Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA610111
`ESTTA Tracking number:
`06/16/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207131
`Plaintiff
`Ferrero S.p.A.
`ANNA KURIAN SHAW
`HOGAN LOVELLS US LLP
`555 13TH ST NW
`WASHINGTON, DC 20004
`UNITED STATES
`dcptotrademarkmail@hoganlovells.com, dctrademark@hoganlovells.com,
`anna.shaw@hoganlovells.com, lauren.chamblee@hoganlovells.com
`Motion to Suspend for Civil Action
`Anna Kurian Shaw
`anna.shaw@hoganlovells.com,DCTrademark@hoganlovells.com,DCDocketing
`@hoganlovells.com
`/AKS/
`06/16/2014
`Motion to Suspend Further Proceedings No. 91207131.pdf(934053 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`FERRERO S.P.A.
`
`Opposition No. 91207131
`
`Opposer,
`
`Serial No. 85447839
`
`DOTCI-IIRNE PIDPRIEMSTVO
`"KONDITERSKA KORPORATZIA
`
`"ROSHEN",
`
`Applicant
`
`Mark:
`Filed: Oct. 14, 2011
`
`MOTION TO SUSPEND FURTHER PROCEEDINGS
`
`Pursuant to 37 C.F.R. § 2.117(a) and T.B.M.P. § 5l0.02(a), Petitioner Ferrero S.p.A.
`
`(“Ferrero" or “Opposer”) hereby moves that all further proceedings in the above-referenced
`
`opposition action be suspended, pending resolution of Civil Action No. 2:14-cv-03817-WHW-
`
`CLW now pending in the United States District of New Jersey (“Federal Court”). A true and
`
`correct copy of the Complaint in that action is attached as Exhibit A to the accompanying
`
`declaration of Anna Kurian Shaw (“Shaw Declaration”).
`
`As indicated by the contents of the accompanying Complaint, attached to the Shaw
`
`Declaration, the issues presented in the subject civil action include those substantially identical to
`
`those in the above-referenced opposition action, and the Federal Court’s final determination of
`
`Civil Action No. 2:14-cv-03817-WHW-CLW will not only bear on the issues before the
`
`Trademark Trial and Appeal Board (the “Board”) in the above-referenced opposition action, but
`
`the decision of the Federal Court is also binding on the Board. Furthermore, Opposer notes that
`
`

`
`at
`
`this time there are no motions which are potentially dispositive of the above-referenced
`
`opposition action pending before the Board.
`
`Accordingly, Opposer respectfully requests that all further proceedings in the above-
`
`referenced opposition action be suspended until the civil action is resolved.
`
`In the alternative, if
`
`Opposer’s Motion To Suspend Further Proceedings is denied, Opposer requests a 60-day
`
`extension of all remaining deadlines, as set forth below.
`
`Time to Answer:
`
`Deadline for Discovery Conference:
`
`Discovery Opens:
`
`Expert Disclosures:
`
`Fact Discovery Closes:
`
`Plaintiffs Rebuttal Expert Disclosures Due:
`
`Expert Discovery Closes:
`Plaintiffs Pretrial Disclosures:
`
`Plaintiffs 30-day Trial Period Ends:
`Defendant:’Counterclaim Plaintiffs Pretrial Disclosures:
`
`30-day Trial Period for Defendant and
`Plaintiff in the Counterclaim:
`
`Counterclaim Defendant’sfPlaintiffs Rebuttal
`
`Disclosures Due:
`
`30-day Trial Period for Counterclaim Defendant and
`
`_
`Rebuttal Testimony as Plaintiff Ends:
`Counterclaim Plaintiffs Rebuttal Disclosures Due:
`
`15-day Rebuttal Period for Counterclaim Plaintiff Ends:
`Plaintiffs Trial Brief Due:
`
`Defendant's Trial Brief and Plaintiff in the
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`Counterclaim Due:
`
`Brief for Defendant in the Counterclaim and
`
`CLOSED
`
`CLOSED
`
`CLOSED
`
`CLOSED
`
`September 8, 2014
`
`September 9, 2014
`
`September 23, 2014
`
`October 23, 2014
`
`December 7, 2014
`
`December 22, 2014
`
`February 5, 2015
`
`February 20, 2015
`
`April 6, 2015
`
`April 21, 2015
`
`May 21 , 2015
`
`July 20, 2015
`
`August 19, 2015
`
`Reply Brief, if any, for Plaintiff Due:
`
`September 18, 2015
`
`Reply Brief, if any, for Plaintiff in the Counterclaim Due:
`
`October 3, 2015
`
`

`
`Counsel for Opposer Ferrero S.p.A. contacted Applicant’s Counsel on June 16, 2014 to
`
`request Applicant’s consent to the Motion. Counsel for Applicant advised that Applicant does
`
`not consent to the Motion.
`
`Dated: June 16, 2014
`
`Respectfully Submitted,
`
`HOGAN LOVELLS US LLP
`
`By:fAKSf
`Raymond A. Kurz
`Anna Kurian Shaw
`
`Lauren Chamblee
`
`555 Thirteenth Street, N.W.
`
`Washington, D.C. 20004
`Telephone: (202) 637-5900
`Fax: (202)637-5910
`
`Attorneys for Petitioner,
`Ferrero S.p.A.
`
`

`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY THAT on this 16th day of June 2014 the foregoing Motion to Suspend
`Further Proceedings was served upon Counsel
`for Respondent via hand delivery with a
`complimentary copy sent via electronic mail:
`
`JULIA ANNE MATHESON
`
`FINNEGAN HENDERSON FARABOW GARRETT & DUNNER
`
`901 NEW YORK AVE NW
`
`WASHINGTON, DC 20001-4413
`UNITED STATES
`
`julia.matheson@finnegan.com, docketing@finnegan.com,
`judy.valusek@finnegan.com, jacob.mersing@finnegan.com
`
`/DRS/
`
`Daniel Schaal
`
`555 13th Street NW
`
`Hogan Lovells US LLP
`Washington D.C. 20004
`Tel: (202) 637-5600
`Fax: (202)637-5910
`
`

`
`FERRERO S.P.A.
`
`Opposition No. 91207131
`
`Opposer,
`
`Serial No. 85447839
`
`DOTCHIRNE PIDPRIEMSTVO
`"KONDITERSKA KORPORATZIA
`
`"ROSHEN",
`
`Applicant
`
`Mark:
`Filed: Oct‘ 14, 201]
`
`DECLARATION OF ANNA KURIAN SHAW
`
`IN SUPPORT OF REGISTRANT’S MOTION TO SUPSEND FURTHER
`
`PROCEEDINGS
`
`1, Anna Kurian Shaw, hereby declare as follows:
`
`1.
`
`I am a member of the law firm Hogan Lovells US LLP and am one of the
`
`attorneys representing Petitioner Ferrero S.p.A. (“Ferrero”) in the above-captioned action.
`
`I
`
`make this Declaration is support of Petitioner’s Motion to Suspend Further Proceedings.
`
`2.
`
`On June 13, 2014, Petitioner Ferrero S.p.A. filed a complaint in the United States
`
`District Court for the District of New Jersey, assigned Civil Action No. 2: 14-cv-03817-WHW-
`
`CLW.f0Lmmrfllm,kademmkm&mgememandmfafimm;m1mmundmFedemlandSmI§la&v
`
`based on Applicant’s infringing use of trademarks confusingly similar to the ROCHER and
`
`FERRERO ROCHER marks, including the mark which is the subject of U.S. App. Ser. No.
`
`85r’447,839 and Opposition Proceeding No. 91207131 and the mark which is the subject of U.S.
`
`Reg. No. 3,838,123, and Cancellation Proceeding No. 92057739. A true and correct copy of the
`
`complaint is attached as Exhibit A.
`
`3.
`
`The issues presented in Civil Action No. 2:14-cv-03817-WHW-CLW are
`
`essentially identical to those presented in this opposition proceeding (i.e., whether the mark
`
`

`
`which is the subject of U.S. App. Ser. No. 85x‘447,839 is likely to cause confusion with the
`
`ROCHER and FERRERO ROCHER marks), and the decision in Civil Action No. 2: l4-cv-
`
`03817-WI-IW-CLW will bear on the issues before the Trademark Trial and Appeal Board ("the
`
`Board”) in this opposition action and bind the Board.
`
`I declare under penalty of perjury that the foregoing is true and correct to the best
`
`of my personal knowledge.
`
`Signed in Washington, D.C his 16th day of June 2014.
`
`Anna K rian Shaw
`
`

`
`EXHIBIT A
`
`

`
`Case 2:14-cv-03817-WHW-CLW Document 1-1 Filed 06/13/14 Page 1 of 1 PageID: 14
`Case 2:14—cv—O3817—WHW—CLW Document 1-1 Filed 06/13/14 Page 1 of 1 PagelD: 14
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`J3 44
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`(im. 12x12)
`
`CIVIL COVER SHEET
`
`the is 44 civil cover sheet and the inforrnation contained herein neither replace nor supplement the fiiing and service of pteadings or other papers as required bylaw, except as
`provided by local‘ rules otcour't, This form, approved by the Judicial Conference ofthe United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the crvii doeicet sheet.
`(tS‘I3.';“LMs‘I‘r't[I(TTJ()NS ()N.’\lI3;\’I‘.'-tiff}: otr T1-{IS FORM,1
`
`I. (a) PLAINTIFFS
`FERRERO S.p.A. and FERRERO tJ.S.A., ii\lC,
`
`
`
`DEFENDANTS
`DOTC}-HRNE F’%DF’RlEMSTVG KONENTERSKA KORPORATZEA
`ROSE-lEN and ROSHEN USA LLC
`
`_m___________j_““““““““““““““W
`County of Residence oi'First Listed Dei"e.ndant
`(IN U S. Pr’.AIA’T1'r’-"F .‘AS‘[.'S O.Ni’.i’j
`EN LAND CONf)i.EMNATiON CASES, USE THE LOCATEON OF
`THE TRACT OF LAND INVOLVED,
`
`NOTE:
`
`Attorneys (r’}"Krrrn+'n)'
`
`
`
`_W_WW‘
`(3)) County of Residence of First Listed Plaintift‘
`_
`(J;'/\’(.‘JEI"r".W U.S PI./Ii’N7‘!I5'l"(l4.¥fsXS}
`
`W‘‘‘__
`
`(C) Attorneys {r'<'r'rm Name, Address Emarr and Ywephontu Nmnber}
`lVicElroy, Deutsch, Mulvaney & Carpenter, LLP
`1300 Mt. Kembie Ave, PO. Box 2075. Morristown, NJ 07962-20?5,
`(973) 993-8100, fholahan@mdmc-law.com
`
`OF
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`
`Citizen ot‘Another State
`
`Cl 2
`
`Cl
`
`2
`
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`ofiiusiness In Another State
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`3 5
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`(Pt'ur:'c= an "X" Mr Om i3'r)x Only)
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`E1 4 Diversity
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`
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`
`
`
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`
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`
`
`
`U 210 Land Lozrdemriation
`U 220 Foreclostn'e
`D 230 Rent Lease & Eiecrnaent
`D 240 Torts to I.-and
`5 245 Ton Product Liability
`C1 290 Ali Otiier Real Property
`
`
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`PERSONAL iNJURY
`Pl1ZiiSONAL[NJ1.lRY
`El 375 False Ciaims Act
`Cl
`lid insurance
`
`
`Cl 400 Slate Reapporiionnieni
`E] 365 Personal Injury ~
`CE 310 Airplane
`CI 120 Marine
`
`E3 690 Other
`3 tiiili Antitrust
`I3 315 Airpirrne Product
`Product Liabiiity
`C) 130 Milier Act
`Liability
`U 367 Health Carer‘
`CI
`l40 Negotiable instruineiit
`I3 430 Ba.n.ks and Banking
`
`Cl 150 Recovery oi'Overpaymerii D 320 Assault, Libel &
`Pliamraceutical
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`D 450 Commerce
`
`
`& Erithrcer-nerai of Judgment
`Slander
`Persona} injury
`D 820 Copyrights
`E} 46!} Deportation
`
`
`
`Cl 330 Federal Finrployers’
`Product Liability
`C] 830 Patent
`Cl 15} Medicare Act
`El 47!) Racketeer‘ Irifluencecl and
`152 Recovery of Defartitetl
`Liability
`3 368 Asbestos Personal
`3'3 840 Tradcrnarit
`Corrirpt Organizations
`
`
`Student Loans
`Cl 340 Marine
`injury Product
`E) 480 {fonsnmer Credit
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`Cl 345 Marine Product
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`C3 490 Cable/Sat TV
`PERSONAL PROPERTY 13 71!} Fair Labor Standards
`86} HIA {I
`9513‘;
`Cl 153 Recovery of Overpayment
`Liability
`El 850 Securitiesfconiniodiziest’
`
`of Veterai1‘s Benefits
`5.’! 350 Motor Veiaicie
`Cl 370 Other T-‘mitt
`ET 862 Black Lung (923)
`Exchange
`
`
`I60 Stockholders’ Suits
`. Cl 355 Motor Vehreic
`D 3'71 Truth in Leiiding
`E] 863 DEWCIDEWW (405(g))
`. D 890 Other Statutory Actions
`5]
`L‘! 190 Other Contract
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`Product Liabiiity
`Cl 38!) Other Fersonai
`Cl 864 SSID Title XVI
`CE 89} Ag:-icuitnrai Acts
`C} 195 Contract Product Liatriiity
`{J 360 Other‘ Personai
`Property Damage
`3 865 RS1 (405(g))
`G 893 Envirorimental Matters
`CI 1% Franchise
`injury
`Cl 385 Property Damage
`5 I3 395 Freedom oflnformation
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`5] 463 Alien Detainee
`441 Voting
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`C! Sit} Motions in Vacate
`Cl 442 Ernploynierrt
`El 950 Constitutionality of
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`D 443 l-Ionsing/
`State Statutes
`Accommodations
`C} 530 General
`13 MS Amer. w/Disabiiities —
`U 535 Death Penalty
`Other‘:
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`E1 446 Amer. w/Disabilities » El 540 Mairdainus dc Other
`Other
`El 550 Civi1Rig1irs
`G 448 Education
`Cl 555 Prison Contiitiori
`D 560 Civil Detainee »
`
`
`Conditions of
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`V.
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`Xi Originai
`D 2 Removed from
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`Cl 720 Labor/Ma.riagemer1l'
`Relations
`D 740 Railway Labor’ Act
`Cl 751 Family and Medical
`Leave Act
`Cl 790 Other Labor Litigation
`El 79! Employee Retirement
`income Sc:cnr‘it'y Act
`
`
`
`
`
`
`
`ET] 465 Other lrrnirigi-aliori
`Actions
`
`to,“
`C3 870 Taxes (US. Piaintiff
`
`or Defeiidatat)
`D 871 lRS——Tirird Party
`26 USC 7609
`
`
`
`£3
`
`3 Rernandedtrom
`Appellate Court
`
`D 4 Reinstatcd or
`Reopened
`
`El 6 Muitidistrici
`Litigation
`
`£3 5 Transferred from
`Another‘ District
`fl\‘IWI'f3*)
`Cite the U Civil _Statute under which you are filing (1):; mar cirejurrlvrricriarrat sraifures unte.rsr1r‘ver.n'ryj:
`i5 U.S.C. Section 1501, et ee.
`_
`_
`.
`Briefdcscription ofcause:
`~
`Federat trademark infringement and unfair competition
`VII. REQUESTED EN
`:3 CHECK IF rats is A CLASS ACTION
`DEMAND 8
`CHECK YE-S only ifcicmanded in cornrriaémi
`
`COMPLAINT:
`UNDER RULE 23, F-RCV-Pi
`JURY DEMAND:
`CI Yes
`:1 No
`
`VI. CAUSE OF‘ ACTION
`
`VIII. RELATED CASE(S)
`IF ANY
`
`‘
`'
`We mjwwom'1
`
`W
`RIDGE
`SEGN./\"1"'UR.1”-L OF A'i‘TC)RNEY OF RECORD
`DATE
`O6/t3f20i4
`s/Frank l-iolahan
`
`FOR OFFICE USE ONLY
`
`mm __[)0CKE'1”'NUMBER VfiTV7Tfi‘Wm_______
`
`RECEIPT it
`
`AMOUNT
`
`APFLYING EFP
`
`JUDGE
`
`MAG‘ JUDGE
`
`

`
`Case 2:14-cv-03817-WHW-CLW Document 1 Filed 06/13/14 Page 1 of 13 PageID: 1
`Case 2:14—cv—O3817—WHW—CLW Document 1 Filed 06/13/14 Page 1 of 13 Page|D: 1
`
`iisansao S.p.A. and
`FERRERO U.S.A., ENC,
`
`Plaintiffs,
`
`V.
`
`DOTCHIRNE PIDPRIEMSTVO
`
`KONDITERSKA KORPORATZIA
`
`ROSHEN and
`
`ROSHEN USA LLC
`
`Defendants.
`
`:
`
`:
`
`:
`
`:
`
`:
`
`UNETED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF NEW JERSEY
`
`CIVIL ACTION NO.:
`
`COMPLAINT FOR TRADEMARK
`
`INFRINGEMENT AND UNFAIR
`
`COMPETITION
`
`DEMAND FOR TRIAL BY JURY
`
`Plaintiffs, Ferrero S.p.A. and Ferrero U.S.A., Inc. (coilectiveiy referred to as “Plaintiffs”
`
`or “Ferrero”), by its attorneys, allege for their Complaint against Defendants Dotchirne
`
`pidpriemstvo Konditerska korporatzia ROSI-IEN (“DPKK Roshen") and Roshen USA, LLC
`
`(“Roshen USA”) (collectively referred to as “Defendants” or “Roshen”) the following:
`
`Nature of Action
`
`1.
`
`In this action, Ferrero asserts both Federal and State causes of action based on
`
`Defendants’ infringement of Ferrero’s trademarks as folicws: (a) trademark infringement in
`
`violation of Lanham Act, 15, U.S.C.§ Ii 14; (is) unfair competition in violation of the Lanham Act,
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`15 U.S.C. § ll25(a); (c) trademark infringement under NJ. Stat. § 56.3-13.16; (d) unfair
`
`competition under NI. Stat. § 56.4-l; (e) unfair competition under New Jersey common law; and
`
`(f) cancellation of a "US. trademark registration. Plaintiffs seek, inter alia, injunctive relief against
`
`Defendants for their activities as alleged in greater detaii below.
`
`‘ADC - DB2047fUOUl02 - 5712189 V2
`
`

`
`Case 2:14-cv-03817-WHW-CLW Document 1 Filed 06/13/14 Page 2 of 13 PageID: 2
`Case 2:14—cv—O3817—WHW—CLW Document 1 Filed 06/13/14 Page 2 of 13 Page|D: 2
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`Parties
`
`2.
`
`Plaintiff Ferrero S.p.A. is an itaiian corporation having its piace of business at Piazzaie
`
`Pietro Ferrero 1, Alba (Cuneo), 12051, Italy, manufactures and sells a variety of candy and
`
`confectionery products, including chocolate.
`
`3.
`
`Plaintiff Ferrero U.S.A., Inc. is a corporation duly organized and existing under the laws
`
`of the State of Delaware having its place of business at 600 Cottontaii Lane, Somerset, New Jersey
`
`08873. Ferrero U.S.A., Inc. exclusively distributes and sells Ferrero S.p.A.’s products in the United
`
`States.
`
`4.
`
`Upon information and belief, Defendant DPKK Roshen, a Ukrainian corporation, having
`
`a place of business at Elektrykiv vul., 26/9 Kyiv 04176 Ukraine manufactures and sells a variety of
`
`candy and confectionery products, inciuding chocolates.
`
`5.
`
`Upon. information and belief, Defendant Roshen USA, LLC, a limited liability company
`
`duly organized and existing under the Laws of the State of New Jersey having a place of business at
`
`E60 Raritan Center Parkway, Edison, NJ 0883 7, distributes DPKK Roslien’s products in the United
`
`States.
`
`Venue and Jurisdiction
`
`6.
`
`This is an action for federal trademark infringement and unfair competition under the
`
`Trademark Act of i946, as amended, 15 U.S.C. §§ 105] et seq. (“Lanham Act”), and for
`
`trademark infringement and unfair competition under the laws of the State of New Jersey.
`
`7.
`
`This Court has subject matter jurisdiction of this action under the trademark iaws of the
`
`United States, 15 U.S.C. § 121 and under the Judicial Code of the United States, 28 U.S.C. §§
`
`1338(3) and 1338(b).
`
`“DC ~ 0520471000102 ~ 5712189 V2
`
`

`
`Case 2:14-cv-03817-WHW-CLW Document 1 Filed 06/13/14 Page 3 of 13 PageID: 3
`Case 2:14—cv—O3817—WHW—CLW Document 1 Filed 06/13/14 Page 3 of 13 Page|D: 3
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`8.
`
`This Court also has jurisdiction over the state law claims under the doctrine of
`
`supplemental iurisdiction, 28 U .S.C. § 1367, because the federal and state ctairns are based on the
`
`same operative facts, and judicial economy, convenience, and fairness to the parties will result if
`
`this Court assumes and exercises jurisdiction over the state law claims.
`
`9.
`
`Venue is proper in this District pursuant to 28 U.S.C § 13.91(b) and 1391 (c) because,
`
`upon information and beiief, Defendant DPKK Roshen is a foreign corporation, Defendant Roshen
`
`USA is a resident of this district, and a substantial part of the events giving rise to the claim
`
`occurred in this District.
`
`10. Upon information and belief, Defendants distribute and/or sell their products in this
`
`District.
`
`Ferrero’s Marks
`
`11.
`
`Plaintiff, Ferrero S.p.A. is the owner of various trademarks used in connection with a
`
`wide range of candies and confections, including chocoiates distributed around the world. The
`
`products bearing Ferrero S.p.A,’s trademarks are sold in the United States through its related
`
`company Ferrero USA, inc. The ROCHER chocolate product is among these products.
`
`12.
`
`Since at ieast as early as 1981, Ferrero S.p.A. has held significant common law and
`
`statutory rights in the United States for the marks ROCHER and FERRERO ROCHER
`
`(“ROCHER Marks”) in connection with confections, candy and chocolates (“ROCHER Goods”)
`
`by virtue of long and extensive use and federal registrations as pleaded hereinafter and extensive
`
`common law rights.
`
`13.
`
`Ferrero began selling the ROCHER Goods under the ROCHER Marks in the United
`
`States at least as early as 1981. Since that time, Ferrero has prominently, extensively, and
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`continuously used, advertised, and promoted the ROCHER Marks and the ROCHER Goods
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`throughout the United States and the world,
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`14. As a result of Ferrero’s extensive and continuous use of the ROCHER Marks in interstate
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`commerce, the marks have become welhknown among consumers of chocolate, candy and
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`confectionery products and the public generally, as people recognize the distinctive ROCHER
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`Marks and associate such marks with the goods that Ferrero offers. The ROCHER Marks therefore,
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`are symboiic of extensive goodwill and consumer recognition built up by Ferrero through its sales,
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`advertising and promotional efforts.
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`15.
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`Ferrero S.p.A. is the owner of various federal registrations for the ROCHER and
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`FERRERO ROCHER marks on the Principal Register, including US. Registration No. 1,680,513
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`for the word mark ROCHER and U8. Registration No. 2,048,551 for the word mark FERRERO
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`ROCHER, both for “candy” in the international Class 30. Such registrations were issued on March
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`24, 1992 and April 1, 1997, respectively, and both have achieved incontestahle status. Copies of
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`these registrations are attached as Exhibit A.
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`16.
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`Ferrero S.p.A.’s incontestable registrations for the ROCHER Marks constitute prima
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`facie evidence of: (a) the validity of the registrations for the marks; (b) Ferrero S.p.A.’s ownership
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`of the marks; and (c) Ferrero’s exclusive right to use the marks in commerce on or in connection
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`with the goods specified in the registrations. 15 U .S.C. §§ l057(b) and 1115(a).
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`Defendant’s Infringing Activities
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`17.
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`Upon information and belief, Defendant DPKK Roshen is a manufacturer and exporter
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`of a number of candy and confectionary products, including chocoiate (“ROSHEN Goods”)
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`distributed in the United States, including in New Jersey, through Roshen USA.
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`18. Upon information and belief, the ROSHEN Goods are offered in the United States,
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`including in New Jersey, in connection with the ROSHEN word mark.
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`19. On October 14, 20} 1, Defendant DPKK Roshen flied U .S. Application Serial Number
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`85/447,839, to register the ROSHEN & Design mark depicted in Exhibit B in connection with
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`confectioneries, namely, candies, pastries, chocolate, hard candies, and fruit jelly candy in
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`Enternationai Ciass 30 (“ROSHEN Banner Mark”).
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`20. Defendant DPKK Roshen aiso owns U.S. Trademark Registration No. 3,838,123 for the
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`ROSHEN & Design mark depicted in Exhibit C in connection with confectioneries, namely, snack
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`foods, namely, chocolate; confectionery made of sugar; confectionery, narneiy, pastilles, fondants,
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`and fruit jellies in International Class 30 (“ROSHEN Ribbon Marl~:”)(collectively, the ROSHEN
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`word mark, the ROSHEN Banner Mark and the ROSHEN Ribbon Mark are referred to herein as
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`the “ROSHEN Marks”).
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`21. On September 24, 2012, Ferrero S.p.A. timely flied a Notice of Opposition against the
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`application for the ROSHEN Banner Mark, on the grounds of, inter alia, likelihood of confusion.
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`22. On August 21, 2013, Ferrero S.p.A. filed a Petition for Canceilation to cancel the
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`registration for the ROSHEN Ribbon Mark on the grounds of, inter alia, likelihood of confusion.
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`23.
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`Ferrero’s use and registration of the ROCHER Marks predate any use by ROSl1€1’} of the
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`ROSHEN Marks in the United States.
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`24. Defendants had constructive knowledge of Ferrero S.p.A.’s ownership and registration of
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`the ROCHER Marks, including the FERRERO ROCHER Mark in Reg. No. 2,048,551 and the
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`ROCHER Mark in Reg. No. 1,680,513, before Roshen began offering products under the
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`ROSHEN Marks in the United States.
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`25. Upon information and belief, Defendants had actual knowledge o:["Ferrero S.p.A.’s
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`ROCHER Marks before it adopted and first used the ROSE-IEN Marks in the United States.
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`26.
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`The ROSHEN Marks are confusingly similar to Ferrero S.p.A.’s ROCHER Marks when
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`used on or in connection with the ROSHEN Goods which are identical and/or closely related to the
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`ROCHER Goods.
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`27. Given Ferrero’s prior and substantial use of the ROCHER Marks in connection with the
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`ROCHER Goods, Defendants’ unauthorized use of the ROSHEN Marks will likely confuse or
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`deceive consumers as to source, sponsorship or approval of Defendants’ products, and consumers
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`are likeiy to erroneously believe that Ferrero sponsors or is somehow affiliated with Defendants.
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`28. Uniess this Court re-strains the Defendants’ acts complained above herein, Defendants
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`wili continue to cause irreparable injury to Ferrero and to the public for which there is no adequate
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`remedy at law.
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`COUNT ONE
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`FEDERAL TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1114(1)
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`29.
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`Plaintiffs repeat paragraphs I through 28 as if fully set forth herein.
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`30.
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`Ferrero S,p.A. owns U.S. Registration No. 1,680,513 for the ROCHER word mark and
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`US. Registration No. 2,048,551 for the FERRERO ROCHER word mark, and such registrations
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`are Vaiid and enforceable (“ROCHER Registrations”).
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`31.
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`The ROSHEN Marks are confusingly similar to the marks which are the subject of the
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`ROCHER Registrations in appearance, sound, and commercial impression.
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`32. Defendants’ use of the ROSHEN Marks in connection with the advertising, promotion,
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`distribution and/or sale of the ROSHEN Goods is likety to cause confusion or mistake with the
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`marks which are the sub} ect of the ROCHER Registrations, or to deceive as to source, affiliation,
`
`or sponsorship with Ferrero, in Violation of the Lanham Act, 15 U.S.C. § ii 14.
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`33.
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`Ferrero has been and/or is likely to be damaged by Defendants’ infringemerit in an
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`amount to be determined at trial.
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`34. As a result of Defendants’ trademark infringement, Defendants have caused , and wiil
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`continue to cause, irreparable harm to Ferrero and the goodwill associated with the ROCHER
`
`Marks for which Ferrero has no adequate remedy at law. Thus, Ferrero is entitied to, inter alia,
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`injunctive relief.
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`COUNT TWO
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`FEDERAL UNFAIR COMPETITION UNDER 15 U.S.C. § 1125(a)
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`35.
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`Plaiiitiffs repeat paragraphs 1 through 34 as if fuliy set forth herein.
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`36.
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`Ferrero S.p.A. has common law and federal trademark rights in its ROCHER Marks,
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`which are uniquely associated with Ferrero as a source of goods offered in connection with the
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`ROCHE,R Marks.
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`37.
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`The ROSHEN Marks are confusingly similar to the ROCHER Marks in appearance,
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`sound, and commercial impression.
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`38. Defendants’ use of the ROS}-KEN Marks in connection with the advertising, promotion,
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`distribution, and/or sale of the ROSHEN Goods is likeiy to cause confusion or mistake with the
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`ROCHER Marks, or to deceive as to source, affiliation, connection, association, or sponsorship of
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`Defendants with Ferrero, in violation of the Lanharn Act, 15 U.S.C. § li25(a).
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`39. Defendants’ use in commerce of marks which are confusingly similar to the ROCHBR
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`Marks constitutes unfair competition and Ferrero has been and/or will likely be damaged by
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`Defendants’ acts in an amount to be determined at trial.
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`40. Defendants’ acts of unfair competition have caused, and wiii continue to cause,
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`irreparable harm to Ferrero and the goodwill associated with the ROCHER Marks, for which
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`Ferrero has no adequate remedy at law. Thus, Ferrero is entitled to, inter alia, injunctive relief.
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`COUNT THREE
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`TRADEMARK INFRINGEMENT UNDER NJ. STAT. § 56.3»-13.16
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`41.
`
`Piaintiffs repeat paragraphs 1 through 40 as if fully set forth herein.
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`42.
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`This count arises under N]. Stat. § 56.3-13.16 for infringement of Ferrero S.p.A.’s
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`ROCHER Marks.
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`43.
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`As set forth in paragraphs 29 through 34 above, upon information and belief, Defendants
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`have used, without Plaintiffs’ consent, the ROSHEN Marks in connection with the ROSHEN
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`Goods in this State, which is iikely to cause confusion, in Vioiation of Lanharn Act, 15 U.S.C.§
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`lil4(1)(a) and New Jersey state law.
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`44. Upon information and belief, Defendants have used, without Ferrero’s consent, the
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`ROSHEN Marks in New Jersey which is likely to cause consumer confusion.
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`45. Upon information and belief, Defendants’ actions as described above are in Violation of
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`NJ. Stat. § 56.343. 16, as Defendants have infringed the ROCHER Marks and continue to infringe
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`the ROCHER Marks.
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`46.
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`Ferrero has been and/or wili likely be damaged by Defendants’ acts in an amount to be
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`determined at triai.
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`47. Defendants’ acts of unfair competition have caused, and will continue to cause,
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`irreparable liarm to Ferrero and the goodwill associated with the ROCHER Marks, for which
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`Ferrero has no adequate remedy at law. Thus, Ferrero is entitied to, inter cilia, injunctive relief.
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`COUNT FOUR
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`UNFAIR COMPETITION UNDER N.J. STAT. § 56.4-1
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`48.
`
`Piaintiffs repeat paragraphs l through 47 as if fuliy set forth herein.
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`49.
`
`This count arises under NJ. Stat. § 56.44 for infringement of Ferrero S.p.A.’s ROCHER
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`Marks.
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`50. As set forth in paragraphs 35 through 40 above, upon information and belief, Defendants’
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`use of the ROSHEN Marks in connection with the advertising, promotion, distribution, and/or sale
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`of the ROSHEN Goods is likeiy to cause confusion or mistake with the ROCHER Marks, or to
`
`deceive as to source, affiiiation, connection, association, or sponsorship of Defendants with Ferrero,
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`in violation ofthe Lanharn Act, 15 U.S.C. § 1 l25(a) and New Jersey state law.
`
`51.
`
`Ferrero S.p.A. has common iaw and federal trademark rights in its ROCHER Marks,
`
`which are uniqueiy associated with Ferrero as a source of goods offered in connection with the
`
`ROCHER Marks.
`
`52.
`
`The ROSHEN Marks are confusingly similar to the ROCHER Marks in appearance,
`
`sound, and commercial impression.
`
`53. Defendants’ use of marks which are confusingly sirniiar to the ROCHER Marks in
`
`commerce constitutes unfair competition and Ferrero has been and/or wili likely be damaged by
`
`Defendants’ acts in an amount to be determined at trial.
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`54. Defendants’ acts of unfair competition have caused, and will continue to cause,
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`irreparable harm to Ferrero and the goodwill associated with the ROCHER Marks, for which
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`Ferrero has no adequate remedy at law. Thus, Ferrero is entitled to, inter alia,
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`injunctive relief.
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`COUNT FIVE
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`COMMON LAW UNFAIR COMPETITION
`
`55.
`
`Plaintiffs repeat paragraphs 1 through 54 as if fully set forth herein.
`
`56.
`
`This count arises under the common law of unfair competition of the State of New Jersey.
`
`57.
`
`Ferrero S.p.A. has common Law and federal trademarl< rights in its ROCHER Marks,
`
`which are uniquely associated with Ferrero as the source of goods offered in connection with the
`
`ROCHER Marks.
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`58. Defendants’ use of the ROSHEN Marks in commerce in connection with the advertising,
`
`promotion, distribution and/or sale of the ROSHEN Goods is likely to cause confusion with the
`
`ROCHER l\/Iarlis or mislead consumers to purchase Defendants’ products under the impression that
`
`they are purchasing products produced by Ptaintiffs.
`
`59.
`
`Ferrero has been and/or will likeiy be, damaged by Defendants’ trademark iiifringement
`
`and acts of unfair competition in an amount to be determined at trial.
`
`60. Defendants’ acts of unfair competition have caused, and will continue to cause,
`
`irreparable harm to Ferrero and the goodwill associated with the ROCHER Marks, for which
`
`Ferrero has no adequate remedy at law. Thus, Ferrero is entitled to, inter alia, injunctive relief.
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`COUNT SIX
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`CANCELLATION OF U.S. REGISTRATION FOR ROSHEN RIBBON MARK
`
`61.
`
`Plaintiffs repeat paragraphs 1 through 60 as if fuliy set forth herein.
`
`62. Defendant DPKK Roshen owns U.S. T1‘3.Ci611’18.1”i{ Registration No. 3,838,t23 for the
`
`ROSHEN Ribbon Mark (“Roshen Ribbon Registration”). The ROS}-{EN Ribbon Registration is
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`less than five (5) years old.
`
`63.
`
`The ROSHEN Ribbon Registration is iikely to cause confusion with the ROCHER Marks.
`
`64.
`
`Ferrero has used the ROCHER Marks continnousiy in commerce since as early as 198i.
`
`65.
`
`Pursuant to, 15 U.S.C. § 11 E9, Ferrero requests that the ROSE--{EN Ribbon Registration be
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`cancelled.
`
`66.
`
`Ferrero witl be damaged in the absence of such cancellation.
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`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiffs respectfuily requests that this Court:
`
`1. Enter a judgment against Defendants on all counts.
`
`2. Prelirninarily and permanently enjoin Defendants from directiy or indirectly engaging in
`
`any further trademark infringement or unfair competition against Ferrero or aiding, abetting,
`
`encouraging, or inducing another to do any of the acts herein enjoined.
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`3. Require Roshen, its officers, directors, agents, servants, employees, attorneys, successors
`
`and assigns, and ali person acting for or in active concert or participate with them, be required to
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`deliver up for destruction any and all products, literature, forms, promotional materials, prints,
`
`advertising matter, circulars, stationery, labels, tags, Wrappers, packaging, places stencils, signs
`
`and other materials used in the preparation thereof, bearing the ROSHEN Marks or any
`
`trademarks confusingly similar thereto.
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`4. Cancel U.