Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA604036
`ESTTA Tracking number:
`05/13/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91213236
`Defendant
`EJMV Investments, LLC
`Plaintiff
`Diageo North America, Inc.
`No
`
`Proceeding.
`Applicant
`
`Other Party
`
`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, EJMV In-
`vestments, LLC hereby requests suspension of this proceeding pending a final determination of the civil ac-
`tion. Trademark Rule 2.117.
`EJMV Investments, LLC has secured the express consent of all other parties to this proceeding for the sus-
`pension and resetting of dates requested herein.
`EJMV Investments, LLC has provided an e-mail address herewith for itself and for the opposing party so that
`any order on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Facsimile or email (by agreement only) on this date.
`Respectfully submitted,
`/William D. Raman/
`William D. Raman
`trademarks@fleckman.com, raman@fleckman.com, klbynum@fleckman.com
`asiegartel@proskauer.com, borourke@proskauer.com, brattner@proskauer.com,
`evan.gourvitz@diageo.com, trademarks@diageo.com, gina.vendittelli@diageo.com
`05/13/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TRADEMARK
`
`In the matter of Application Serial No. 85/841,343
`Mark: WASHINGTON CROWN CLUB
`
`DIAGEO NORTH AMERICA, INC.,
`
`Opposer,
`
`v.
`
`EJMV INVESTMENTS, LLC,
`
`Applicant.
`
`Opposition No. 91213236
`
`CONSENTED MOTION TO SUSPEND FOR CIVIL ACTION
`
`Applicant EJMV Investments, LLC (“Applicant”), with the consent of Diageo North
`
`America, Inc. (“Opposer”) moves for suspension of these proceedings pursuant to 37 C.F.R.
`
`§2.1 l7(a).
`
`On March 26, 2013, Opposer filed a lawsuit in the Southern District of Texas against
`
`Applicant for claims including trademark infringement, trademark dilution, and unfair competition
`
`arising out of Applicant’s use of its CROWN CLUB formatives throughout the United States (“the
`
`Lawsuit”). In support of this motion, Applicant submits as Exhibit A a copy of Opposer’s
`
`Complaint, Case No. 4: 13-cv-00856 in the Southern District of Texas, and further states as follows:
`
`I.
`
`Nature of Opposition and Pending Civil Action
`
`Opposer is the plaintiff in the Lawsuit. It filed its Notice of Opposition to Applicant’s
`
`application to register the WASHINGTON CROWN CLUB mark for whisky on October 30, 2013.
`
`The basis for its opposition, among other things, is that Applicant’s WASHINGTON CROWN
`
`CLUB mark is so similar to its CROWN ROYAL mark “as to be likely, when used on or in
`
`

`
`connection with the goods identified in the Application, to cause confusion, or to cause mistake,
`
`or to deceive, with the consequent injury to Opposer and to the public.” See Notice of Opposition
`
`at 1] 15. Opposer also argues that granting the registration sought by Applicant would dilute the
`
`distinctive qualities of its mark.
`
`The Lawsuit was filed in March 2013.
`
`In the Lawsuit, Opposer claims that Applicant’s
`
`CROWN CLUB formatives, e. g. WASHINGTON CROWN CLUB, violate its rights in its
`
`CROWN ROYAL mark. The Complaint describes Applicant’s CROWN CLUB marks as
`
`“imitative” of the CROWN ROYAL mark. According to Opposer, Applicant’s use of “CROWN”
`
`is likely to cause confusion among consumers as to the CROWN CLUB products’ affiliation with,
`
`sponsorship by, approval of, or association with CROWN ROYAL. See Exhibit A at pp. A12-16,
`
`e.g., 111] 30, 32-36.
`
`In the Lawsuit, Opposer seeks, among other things, a permanent injunction barring
`
`Applicant from use of the “CROWN-formatives” and recall of all products bearing those marks.
`
`Opposer also has asked the court to bar Applicant from filing any future trademark application for
`
`marks that incorporate the word “CROWN” in connection with whisky and that all of Applicant’s
`
`registrations for marks containing the word “CROWN” be cancelled. See Id. at pp. A27-31.
`
`II.
`
`This Proceeding Should Be Suspended
`Pending the Outcome of the Lawsuit
`
`Whenever a party to a pending proceeding has become engaged in a civil action that “may
`
`have a bearing on” the proceedings pending before the Trademark Trial and Appeal Board, the
`
`proceedings before the Board “may be suspended until termination of the civil action.” 37 C.F.R.
`
`§ 2.117. Here, the parties to the Lawsuit are also parties to this Opposition proceeding.
`
`

`
`The Lawsuit involves many of the same issues that will be considered in this Opposition
`
`and will inevitably have a bearing on these proceedings. Applicant therefore respectfully requests
`
`that this Consented Motion to Suspend for Civil Action be in all respects granted and that these
`
`proceedings be suspended pending determination of the civil action discussed herein.
`
`Dated: May 13, 2014
`
`Respectfully submitted,
`
`
`
`
`William .R
`
`n
`
`FLECKMAN MCGLYNN,PLLC
`P. O. Box 685108
`
`Austin, TX 78768-5108
`
`ATTORNEY FOR APPLICANT
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 1 of 32
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`CIVIL ACTION NO. _____________
`
`§§§§§§§§§§§
`
`DIAGEO NORTH AMERICA, INC.,
`
`Plaintiff,
`
`
`
`v.
`
`MEXCOR, INC. AND
`EJMV INVESTMENTS, LLC,
`
`
`
`Defendants.
`
`COMPLAINT
`
`
`
`Plaintiff Diageo North America, Inc. (“Diageo” or “Plaintiff”), by its attorneys, alleges as
`
`follows for its complaint against defendants Mexcor, Inc. (“Mexcor”) and EJMV Investments,
`
`LLC (“EJMV,” collectively, “Defendants”):
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action to recover for Defendant’s willful acts of trademark
`
`infringement, trade dress infringement, unfair competition, and false designation of origin under
`
`15 U.S.C. §§ 1114 and 1125(a); trademark dilution by blurring and tarnishment under 15 U.S.C.
`
`§ 1125(c); trademark dilution and injury to business reputation under Section 16.103 of the
`
`Texas Business and Commerce Code; and trademark infringement and unfair competition under
`
`Texas common law.
`
`2.
`
`Plaintiff manufactures, advertises, distributes, and sells CROWN ROYAL®
`
`Canadian whisky, a world-famous alcoholic beverage that is packaged in an iconic, distinctive,
`
`and famous “purple bag” (the “Purple Bag” mark). The Purple Bag is velvety and has
`
`
`
`1
`
`A1
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 2 of 32
`
`drawstrings around the top. Plaintiff’s CROWN ROYAL® word mark and Purple Bag mark are
`
`the subject of incontestable federal trademark registrations, and are extremely strong and
`
`inherently distinctive. Through CROWN ROYAL® whisky’s enormous commercial success,
`
`substantial advertising and sales, and through tremendous consumer satisfaction, the CROWN
`
`ROYAL® mark and Purple Bag mark have become famous and, accordingly, are exceedingly
`
`strong marks entitled to a wide scope of protection. Photographs of the CROWN ROYAL®
`
`product and its Purple Bag packaging are attached at Exhibit 1. In addition to the core CROWN
`
`ROYAL® Canadian whisky product, Diageo has developed and sells several CROWN ROYAL®
`
`line extensions under the marks CROWN ROYAL® MAPLE, CROWN ROYAL BLACK®,
`
`CROWN ROYAL RESERVE®, and CROWN ROYAL XR®; these products are packaged in
`
`CROWN ROYAL® bags in the colors brown, black, gold, and blue, respectively. Thus, while
`
`the Purple Bag mark is famous and is immediately identified with CROWN ROYAL® whisky,
`
`consumers have come to understand that CROWN ROYAL® products come in bags in other
`
`colors as well. Photographs of the CROWN ROYAL® line extensions and the corresponding
`
`bags are attached at Exhibit 2.
`
`3.
`
`This action arises because Defendants have deliberately and in bad faith
`
`embarked on a nationwide scheme to trade on the enormous popularity, goodwill, and consumer
`
`recognition of Plaintiff’s CROWN ROYAL® brand and the CROWN ROYAL® and Purple Bag
`
`trademarks for their own commercial benefit. On information and belief, Defendants EJMV and
`
`Mexcor are acting in concert to accomplish this scheme. Defendants have begun unfairly
`
`marketing, distributing, and selling directly-competing Canadian whisky products under a wealth
`
`of infringing and dilutive brand names dominated by the term “CROWN,” including Texas
`
`CROWN Club, Florida CROWN Club, Tennessee CROWN Club, Arkansas CROWN Club, and
`
`
`
`2
`
`A2
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 3 of 32
`
`South Carolina CROWN Club. Defendants were not content to use imitative names alone. They
`
`are advertising, promoting, and selling their infringing products in imitative bags that not only
`
`violate Diageo’s rights in the Purple Bag mark, but unfairly imitate the overall look and feel of
`
`Diageo’s CROWN ROYAL® product line. When exposed to Defendants’ whiskies in the
`
`marketplace, consumers are likely to mistakenly believe that Defendants’ whiskies are affiliated
`
`with, sponsored by, approved by, or associated with CROWN ROYAL® whisky, or that
`
`Defendants’ various whiskies are regional variations or novelty line extensions of CROWN
`
`ROYAL® whisky. Like Diageo, Defendants have selected whisky brand names that emphasize
`
`“CROWN,” a distinctive and famous term that is closely identified with CROWN ROYAL®
`
`whisky. Indeed, “CROWN” is in many cases the most prominent word on Defendants’
`
`infringing products. Moreover, Defendants regularly depict the term CROWN in a gold script
`
`font confusingly similar to the distinctive gold script used by Plaintiff to display its CROWN
`
`ROYAL® trademark. Photographs of the Texas CROWN Club, Florida CROWN Club,
`
`Tennessee CROWN Club, Arkansas CROWN Club, and South Carolina CROWN Club products
`
`and their accompanying infringing bags are attached at Exhibit 3.
`
`4.
`
`Defendants’ packaging and branding exacerbate the likelihood of consumer
`
`confusion. Specifically, Defendants are packaging their whisky products in soft cloth bags or
`
`sacks with drawstrings at the top that emulate Plaintiff’s Purple Bag packaging and registered
`
`trademark as well as the other bags Diageo uses for CROWN ROYAL® line extensions. While
`
`CROWN ROYAL® whisky is sold in a famous Purple Bag and the various CROWN ROYAL®
`
`line extensions are sold in black, brown, blue, and gold bags, Defendants’ whiskies are sold in
`
`bags designed to evoke both CROWN ROYAL® and the geographic region in which each of
`
`Defendants’ infringing products is sold. For example, Texas CROWN Club whisky is sold in a
`
`
`
`3
`
`A3
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 4 of 32
`
`bag that resembles the Texas state flag; South Carolina CROWN Club whisky is sold in a navy
`
`blue bag that resembles the South Carolina state flag; Tennessee CROWN Club whisky is sold in
`
`a bag that resembles the Tennessee state flag; and Arkansas CROWN CLUB whisky is sold in a
`
`bag that resembles the Arkansas state flag. The bag intended for Southern CROWN Club
`
`whisky is grey and incorporates design elements reminiscent of the Confederate flag. The bag
`
`intended for Las Vegas CROWN Club is red and displays cards and gambling chips. The
`
`Florida CROWN Club whisky is sold in a black bag having a depiction of an alligator in gold.
`
`Defendants’ confusingly similar and dilutive bags immediately evoke Plaintiff’s famous Purple
`
`Bag mark and other CROWN ROYAL® bags causing consumers to believe that Defendants’
`
`products originate with or are regional variations or line extensions from the maker of CROWN
`
`ROYAL® whisky.
`
`5.
`
`The parties’ respective Canadian whisky products are being sold in the same retail
`
`outlets, in many cases side-by-side and even intermingled. The overall effect of Defendants’
`
`activities creates the mistaken impression by consumers that CROWN ROYAL® whisky is now
`
`available in novelty packaging that celebrates a particular state or geographic region.
`
`6.
`
`Diageo is already aware of actual confusion occurring in the marketplace as a
`
`result of Defendants’ infringing products.
`
`7.
`
`Defendants’ activities are irreparably injuring Diageo, and will continue to do so
`
`unless and until halted by this Court. Diageo seeks immediate and permanent injunctive relief,
`
`statutory, compensatory, and punitive damages, defendant’s profits, Diageo’s reasonable
`
`attorneys’ fees and expenses, a product recall, and corrective advertising sufficient to address
`
`Defendants’ wrongdoing. Diageo also seeks cancellation of Mexcor’s infringing registrations
`
`under 15 U.S.C. § 1064, and an order pursuant to 15 U.S.C. § 1119 that Defendants’ infringing
`
`
`
`4
`
`A4
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 5 of 32
`
`U.S. trademark registrations and pending applications that incorporate the “Crown” term and/or
`
`Defendants’ unlawful “bag” designs be cancelled, withdrawn, and denied registration (some of
`
`these registrations and applications are owned by Mexcor, and some of are owned by EJMV).
`
`PARTIES
`
`8.
`
`Plaintiff Diageo is a Connecticut corporation with a business address of 801 Main
`
`Avenue, Norwalk, Connecticut 06851.
`
`9.
`
`On information and belief, Defendant Mexcor is a Texas corporation with a
`
`business address of 8950 Railwood Drive, Houston, Texas 77078.
`
`10.
`
`On information and belief, Defendant EJMV is a Texas corporation with a
`
`business address of 1401 McKinney Street, Suite 1700, Houston, Texas 77010. On information
`
`and belief, Defendants Mexcor and EJMV share ownership and common interests. On
`
`information and belief, a single individual, Eduardo Morales, is Mexcor’s President and the sole
`
`member of EJMV.
`
`JURISDICTION AND VENUE
`
`11.
`
`This Court has jurisdiction over the subject matter of this action under Section 39
`
`of the Lanham Act (15 U.S.C. § 1121) and 28 U.S.C. §§ 1331 and 1338. This Court has
`
`supplemental jurisdiction over Diageo’s related state statutory and common law claims pursuant
`
`to 28 U.S.C. §§ 1338 and 1367.
`
`12.
`
`This Court has personal jurisdiction over Defendant Mexcor and Defendant
`
`EJMV because on information and belief, (a) both Defendants reside in Texas and this judicial
`
`district; (b) Mexcor’s and EJMV’s principal places of business are located within the Southern
`
`District of Texas; (c) at least one of Defendants’ infringing whiskey products is available for
`
`purchase in the State of Texas and this judicial district; (d) Defendants have committed tortious
`
`
`
`5
`
`A5
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 6 of 32
`
`acts in the State of Texas and this judicial district, and Plaintiff’s claims arise out of such acts;
`
`(e) Defendants regularly conduct business in the state of Texas and this judicial district; and
`
`(f) on information and belief, Defendants have otherwise made or established contacts in the
`
`State of Texas and this judicial district sufficient to permit the exercise of personal jurisdiction.
`
`13.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and 1400.
`
`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`A.
`
`Diageo and CROWN ROYAL® Whisky – Marketplace Background
`
`14.
`
`CROWN ROYAL® Canadian whisky has been marketed and sold in the United
`
`States since at least as early as 1954, and the product is currently one of the most widely
`
`consumed whiskies in the United States. CROWN ROYAL® whisky is sold throughout the
`
`United States and its annual U.S. sales are currently in the hundreds of millions of dollars.
`
`15.
`
`In addition to CROWN ROYAL® whisky, Diageo also distributes CROWN
`
`ROYAL merchandise throughout the United States, including t-shirts, jackets, caps, and other
`
`apparel. Both the CROWN ROYAL® and Purple Bag marks have also been used in connection
`
`with sponsorships of sporting events, including rodeo, football, and NASCAR. Such uses of the
`
`CROWN ROYAL® and Purple Bag marks in connection with goods and services beyond whisky
`
`further strengthen the CROWN ROYAL® brand and broaden the scope of protection afforded the
`
`CROWN ROYAL® and Purple Bag marks.
`
`16.
`
`CROWN ROYAL® whisky is sold throughout the United States in a wide variety
`
`of trade channels, including bars, clubs, restaurants, liquor stores, mass retail outlets (e.g.,
`
`Wal-Mart and Target), club retail outlets (e.g., Sam’s Club and Costco), grocery stores, and other
`
`retail locations, as well as at sporting events, concerts, and other entertainment events. Diageo
`
`
`
`6
`
`A6
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 7 of 32
`
`exercises great care, skill, and diligence in connection with its CROWN ROYAL® whisky and
`
`other products and maintains exacting standards of the highest quality.
`
`17.
`
`CROWN ROYAL® whisky has been extensively advertised and promoted in
`
`various media in the United States, including in television commercials and print publications.
`
`Diageo also maintains an extensive internet presence for CROWN ROYAL® whisky, and in
`
`addition to the website located at <crownroyal.com>, Diageo prominently uses Twitter,
`
`YouTube, Facebook, and other social media resources to promote the CROWN ROYAL® brand.
`
`Diageo’s advertising and promotional expenditures on behalf of CROWN ROYAL® whisky are
`
`substantial, and for the three-year period that ended on December 31, 2012 were in excess of
`
`$100 million.
`
`18.
`
`In addition to the CROWN ROYAL® mark, advertising and promotional
`
`materials for CROWN ROYAL® whisky commonly emphasize and prominently depict the
`
`Purple Bag that is used for the whisky’s packaging, and that has been a focal point of CROWN
`
`ROYAL® advertising and promotional activities. Diageo’s official brand history highlights the
`
`role the Purple Bag has played – along with the particular connection of CROWN ROYAL® to
`
`Texas:
`
`The History of the Purple Bag
`
`To celebrate the maiden visit to Canada of King George VI and
`Queen Elizabeth of England, Seagram’s Chairman Samuel
`Bronfman developed a unique whisky of refined smoothness for
`the occasion. But he needed something to present this crown jewel
`in. Something regal. Something luxurious. It was decided this
`special whisky would be housed in a velvet bag of purple -- since
`ancient times the color reserved for royalty -- with drawstrings of
`gold. From this grand beginning, the fancy purple bag and its
`perfectly aged contents stayed under wraps in Canada. But as fate
`would have it with something this exceptional, word was bound to
`travel. And travel it did. When enterprising Canadians headed to
`seek their fortune in the oil rich lands of Texas in the 1960s, they
`
`
`
`7
`
`A7
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 8 of 32
`
`packed their trusty purple bags for the journey. In no time at all,
`tales of Crown Royal’s smoothness spread like a fine whiskey
`across the land. Today, fifty million purple velvet bags are
`stitched for Crown Royal every year. Each one remains above all a
`symbol of excellence to those who savor Crown Royal. It’s a sign
`that every glass will taste exactly like the first. A guarantee that
`you can tell a whisky by its cover. And luxurious proof that good
`things come in velvety packages.
`See http://www.crownroyal.com/ society-of-the-crown-the-bag.
`
`19.
`
`The Purple Bag mark has been featured in CROWN ROYAL® advertising
`
`campaigns since at least 1964; for example, the Purple Bag mark is currently widely included in
`
`CROWN ROYAL® displays at “off-premise” retail locations (including liquor stores, grocery
`
`stores, and mass retail outlets). Diageo regularly offers custom Purple Bag embroidery at off-
`
`premise events and over the internet, enabling consumers to have their Purple Bags embroidered
`
`with their names, initials, and other personal indicia.
`
`20.
`
`Beyond Diageo’s advertising, CROWN ROYAL® whisky has also historically
`
`received an enormous amount of third-party media attention, and such media attention has
`
`focused not only on the CROWN ROYAL® mark, but the Purple Bag packaging as well. This
`
`media attention has helped make CROWN ROYAL® whisky and the Purple Bag memorable and
`
`distinctive in the minds of the consuming public.
`
`21.
`
`Diageo uses velvety bags in connection with the CROWN ROYAL® line
`
`extensions. CROWN ROYAL® Maple comes in a brown bag; CROWN ROYAL BLACK® in a
`
`black bag; CROWN ROYAL XR® in a blue bag; and CROWN ROYAL RESERVE in a gold
`
`bag. Consumers recognize these bags in their own right, and also identify them strongly with the
`
`CROWN ROYAL® line of products. Many collect limited-edition or line-extension bags to
`
`complement their Purple Bags.
`
`
`
`8
`
`A8
`
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`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 9 of 32
`
`B.
`
`Diageo’s Distinctive and Famous CROWN ROYAL and Purple Bag Trademarks
`
`22.
`
`The CROWN ROYAL® and Purple Bag trademarks are inherently distinctive
`
`marks.
`
`23.
`
`Diageo is the owner of many federal trademark registrations for the CROWN
`
`ROYAL® trademark, including the following (arranged chronologically by first use date; in this
`
`Complaint, these trademarks are encompassed by the phrase “CROWN ROYAL® trademark”):
`
`Mark
`
`First Use Date Reg. No.
`
`Reg. Date
`
`Covered Goods
`
`CROWN ROYAL
`(Stylized)®
`CROWN ROYAL and
`Design®
`CROWN ROYAL®
`
`Jan. 11, 1954
`
`635,313
`
`Oct. 2, 1956
`
`Alcoholic liquors-namely,
`whiskey
`
`Jan. 11, 1954
`
`2,094,877 Sept. 9, 1997 Whisky
`
`1964
`
`2,851,028
`
`June 8, 2004 Alcoholic beverages namely
`whiskey
`
`CROWN ROYAL and
`Design®
`CROWN ROYAL®
`
`1964
`
`1989
`
`CROWN ROYAL
`(Stylized)®
`
`1989
`
`CR CROWN ROYAL
`SPECIAL RESERVE
`and Design®
`
`Oct. 1, 1991
`
`3,020,295 Nov. 29, 2005 Alcoholic beverages, namely,
`distilled spirits
`
`3,096,261 May 23, 2006 Articles of clothing, namely,
`jackets, caps, pullovers, shirts,
`t-shirts
`
`3,234,379 Apr. 24, 2007 Articles of clothing, namely,
`jackets, wind resistant jackets,
`leather jackets, boxer , shirts,
`golf shirts, polo shirts, knit
`shirts, tank tops, pants,
`sleepwear, sweatshirts, t-shirts,
`caps, baseball caps, visors,
`bandanas, hats, aprons,
`footwear, namely, sandals and
`flip-flops
`1,724,742 Oct. 13, 1992 Whisky
`
`
`
`9
`
`A9
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 10 of 32
`
`CROWN ROYAL®
`
`Feb. 2005
`
`3,703,562 Oct. 27, 2009 Articles of clothing, namely,
`sweatshirts and hats; Financial
`sponsorship of sporting and
`cultural events
`
`CROWN ROYAL
`CHAMPION-SHIP
`RACING®
`CROWN ROYAL
`XR®
`CROWN ROYAL
`EXTRA XR RARE
`and Design®
`CR CROWN ROYAL
`SPECIAL RESERVE
`and Design®
`CROWN ROYAL
`CASK NO. 16
`
`CROWN ROYAL
`RESERVE®
`CROWN ROYAL
`RESERVE CROWN
`ROYAL RESERVE
`CRR and Design®
`CROWN ROYAL
`BLACK®
`
`Feb. 2005
`
`3,234,495 Apr. 24, 2007 Financial sponsorship of
`sporting and cultural events
`
`June 30, 2006 3,291,893 Sept. 11, 2007 Alcoholic beverages, namely,
`whisky
`
`June 30, 2006 3,314,727 Oct. 16, 2007 Alcoholic beverages, namely,
`whisky
`
`Sept. 2006
`
`3,332,468 Nov. 6, 2007 Alcoholic beverages, namely,
`whisky
`
`Sept. 30, 2007 3,506,079 Sept. 23, 2008 Alcoholic beverages, namely,
`whisky
`
`Oct. 2008
`
`3,596,123 Mar. 24, 2009 Distilled spirits
`
`Oct. 2008
`
`3,596,124 Mar. 24, 2009 Alcoholic beverages, namely,
`whisky
`
`Mar. 1, 2010
`
`4,023,275 Sept. 6, 2011 Alcoholic beverages except
`beers
`
`Each of these trademark registrations is valid and subsisting, and several of these trademark
`
`registrations have become incontestable pursuant to 15 U.S.C. §1065. Documentation reflecting
`
`the trademark registrations and incontestability status are attached as Exhibit 4.
`
`24.
`
`In addition to these trademark registrations for the CROWN ROYAL® mark,
`
`Diageo also owns a federal trademark registration for the design of the purple, gold-trimmed
`
`drawstring pouch in which CROWN ROYAL® whisky is sold (referred to in this Complaint as
`
`the Purple Bag mark):
`
`
`
`10
`
`A10
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 11 of 32
`
`Mark
`
`First Use Date Reg. No.
`
`Reg. Date
`
`Covered Goods
`
`Jan. 1, 1964
`
`3,137,914 Sept. 5, 2006
`
`Alcoholic beverages, namely,
`spirits
`
`This Purple Bag trademark registration is valid and subsisting and has become incontestable
`
`pursuant to 15 U.S.C. §1065. Documentation reflecting this trademark registration and
`
`incontestability status is attached as Exhibit 5.
`
`25.
`
`In addition to its extensive rights based on its CROWN ROYAL® and Purple Bag
`
`trademark registrations, Diageo has extensive federal and state common law rights in the
`
`CROWN ROYAL® and Purple Bag trademarks based on Diageo’s extensive advertising,
`
`promotion, and sales of CROWN ROYAL® whisky and other products using these trademarks.
`
`26.
`
`Furthermore, when used in conjunction with each other, the CROWN ROYAL®
`
`product, bottle shape, product name, and Purple Bag packaging create a unique, distinctive,
`
`widely-recognized, famous, and non-functional trade dress (the “CROWN ROYAL® Trade
`
`Dress”).
`
`27.
`
`In sum, the CROWN ROYAL® trademark, Purple Bag trademark, and CROWN
`
`ROYAL® Trade Dress are strong, famous, inherently distinctive, have achieved secondary
`
`meaning, and have come to be exclusively identified with Diageo (or the maker of CROWN
`
`ROYAL® whisky). As such, the CROWN ROYAL® and Purple Bag marks have by any
`
`measure become famous within the meaning of 15 U.S.C. § 1125(c) and Tex. Bus. & Com. Code
`
`Ann. § 16.103(b), and are entitled to the widest scope of protection under federal and state
`
`trademark infringement, unfair competition, and anti-dilution laws.
`
`
`
`11
`
`A11
`
`

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`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 12 of 32
`
`C.
`
`Defendants’ Unauthorized, Infringing, Dilutive, and Unfairly Competitive Activities
`
`28.
`
` Defendants are well aware of the popularity and fame of Diageo’s CROWN
`
`ROYAL® whisky, the CROWN ROYAL® trademark, the Purple Bag trademark, the CROWN
`
`ROYAL® Trade Dress, and the goodwill represented and symbolized by each.
`
`29.
`
`Nevertheless, with full awareness of that popularity, fame, and goodwill,
`
`Defendants have undertaken unfairly and in bad faith to capitalize on the popularity of and
`
`demand for CROWN ROYAL® whisky and the marks, trade dress, and indicia associated with
`
`that product, and to divert Plaintiff’s sales to Defendants through a variety of unlawful activities
`
`that infringe and dilute Diageo’s CROWN ROYAL® trademark, Purple Bag trademark, and
`
`CROWN ROYAL® Trade Dress.
`
`30.
`
`Defendants are prominently using several trademarks, each of which standing
`
`alone infringes and dilutes Diageo’s famous marks. For example, Defendants are currently
`
`distributing and marketing competing Canadian whiskies under the names Texas CROWN Club,
`
`Florida CROWN Club, Tennessee CROWN Club, Arkansas CROWN Club, and South Carolina
`
`CROWN Club, and possibly other brands as well. Each of these brand names emphasizes the
`
`distinctive and famous “Crown” term that is closely identified with CROWN ROYAL® whisky –
`
`and is substantially and confusingly similar to the CROWN ROYAL® trademark. Accordingly,
`
`the use of each of Defendants’ marks standing alone in connection with the advertising and sale
`
`of Defendants’ Canadian whisky constitutes trademark infringement and dilution. The consumer
`
`confusion and dilution created by Defendants’ unlawful use is exacerbated by the facts that
`
`Defendants regularly give the word “CROWN” much greater prominence as compared to any
`
`other word or mark on Defendants’ bottles, that in most cases they depict the word “CROWN” in
`
`
`
`12
`
`A12
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 13 of 32
`
`a gold script font confusingly similar to the gold script font used by Plaintiff to display its
`
`CROWN ROYAL® trademark, and that in some cases Defendants entirely omit the word CLUB.
`
`31.
`
`Defendants’ infringing whisky products are already being sold and will likely
`
`continue to be sold in the same trade channels and in immediate proximity to Diageo’s CROWN
`
`ROYAL® whisky. For example, the following photographs show Diageo’s CROWN ROYAL®
`
`whisky being sold right next to – and even in the same displays as – Defendants’ SOUTH
`
`CAROLINA CROWN CLUB whisky (described in a shelf talker as “NEW S.C. CROWN”):
`
`
`
`
`
`Defendants’ willful and wanton intent is evidenced by the fact that Defendants themselves
`
`posted the following photograph on their SOUTH CAROLINA CROWN Facebook page (which
`
`does not use the word “CLUB” in its title) showing their South Carolina CROWN Club whisky
`
`
`
`13
`
`A13
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 14 of 32
`
`intermixed with CROWN ROYAL® whisky, with the description “Look at that great stack of
`
`South Carolina Crown Whisky”:
`
`32.
`
`To support their unlawful products, Defendants have embarked on an extremely
`
`broad trademark filing scheme to register marks that include “CROWN” as their dominant
`
`component. For example, according to United States Patent and Trademark Office records,
`
`Defendant Mexcor owns the following four federal trademark registrations (arranged by
`
`registration number):
`
`
`
`
`
`14
`
`A14
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 15 of 32
`
`Mark
`
`TEXAS CROWN
`CLUB
`
`TEXAS CROWN
`CLUB and Design
`
`TEXAS CROWN
`CLUB and Design
`
`SOUTHERN
`CROWN CLUB
`
`Reg. No.
`
`3,738,906
`
`3,810,851
`
`Covered Goods
`Reg. Date
`Jan. 19, 2010 Whiskey
`Whiskey
`June 29, 2010 Whiskey
`
`3,810,852
`
`June 29, 2010 Whiskey
`
`4,269,884
`
`Jan. 1, 2013 Whiskey
`
`Owner
`Mexcor
`
`Mexcor
`
`Mexcor
`
`Mexcor
`
`33.
`
`Defendants have also filed at least 21 federal trademark applications for word
`
`marks (i.e., phrases) that include “CROWN” as their dominant component on an “intent-to-use”
`
`basis. These applications, many of which EJMV has filed very recently since the beginning of
`
`February 2013, are the following (arranged by serial/application number; on information and
`
`belief, all of these applications remain pending as of the date of this Complaint):
`
`Mark
`
`Filing Date
`
`Ser. No.
`
`Covered Goods
`
`Owner
`
`July 25, 2011
`
`85-379607 Whiskey
`
`Mexcor
`
`Mar. 5, 2012
`
`85-560605 Whiskey
`
`Mar. 5, 2012
`
`85-560550 Whiskey
`
`Mar. 5, 2012
`
`85-560571 Whiskey
`
`Mexcor
`
`Mexcor
`
`Mexcor
`
`Apr. 17, 2012
`
`85-600172 Whiskey
`
`Mexcor
`
`TENNESSEE
`CROWN
`
`CALIFORNIA
`CROWN CLUB
`
`FLORIDA
`CROWN CLUB
`
`GEORGIA
`CROWN CLUB
`
`SOUTH
`CAROLINA
`CROWN CLUB
`
`AMERICAN
`CROWN CLUB
`
`Sept. 7, 2012
`
`85-723577 Whisky
`
`CROWN CLUB
`
`Sept. 13, 2012
`
`85-728849 Vodka; whisky
`
`COLORADO
`CROWN CLUB
`
`LAS VEGAS
`CROWN CLUB
`
`Sept. 21, 2012
`
`85-734894 Whisky
`
`Oct. 19, 2012
`
`85-758727
`
`Tequila; vodka;
`whisky
`
`Mexcor
`
`Mexcor
`
`Mexcor
`
`Mexcor
`
`
`
`15
`
`A15
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 16 of 32
`
`DAKOTA
`CROWN CLUB
`
`WASHINGTON
`CROWN CLUB
`
`NEW ENGLAND
`CROWN CLUB
`
`NEW YORK
`CROWN CLUB
`
`VIRGINIA
`CROWN CLUB
`
`MARYLAND
`CROWN CLUB
`
`BIG APPLE
`CROWN CLUB
`
`NEW ORLEANS
`CROWN CLUB
`
`AMERICAN
`CROWN CLUB
`
`LOUISIANA
`CROWN CLUB
`
`JERSEY CROWN
`CLUB
`
`CHICAGO
`CROWN CLUB
`
`Feb. 5, 2013
`
`85-841350 Whisky
`
`Feb. 5, 2013
`
`85-841343 Whisky
`
`Feb. 5, 2013
`
`85-841334 Whisky
`
`Feb. 5, 2013
`
`85-841340 Whisky
`
`Feb. 5, 2013
`
`85-841342 Whisky
`
`Feb. 5, 2013
`
`85-841333 Whisky
`
`Feb. 5, 2013
`
`85-841346 Whisky
`
`Feb. 5, 2013
`
`85-841338 Whisky
`
`Feb. 14, 2013
`
`85-850555 Whisky
`
`Feb. 18, 2013
`
`85-852984 Whisky
`
`Feb. 18, 2013
`
`85-852971 Whisky
`
`Feb. 18, 2013
`
`85-852970 Whisky
`
`EJMV
`
`EJMV
`
`EJMV
`
`EJMV
`
`EJMV
`
`EJMV
`
`EJMV
`
`EJMV
`
`EJMV
`
`EJMV
`
`EJMV
`
`EJMV
`
`34.
`
`Each of Defendants’ marks listed above standing alone infringes and dilutes (or
`
`would infringe or dilute) the CROWN ROYAL® trademark if it is or were used on whisky.
`
`Defendants already are using several of these marks in the marketplace, including the TEXAS
`
`CROWN CLUB, FLORIDA CROWN CLUB, TENNESSEE CROWN CLUB, ARKANSAS
`
`CROWN CLUB, and SOUTH CAROLINA CROWN CLUB marks.
`
`35.
`
`Defendants have also filed at least eleven federal trademark applications for
`
`marks that emphasize the word “CROWN” and include a cloth bag designed to incorporate a
`
`state flag or other symbol referencing a geographic location included in each of these marks.
`
`
`
`16
`
`A16
`
`

`
`Case 4:13-cv-00856 Document 1 Filed in TXSD on 03/26/13 Page 17 of 32
`
`These applications, many of which again Defendant EJMV has filed very recently since the
`
`beginning of February 2013, are the following (arranged by s