely to confuse and deceive consumers as to the source or
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`sponsorship of such goods and, upon information and belief, has actually caused such confusion
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`and deception.
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`25.
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`Defendants have had actual knowledge of the JEWEL marks and of Plaintiffs’
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`rights in them for some time, and yet Defendants continue to infringe Plaintiffs rights.
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`26.
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`Defendant’s acts complained of herein were committed and are being committed
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`willfully and with reckless disregard of Plaintifs rights in .he JEWEL marks.
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`27.
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`In addition to Defendant’s improper use in commerce of Plaintiffs’ JEWEL
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`marks, Defendant has also attempted to obtain federal trademark registrations related to its
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`infringing activities.
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`28.
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`On August 31, 2000, Defendant filed application Serial No. 76/ 121,597 to register
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`JEWEL as a trademark for wine. Plaintiff American Stores opposed the application before the
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`Trademark Trial and Appeal Board (“TTAB”). On July 3, 2002, the TTAB issued an order to
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`show cause why judgment by default should not be entered against Defendant. On December 8,
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`2002, the Board entered judgment by default against Defendant and refused its attempted
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`registration of JEWEL as a trademark for wine.
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`29.
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`On June 16, 2004, Defendant filed its second application to register JEWEL as a
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`trademark for wine, this one Serial No. 78/436,033. American Stores filed an opposition
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`

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`proceeding in the TTAB against this application as well. On April 13, 2006, after the opposition
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`was filed, Defendant abandoned this second application to register JEWEL for wine. As a result
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`of the abandonment, the TTAB entered judgment against Defendant in this opposition and
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`refused Defendant’s second attempted registration of JEWEL for wine.
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`30.
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`On September 30, 2004, Defendant filed an application to register JEWEL
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`COLLECTION for wine, this one Serial No. 78/492,692. American Stores opposed this
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`application before the TTAB as well. The opposition proceeding is now pending before the
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`TTAB.
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`THE HARM TO PLAINTIFFS AND
`THE PUBLIC CAUSED BY DEFENDANT
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`3 l.
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`The result of Defendant’s unlawful use of Plaintiffs’ JEWEL marks has been
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`irreparable harm to Plaintiffs’ reputation and goodwill and actual deception of and damage to
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`consumers. Plaintiffs will continue to suffer such irreparable injury to its reputation and
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`goodwill unless Defendant is enjoined from continuing the conduct complained of, which injury
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`cannot be adequately compensated flmonetarily. As long as Defendant is allowed to continue the
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`acts complained of, Plaintiffs’ reputation is at Defendant’s mercy.
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`COUNT 1
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`FEDERAL TRADEMARK INFRINGEMENT
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`32.
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`Plaintiffs incorporate the allegations stated by Paragraphs l-31 as if fully set
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`forth herein.
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`33.
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`Plaintiffs’ JEWEL marks are incontestable pursuant to the provisions of the
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`Lanham Act, 15 U.S.C. § 1065.
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`34.
`
`Defendant’s actions described herein constitute infringement of Plaintiffs’
`
`JEWEL marks, in Violation of Section 32(1) of the Lanham Act, 15 U.S.C. § lll4(l).
`
`-9-
`
`

`
`COUNT II
`
`FEDERAL UNFAIR COMPETITION
`
`35.
`
`Plaintiffs repeat and reallege the allegations contained in paragraphs 1-31 above
`
`as though fully set forth herein.
`
`36.
`
`Defendant’s aforesaid uses of the “Jewel” and “Jewel Collection” falsely
`
`identifies and misrepresents the source of goods and services in a manner likely to cause
`
`confusion as to the source of those goods and services, in violation of Section 43(a) of the
`
`Lanham Act, 15 U.S.C. § 1l25(a).
`
`COUNT III
`
`FEDERAL TRADEMARK DILUTION
`
`37.
`
`Plaintiffs repeat and reallege the allegations contained in paragraphs 1-31 above
`
`as though fully set forth herein.
`
`38.
`
`Defendant’s unauthorized, commercial use of the JEWEL marks began after the
`
`JEWEL marks became famous within the meaning of Section 43(c)( 1) of the Lanham Act, 15
`
`U.S.C. § 1l25(c)(1), and causes dilution ofthe distinctive quality of the JEWEL marks.
`
`39.
`
`Upon information and belief, Defendant willfully intended to trade on the
`
`reputation of the owners of the JEWEL marks.
`
`COUNT IV
`
`UNFAIR COMPETITION AND PASSING OFF
`UNDER ILLINOIS COMMON LAW
`
`40.
`
`Plaintiffs repeat and reallege the allegations contained in paragraphs 1-31 above
`
`as though fully set forth herein.
`
`41.
`
`42.
`
`Defendant’s aforesaid wrongful acts result in Defendant’s unjust enrichment.
`
`Defendant’s aforesaid wrongful acts constitute unfair competition and passing off
`
`in violation ofthe common law of the State oflllinois.
`
`-10-
`
`

`
`ILLINOIS DECEPTIVE TRADE PRACTICES
`
`COUNT V
`
`43.
`
`Plaintiffs repeat and reallege the allegations contained in paragraphs 1-31 above
`
`as though fully set forth herein.
`
`44.
`
`The Defendants’ aforesaid wrongful acts constitute deceptive trade practices in
`
`violation of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/1 et seq.
`
`ILLINOIS DECEPTIVE BUSINESS PRACTICES
`
`COUNT VI
`
`45.
`
`Plaintiffs repeat and reallege the allegations contained in paragraphs 1-31 above
`
`as though fully set forth herein.
`
`46.
`
`Defendant’s aforesaid wrongful acts constitute deceptive business practices in
`
`violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/1
`
`et seq.
`
`COUNT VII
`
`ILLINOIS TRADEMARK DILUTION
`
`47.
`
`Plaintiffs repeat and reallege the allegations contained in paragraphs 1-31 above
`
`as though fully set forth herein.
`
`48.
`Since long prior to the acts of Defendant which are the subject of this action, the
`JEWEL marks became famous in Illinois within the meaning of the anti-dilution laws of the
`
`State oflllinois, 765 ILCS 1036/65.
`
`49.
`
`Defendant’s aforesaid uses of the “Jewel” and “Jewel Collection” names dilutes
`
`the distinctiveness of Plaintiffs’ JEWEL marks in violation of the anti-dilution laws of the State
`
`oflllinois, 765 ILCS 1036/65.
`
`_}1-
`
`

`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiffs pray for relief against Defendant in the form of the following:
`
`A.
`
`l.
`
`7.
`
`B.
`
`Granting a judgment that:
`
`Defendant has committed trademark infringement of Plaintiffs’ JEWEL marks,
`
`in violation of Section 32(1) ofthe Lanham Act, 15 U.S.C. § 1114(1);
`
`Defendant has engaged in unfair competition in violation of Section 43(a) of the
`
`Lanham Act, 15 U.S.C. § 1l25(a);
`
`Defendant has caused dilution of Plaintiffs’ JEWEL marks, in violation of
`
`Section 43(c)(l) of the Lanham Act, 15 U.S.C. § 1125(c)(1) and in violation of
`
`the anti—dilution laws of the State of Illinois, 765 ILCS 1036/65;
`
`Defendant has engaged in deceptive trade practices in violation of the Illinois
`
`Uniform Deceptive Trade Practices Act, 815 ILCS 510/1 et seq.;
`Defendant has engaged in deceptive business practices in violation ofthe Illinois
`
`Consumer Fraud And Deceptive Trade Practices Act, 815 ILCS 505/1 et. seq.;
`
`Defendants have engaged in unfair competition and passing off in violation of
`
`the common law of the State of Illinois; and
`
`Defendant’s violation of the above laws and statutes was willful;
`
`Granting a permanent injunction against Defendant and its servants, agents,
`
`employees, successors and assigns, and all persons acting in concert with them, enjoining them
`
`from:
`
`using in any manner the JEWEL marks, any colorable imitations thereof, or any
`
`marks confusingly similar thereto;
`
`-12-
`
`

`
`2.
`
`doing any other act or thing likely to confuse, mislead, or deceive others into
`
`believing that Defendant’s products ‘emanate from Plaintiffs or are connected
`
`with, sponsored by, or approved by Plaintiffs; or
`
`3.
`
`doing any other act or thing likely to dilute the distinctiveness of the JEWEL
`
`marks;
`
`C.
`
`In accordance with l5 U.S.C. § M18 and other statutory and common law,
`
`requiring Defendant to deliver up to Plaintiffs for destruction all goods, signs, advertisements,
`
`literature, business forms, cards, labels, packages, wrappers, pamphlets, brochures, receptacles,
`
`and any other written or printed material in their possession or under their control which contain
`
`or encompass the JEWEL marks, any colorable imitations thereof, or any marks confusingly
`
`similar thereto;
`
`D.
`
`In accordance with federal and state law, awarding Plainti--s’ actual damages
`
`and Defendant’s profits, to be trebled in accordance with 15 U.S.C. § 1117;
`
`E.
`
`In accordance with 15 U.S.C. § 1117, 815 ILCS 510/3, and other federal and
`
`state law, awarding Plaintiffs their attorneys’ fees and costs for bringing this action;
`
`F.
`
`Awarding Plaintiffs interest and such other relief as the Court may deem just and
`
`equitable.
`
`-13-
`
`

`
`JURY DEMAND
`
`Plaintiffs hereby demand a trial by ajury of all issues so triable.
`
`Dated: May 16, 2006
`
`By:
`
`Steven P. Rouse
`
`Michael R. Curry
`MENGES & MOLZAHN, LLC
`20 North Clark Street, Suite 2300
`Chicago, Illinois 60602-5002
`Phone: 312-917-1880
`Fax: 312-917-1851
`
`Attorneys for Plaintiffs
`
`Of Counsel:
`
`J. Christopher Carraway
`Jared S. Goff
`Ramon A. Klitzke ll
`
`KLARQUIST SPARKMAN, LLP -
`121 S.W. Salmon Street, Suite 1600
`Portland, Oregon 97204
`Phone: 503-595-5300
`Fax: 503-595-5301
`
`-14-
`
`

`
`Int. Cl.: 42
`
`Prior U.S. C1.: 101
`
`Reg. No. 1,219,505
`United States Patent and Trademark Office Registered Dec. 7, 1932
`
`
`
`SERVICE MARK
`Principal Register
`
`Jewel
`
`Jewel Companies, Inc. (New York coriaoration)
`5725 E. River Rd.
`Chicago, Ill. 60631
`
`R
`
`For: RETAIL GROCERY AND GENERAL
`MERCHANDISE STORE SERVICES,
`in CLASS
`42 (U.S. CI. 101).
`.
`First use May 3, 1979; in commerce Nov. 1, 1979.
`Owner of U.S. Reg. No. 754,796.
`
`Ser. No. 353,138, filed Mar. 5, 1982.
`
`JEFFREY LEE GERTLER, Eiaminmg Attorney
`
`
`
`

`
`Int. CI.: 35
`
`Prior U.S. CIs.: 100, 101 and 102
`
`United States Patent and Trademark Office
`
`Reg. No. 2,119,541
`Registered Dec. 9, 1997
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`JEWEL
`
`AMERICAN STORES COMPANY (DELAWARE
`CORPORATION)
`709 EAST SOUTH TEMPLE
`SALT LAKE CITY, UT 34102
`
`FOR: RETAIL SUPERMARKET SERVICES
`FEATURING FOOD, DRUGS, HOUSEHOLD
`GOODS, AUTOMOTIVE GOODS. AND LIKE
`GENERAL MERCHANDISE, IN CLASS 35 (U.S.
`CLS. I00, 10! AND 102):
`
`FIRST USE
`9-IO-I958.
`
`10-0-1932;
`
`IN COMMERCE
`
`OWNER OF U.S. REG. NO. 1,219,505.
`
`SER. NO. 75-192,726, FILED lI—4-I996.
`
`WILLIAM P. SHANAI-IAN. EXAMINING AT-
`TORNEY
`
`

`
`Int. Cl.: 21
`
`Reg. No. 2,105,514
`Prior U.S. Cls.: 2, 13, 23, 29, 30, 33, 40 and 50
`
`United States Patent and Trademark Office Registered Oct. 14,1997
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`JEWEL
`
`AMERICAN STORES COMPANY (DELAWARE
`CORPORATION)
`709 EAST SOUTH TEMPLE
`SALT LAKE CITY. UT 84402
`.
`
`FOR: PLASTIC CUPS AND PAPER PLATES,
`IN CLASS 21 (U.S. CLS. 2,
`I3, 23, 29, 30, 33, 40
`AND 50).
`
`FIRST USE
`4-19-1991.
`
`4-l9—l991;
`
`IN CONINEERCE
`
`SER. NO. 75«l92,733, FILED H-4-I996.
`
`WXLLIAM P. SHANAHAN, EXAMINING AT~
`TORNEY
`
`

`
`Int. CL: 1
`
`Reg. No. 2,107,247
`Prior U.S. Cls.: 1, 5, 6, 10, 26 and 46
`
`United States Patent and Trademark Office Registered Oct. 2:, 1997
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`JEWEL
`
`AMERICAN STORES COMPANY (DEL/\V«/ARE
`C()R|‘()RATl(JN)
`709 EAST SOUTH TEMPLE
`SALT LAKE CITY, UT 84102
`
`FIRST USE
`2-20-1996.
`
`2-20-1996;
`
`IN COMMERCE
`
`SER. NO. 75—l9Z.736. FILED H—4—I99(1.
`
`FOR: DISTILLED WATER. IN CLASS 1 (U.S.
`CLS. I. 5, 6, 10, 26 AND 46).
`
`VVILLIAM P. SHANAHAN, EXAMINING AT-
`TORNEY
`'
`
`

`
`Int. CL: 32
`
`Reg‘ No. 2,112,225
`V
`Prior U.S. Cls.: 45, 46 and 48
`
`United States Patent and Trademark Office Registered Nov. 11,1997
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`JEWEL
`
`AMERICAN STORES COMPANY (DELAWARE
`CORPORATION)
`709 EAST SOUTH TEMPLE
`SALT LAKE CITY. UT 84102
`
`FIRST USE
`6-27-1991.
`
`6-27-1991;
`
`IN COMMERCE
`
`—
`SER. NO. 75-—l92.729. FILED 11-4-1996.
`
`FOR: FRUIT AND VEGETABLE JUICES
`AND SOFT DRINKS. IN CLASS 32 (U.S. CLS. 45, WILLIAM P. SHANAHAN, EXAMINING AT-
`46 AND 48).
`TORN EY
`
`

`
`Int. Cl.: 29
`
`Prior U.S. CL: 46
`
`Reg. No. 2,138,475
`United States Patent and Trademark Office
`Registered Feb. 24, 1998
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`JEWEL
`
`AMERICAN STORES COMPANY (DELAWARE
`CORPORATION)
`709 EAST SOUTH TEMPLE
`SALT LAKE CITY, UT 84102
`
`FOR: BAKED BEANS, BREAKFAST DRINKS,
`NAMELY, MILK, BUTTER. CANNED BEANS,
`CANNED FRUITS, CANNED PORK AND
`BEANS. CANNED PROCESSED TOMATOES,
`CANNED VEGETABLES, CHEESE, CHILI
`WITH BEANS, CONDENSED MILK, DIPS.
`DRIED FRUITS. FROZEN, PACKAGED, AND
`CANNED MEALS CONSISTING PRIMARILY
`OF MEAT, FISH, POULTRY, OR VEGETA-
`BLES,
`EGG SUBSTITUTE,
`EVAPORATED
`MILK, FLAKED COCONUT, FROZEN FRUIT,
`FROZEN AND FRENCH FRIED POTATOES,
`FROZEN VEGETABLES, HASH BROWNS,
`IN-
`
`JELLIES AND JAMS.
`STANT POTATOES,
`LUNCHEON MEATS, MARGARINE, MEATS,
`NON-DAIRY CREAMER, PEANUT BUTTER,
`PICKLES. POTATO CHIPS, PROCESSED NUTS,
`PROCESSED OLIVES,
`REFRIED BEANS.
`SHORTENING, SOUPS, TUNAFISH. VEGETA-
`BLE OIL, WHIPI’ED TOPPING AND YOGURT,
`AND AS A HOUSE MARK FOR FOOD PROD-
`UCTS, IN CLASS 29 (U.S. CL. 46).
`FIRST USE
`2-9-I994;
`IN
`2-9-1994.
`OWNER OF U.S. REG. NO. 1,219,505.
`
`COMMERCE
`
`SER. NO. 75——l92,734, FILED II—4-I995.
`
`WILLIAM F. SHANAHAN. EXAMINING AT-
`TORNEY
`
`

`
`Int. Cl.: 30
`
`Prior U.S. CI.: 46
`
`United States Patent and Trademark Office
`
`Reg. No. 2,109,071
`Registered Oct. 28, 1997
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`JEWEL
`
`AMERICAN STORES COMPANY (DELAWARE
`CORPORATION)
`709 EAST SOUTH TEMPLE
`SALT LAKE CITY. UT 84102
`
`FOR: BAKING SODA, BARBECUE SAUCE,
`BISCUITS, BREAD CRUMBS, BREAKFAST
`CEREAL,
`CANDY,
`CHEESE
`FLAVORED
`PUFFED CORN SNACKS. CHOCOLATE CHIPS,
`CHOCOLATE
`SYRUP,
`COFFEE,
`COOKIE
`DOUGH, COOKIES, CORN CHIPS, CRACKERS.
`FROZEN AND PACKAGED MEALS CONSIST—
`INC} PRIMARILY OF PASTA OR RICE, FLOUR,
`FROZEN
`PIZZA,
`FROZEN
`PRETZELS,
`FROZEN WAFFLES. HONEY,
`ICE CREAM
`CONES,
`ICE CUBES, KETCHUP, MACARONI
`AND CHEESE. MARSHMALLOWS, MAYON-
`NAISE, MIXES FOR BAKERY GOODS, MUF-
`FINS. MUSTARD, OATMEAL, PANCAKE AND
`
`PASTRIES, PIE
`PASTA,
`WAFFLE MIXES,
`CRUSTS, POPPED POPCORN, POT PIES, PRET-
`ZELS, RELISH, RICE, ROLLS, SEASONING
`MIXES
`FOR CHILI, GRAVY. SPAGHETTI
`SAUCE AND TACOS. SEASONINGS, SPICES.
`STUFFING MIXES CONTAINING BREAD.
`SUGARS, PANCAKE AND WAFFLE SYRUP,
`TEA. TOMATO SAUCE. TORTILLA CHIPS
`AND VINEGAR, AND AS A HOUSE MARK
`FOR. THOSE AND OTHER FOOD PRODUCTS,
`IN CLASS 30 (US. CL. 46).
`FIRST USE
`I I-I I-1992;
`lI—I I-I992.
`
`IN COMMERCE
`
`SER. NO. 75-192.728,‘ FILED II-4-I996.
`
`WILLIAM F. SHANAHAN, EXAMINING AT-
`TORNEY
`
`

`
`Int. Cl.: 31
`
`Prior U.S. Cls.: 1 and 46
`United States Patent and Trademark Office
`
`Reg. N