Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA735186
`
`Filing date:
`
`03/22/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91215993
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Karma Champagne, Inc.
`
`GARY L EASTMAN
`EASTMAN & MCCARTNEY LLP
`401 WEST A STREET, SUITE 1785
`SAN DIEGO, CA 92101
`UNITED STATES
`gary@eastmanmccartney.com, docket@eastmanmccartney.com
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Motion to Suspend for Civil Action
`
`Gary L. Eastman
`
`gary@eastmanmccartney.com
`
`/**Gary L. Eastman**/
`
`03/22/2016
`
`Attachments
`
`Motion to Stay Proceedings.FINAL.pdf(433554 bytes )
`
`

`
`
`
`
`Gary L. Eastman, Esq. (CSB #182518)
`Matthew C. McCartney, Esq. (CSB #226687)
`EASTMAN & MCCARTNEY LLP
`401 West A Street, Suite 1785
`San Diego, CA 92101
`(619) 230-1144
`
`Attorneys for Applicant
`KARMA CHAMPAGNE, INC.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Opposition No.: 91215993
`
`Mark: KARMA CALIFORNIA BRUT
`Serial No.: 77876479
`
`APPLICANT’S MOTION TO STAY
`PROCEEDINGS PENDING
`OUTCOME OF PENDING CIVIL
`ACTION
`
`
`
`
`
`
`
`Applicant Karma Champagne, Inc. (“Applicant”), owner of U.S. Trademark
`
`Application for “KARMA CALIFORNIA BRUT,” Serial No. 77/876479, hereby
`
`moves the Trademark Trial and Appeals Board (“Board”) to suspend proceedings
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`pending the outcome of a pending civil action. Specifically, Opposer Karma
`
`Culture, LLC (“Opposer”) has instituted Case No. 6:16-cv-6183 titled Karma
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`Culture, LLC vs. Karma Champagne, Inc., United States District Court for the
`
`Western District of New York (“the Civil Action”). A copy of the Complaint is
`
`attached as Exhibit A.
`
`According to the Complaint, Opposer alleges ownership and validity of
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`United States Trademark Registration No. 4,063,528 for KARMA, and its First
`
`Cause of Action is for Trademark Infringement in Violation of Section 32 of the
`
`Applicant’s Motion to Stay Proceedings Pending Outcome of Civil Action
`
`Opp. No.: 91215993
`
`
`
`1
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`KARMA CULTURE, LLC,
`
`
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` Opposer,
`
`
`
` v.
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`KARMA CHAMPAGNE, INC.,
`
`
`
` Applicant.
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`Lanham Act, and seeks remedies including injunction relief prohibiting Applicant
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`from using Applicant’s KARMA CALIFORNIA BRUT mark, or any other mark
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`confusingly similar thereto.
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`In response to the filing of this Action, Applicant is preparing and will file
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`in due course an Answer denying all allegations of infringement in the Complaint
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`and alleging priority of use, and a Counterclaim challenging the validity of
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`Opposer’s mark, seeking cancellation of the mark under a variety of bases
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`including at least abandonment and fraud, and resolving the dispute surrounding
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`this Opposition, namely, the registrability of Applicant’s KARMA CALIFORNIA
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`BRUT mark.
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`
`
`ARGUMENT
`
`
`
`The Determination in Karma Culture, LLC vs. Karma Champagne, Inc.,
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`Will Have A Direct Bearing On the Issues Before The TTAB.
`
`
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`Where a party to a case pending before the Board is also involved in a civil
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`action that may have a bearing on the T.T.A.B. matter, the Board may suspend the
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`proceeding until the final determination of the civil action. 37 CFR § 2.117(a);
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`TBMP § 510.02(a). This is because “a decision by the United States District Court
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`would be binding on the United States Patent and Trademark Office whereas a
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`determination by the Patent Office as to the respondent’s right to retain its
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`registration would not be binding nor would res judicata automatically attach
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`based on a determination by the USPTO with respect to a subsequent or
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`contemporaneous proceeding before the federal district court.” Whopper-Burger,
`
`Inc. v. Burger King Corp., 171 U.S.P.Q. 805, 807 (T.T.A.B. 1971). A court’s
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`decision regarding the right to registration is binding on the T.T.A.B. The Seven-
`
`Up Cp. V. Bubble Up Co., 136 U.S.P.Q. 210, 214 (C.C.P.A. 1963); see also In re
`
`Applicant’s Motion to Stay Proceedings Pending Outcome of Civil Action
`
`Opp. No.: 91215993
`
`
`
`2
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`Alfred Dunhill Ltd., 224 U.S.P.Q. 501, 503 (T.T.A.B. 1984); J. Thomas
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`McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 32:94 (4th ed.
`
`2006) (hereinafter “McCarthy”).
`
`Opposer and Applicant are both parties to the Civil Action, the only known
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`parties named at the present time, with Applicant in the position of Defendant and
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`Opposer in the position of the Plaintiff. The Civil Action is a live and ongoing
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`litigation which at the present time is currently pending before the Western
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`District Court of New York. At the time of the submission of the present Motion,
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`the Plaintiff has filed the Complaint and Civil Cover Sheet, and the Court has
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`issued a Summons. Opposer has informally served its Summons upon counsel for
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`Applicant.
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`Generally speaking, a final determination by a District Court in a trademark
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`infringement litigation can take a matter of months and in some cases, a matter of
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`years. Both the present proceeding and the matter before the District Court are
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`exhaustive of state and federal monetary resources as well as the man-hours of
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`government employees involved in both proceedings. In order to minimize the
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`time, money and resources expended by both parties as well as the overseeing
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`governmental agencies, the most effective course of action for the Board at this
`
`time would be to suspend the present proceeding until such a time that the District
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`Court renders a final judgment or sends instructions for the Board to proceed in
`
`the present matter.
`
`With respect to similarities between and the overlapping nature of the
`
`present Opposition Proceeding and the trademark infringement suit currently
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`before the District Court, it is clear from an examination of the relevant
`
`documentation filed by Opposer in both the Opposition and Civil Action that the
`
`parties involved are identical and that the issues involved before the District Court
`
`involve the totality of issues currently at issue in the present Opposition
`
`Proceeding.
`
`Applicant’s Motion to Stay Proceedings Pending Outcome of Civil Action
`
`Opp. No.: 91215993
`
`
`
`3
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`As the cause of action presently before the District Court is for trademark
`
`infringement, the cause of action alleged by the Plaintiff in the Civil Action
`
`involves identical and nearly identical rules of law, allegations, and will be
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`adjudicated on the basis of a formal examination of the same or an even more
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`expansive set of relevant facts.
`
`The position of the parties in both disputes are similarly situated; in both the
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`Oppostiion and Civil Action, it is the Opposer seeking remedies as the Plaintiff.
`
`The same allegations are at issue in the two proceedings and the same relevant
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`facts will be cited by both parties to support their respective positions. Further, the
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`same Federal Trademark Law will be relied upon by the District Court and by the
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`Board in the respective proceedings as both assess the claims and evidence of both
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`parties and move to make a final determination and render a judgment.
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`Specifically, with both disputes centered on allegations that the other party has
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`infringed a party’s trademark rights, the ultimate determination in either matter
`
`would ultimately come down to the issue of which party has valid and superior
`
`trademark rights over the other parties.
`
`As the primary issue that will determinative of the outcome of both
`
`proceedings is the same, specifically, which party can establish priority of first use
`
`of their respective trademarks, it is clear that the issues, facts and law that the
`
`District Court will find relevant to make its final determination are almost
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`identical to those that the Board would rely upon to make a final ruling the present
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`proceeding. If the District Court were to rule in favor of either party, the Board
`
`would be bound to reflect such a ruling when moving to issue a final judgment in
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`the present Opposition proceeding.
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`As the Plaintiff has requested, among other things, relief in the form of
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`injunctive relief, damages, and attorney’s fees, it is not possible for the issues now
`
`present in the Civil Action to be adjudicated by the Board. Further, it is clear that
`
`any continued involvement by the parties in the present Opposition would be
`
`Applicant’s Motion to Stay Proceedings Pending Outcome of Civil Action
`
`Opp. No.: 91215993
`
`
`
`4
`
`

`
`
`
`redundant and would also be wasteful of the limited resources currently afforded
`
`to the USPTO for opposition and cancellation proceedings.
`
`As such, and considering the binding effect of any determination made by
`
`the District Court in the Civil Action, it is the position of the Registrant that it is in
`
`the best interests of the parties and for judicial efficiency to allow for the Civil
`
`Action to proceed while the present Opposition proceeding is suspended pending
`
`the outcome of the Civil Action. Once there is a final ruling or a final resolution in
`
`some other form is reached, the parties of the Court itself will inform the Board of
`
`the District Court’s decision, and the Board can then decide what is the
`
`appropriate manner with which to proceed at that time. See The Other Tel. Co. v.
`
`Conn. Nat’l Tel. Co., Inc., 181 U.S.P.Q. 125, 126-7 (T.T.A.B. 1974).
`
`
`
`CONCLUSION
`
`
`
`Based on the foregoing, Applicant respectfully requests that this action be
`
`suspended pending the outcome of the District Court litigation and until the
`
`proceeding is considered to have been finally determined as when a decision on
`
`the merits of the case (i.e., a dispositive ruling that ends litigation on the merits)
`
`has been rendered, and no appeal has been filed therefrom, or all appeals filed
`
`have been decided. See TBMP § 510.02(b).
`
`
`
`Respectrully submitted,
`
`
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`Dated: March 22, 2016
` EASTMAN & MCCARTNEY LLP
`
`By_ /s/ Gary L. Eastman
`Gary L. Eastman, Esq.
`Attorneys for Applicant
`KARMA CHAMPAGNE, INC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant’s Motion to Stay Proceedings Pending Outcome of Civil Action
`
`Opp. No.: 91215993
`
`
`
`5
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`

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`EXHIBIT A
`
`Applicant’s Motion to Stay Proceedings Pending Outcome of Civil Action
`
`Opp. No.: 91215993
`
`6
`
`

`
`JS 44 (Rev. 09/11)
`
`Case 6:16-cv-06183 Document 1-1 Filed 03/19/16 Page 1 of 1
`CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided
`by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose ofmitiating
`the civil docket sheet.
`(SHE INS11WC110NS ON NliXT PAGE OF 1HIS FORM.)
`
`I. (a) PLAINTIFFS
`KARMA CULTURE, LLC
`
`DEFENDANTS
`KARMA CHAMPAGNE, INC.
`
`(b) County of Residence of First Listed Plaintiff
`uMU'ol./linuro"'e.._ ______ _ _
`(li"XCI:/'T IN U.S. PLAIN11FF CASHS)
`
`County of Residence of First Listed Defendant
`(/N U.S. /'LAIN71FF CASES ONLY)
`
`ｾｓｾ｡ｾｮ｟Ｌ｟ＬｄＧＭＧｩＢＧ･ＮＬｧＮＬＮｯＧＭＭＭＭＭＭＭＭ
`
`NOTE:
`
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(C) Al!orneys_[Firm Name, Address" a!J!l Telephone Number)
`Woods Oviatt Gilman LLP, 70u \Aossroads Building, 2 State St.,
`Rochester, New York 14614 (585) 987-2800
`
`Attorneys (If Known)
`
`II. BASIS OF JURISDICTION
`
`(Place an "X"inOneBoxOnlyJ
`
`0
`
`I U.S. Govemment
`Plaintiff
`
`ｾ＠3 Federal Question
`(U.S. Government Not a !'arty)
`
`Citizen of This State
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES(Piacean "X"inOneBoxforPiaintiff)
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF DEF
`PTF
`DEF
`0
`0
`0
`0 4
`I
`l
`
`Incorporated or Principal Place
`of Business In This State
`
`4
`
`0 2 U.S. Govemment
`Defendant
`
`0 4 Diversity
`(lndicare Cilizenship of l'ar/ie.\' inflemf/1)
`
`Citizen of Another State
`
`0 2
`
`0
`
`2
`
`Incorporated and Principal Place
`of Business In Another State
`
`0
`
`5
`
`0 5
`
`Citizen or Subject of a
`
`0 3
`
`0
`
`3 Foreign Nation
`
`0
`
`6
`
`0 6
`
`IV NATURE OF SUIT (l'lacean "X"inOneBoxOnlyJ
`.TORTS
`CONTRACT
`
`FORFEITURE/PENALTY
`
`BANKRUPTCY·
`
`OTHER STATUTES
`
`0 625 Dmg Related Seizure
`of Propet1y 21 USC 881
`0 690 Other
`
`PERSONAL INJURY
`0 365 Personallnjmy -
`Prod!tct Liability
`0 367 Health Care/
`Phannaceutical
`Personal lnjmy
`Product Liability
`0 368 Asbestos Personal
`Injury Product
`LAB R
`Liability
`PERSONAL PROPERTY 0 7!0 Fair Labor Standards
`0 370 Other Fraud
`Act
`0 720 Labor/Mgmt. Relations
`0 371 Tmth in Lending
`0 740 Railway Labor Act
`0 380 Other Personal
`0 751 Family and Medical
`Property Damage
`0 385 Property Damage
`Leave Act
`0 790 Other Labor Litigation
`Product Liability
`0 791 Empl. Ret. Inc.
`Security Act
`
`0 II 0 Insurance
`PERSONAL INJURY
`0 310 Airplane
`0 120 Marine
`0 315 Airplane Product
`0 130 Miller Act
`0 140 Negotiable Instrument
`Liability
`0 150 Recovery of Overpayment 0 320 Assault, Libel &
`& Enforcement of Judgment
`Slander
`0 330 Federal Eniployers'
`0 151 Medicare Act
`0 152 Recovery of Defaulted
`Liability
`0 340 Marine
`S tr1dent Loans
`0 345 Marine Product
`(Excl. Veterans)
`Liability
`0 153 Recovery of Overpayment
`0 350 Motor Vehicle
`of Veteran's Benefits
`0 355 Motor Vehicle
`0 160 Stockholders' Suits
`Product Liability
`0 190 Other Contract
`0 360 Other Personal
`0 195 Contract Product Liability
`lnjmy
`0 196 Franchise
`0 362 Personal Injury -
`Med. Malpractice
`·PRISONER PETITIONS
`CIVIL RIGHTS
`0 440 Other Civil Rights
`0 510 Motions to Vacate
`0 441 Voting
`Sentence
`0 442 Employment
`Habeas Corpus:
`0 530 General
`0 443 Housing/
`0 535 Death Penalty
`IMMIGRATION ..
`Accommodations
`0 445 Amer. w/Disabilities- 0 540 Mandamus & Other 0 462 Naturalization Application
`0 463 Habeas Corpus-
`0 550 Civil Rights
`Employment
`0 446 Amer. w/Disabilities- 0 555 Prison Condition
`Alien Detainee
`0 560 Civil Detainee-
`(Prisoner Petition)
`Other
`0 465 Other Immigration
`0 448 Education
`Conditions of
`Confinement
`Actions
`
`REAL PROPERTY
`0 210 Land Condemnation
`0 220 Foreclosure
`0 230 Rent Lease & Ejectment
`0 240 Torts to Land
`0 245 Tort Product Liability
`0 290 All Other Real Propetty
`
`0 422 Appeal 28 USC 158
`0 423 Withdrawal
`28 usc 157
`
`PROPERTY RIGHTS
`0 820 Copyrights
`0 830 Patent
`t!!l 840 Trademark
`
`SOCJALSEC JRJTY
`0 861 HlA (!395ft)
`0 862 Black Lung (923)
`0 863 DIWC/DIWW (405(g))
`0 864 SSID Title XVI
`0 865 RS! (405(g))
`
`FEDERAL TAX SUITS
`0 870 Taxes (U.S. Plaintiff
`or Defendant)
`0 871 IRS-Third Party
`26 usc 7609
`
`0
`0
`0
`0
`0
`0
`0
`
`0
`0
`0
`
`0
`0
`0
`0
`
`0
`0
`
`0
`
`375 False Claims Act
`400 State Reappmtionment
`410 Antitrust
`430 Banks and Banking
`450 Commerce
`460 Deportation
`470 Racketeer Influenced and
`Cotntpt Organizations
`480 Consumer Credit
`490 Cable/Sat TV
`850 Securities/Commodities/
`Exchange
`890 Other Statutory Actions
`891 Agricultural Acts
`893 Environmental Matters
`895 Freedom oflnfonnation
`Act
`896 Arbitration
`899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`950 Constitutionality of
`State Statutes
`
`V. ORIGIN
`ｾｉ＠ Original
`Proceeding
`
`Transferred from
`(Place an "X" in One Bo.< Only)
`.
`0 6 ｊ｜ＱｾＱｴｩ､ｪｳｴｲｩ｣ｴ＠
`0 4 Remstated or 0 5 another district
`0 2 Removed from
`0 3 Remanded from
`LitigatiOn
`Reopened
`State Court
`Appellate Court
`s eci
`Cite the U.S. Civil Statute under which you are filing (Do 1101 cite jurisdictiomtl statutes 1111/ess diversity):
`VI. CAUSE OF ACTION 15 USC 01114 1 , 15 USC 01125, et se : 28 USC 1331
`Brief description of cause:
`Trademark lnfrin ement, unfair com etition and related claims of infrin ement.
`0 CHECK IF THIS IS A CLASS ACTION
`CHECK YES only if demanded in complaint:
`DEMAND$
`UNDER F.R.C.P. 23
`JURY DEMAND:
`121: Yes
`0 No
`
`VII. REQUESTED IN
`COMPLAINT:
`
`VIII. RELATED CASE(S)
`IF ANY
`
`(See ｩｮｳｴｲｵ｣ｴｩｯｭｾＺ＠
`
`JUDGE
`
`DOCKET NUMBER
`
`DATE
`
`03/19/2016
`
`FOR OFFICE USE ONLY
`
`SIGNATURE OF ATTORNEY OF RECORD
`
`RECEIPT#
`- - - - - - - - -
`
`AMOUNT
`- - - - - - - - - - - - - -
`
`APPLYING IFP
`------------
`
`JUDGE
`----------
`
`MAG. JUDGE
`
`

`
`Case 6:16-cv-06183 Document 1-2 Filed 03/19/16 Page 1 of 2
`
`AO 440 (Rev. 06/12) Summons in a Civil Action
`
`UNITED STATES DISTRICT COURT
`
`for the
`
` Western District of New York
`__________ District of __________
`
`Civil Action No.
`
`) ) ) ) ) ) ) ) ) ) ) )
`
`KARMA CULTURE, LLC
`
`Plaintiff(s)
`v.
`KARMA CHAMPAGNE, INC.
`
`Defendant(s)
`
`To: (Defendant’s name and address)
`
`KARMA CHAMPAGNE, INC.
`2033 San Elijo Avenue
`Cardiff by the Sea, California 92007
`
`SUMMONS IN A CIVIL ACTION
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
`are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
`P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
`the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
`Donald W. O'Brien, Jr., Esq.
`whose name and address are:
`Katherine H. McGuire, Esq.
`Woods Oviatt Gilman LLP
`700 Crossroads Building
`2 State Street
`Rochester, New York 14614
`
`If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
`You also must file your answer or motion with the court.
`
`Date:
`
`CLERK OF COURT
`
`Signature of Clerk or Deputy Clerk
`
`

`
`Case 6:16-cv-06183 Document 1-2 Filed 03/19/16 Page 2 of 2
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`AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)
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`Civil Action No.
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`(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
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`PROOF OF SERVICE
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`This summons for (name of individual and title, if any)
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`was received by me on (date)
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`.
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`’ I personally served the summons on the individual at (place)
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`’ I left the summons at the individual’s residence or usual place of abode with (name)
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`on (date)
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`, and mailed a copy to the individual’s last known address; or
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`, a person of suitable age and discretion who resides there,
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`on (date)
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`; or
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`’ I served the summons on (name of individual)
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` designated by law to accept service of process on behalf of (name of organization)
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`on (date)
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`; or
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`’ I returned the summons unexecuted because
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`’ Other (specify):
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`My fees are $
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`for travel and $
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`for services, for a total of $
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`I declare under penalty of perjury that this information is true.
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`Date:
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`, who is
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`; or
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`.
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`.
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`Server’s signature
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`Printed name and title
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`Server’s address
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`Additional information regarding attempted service, etc:
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF NEW YORK
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`KARMA CULTURE, LLC,
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`Plaintiff,
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`COMPLAINT
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`vs.
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`KARMA CHAMPAGNE, INC.,
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`Defendant.
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`Civil Action No.
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`6:16-cv-6183
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`Plaintiff, KARMA CULTURE, LLC ("Karma Culture"), as and for its Complaint against
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`Defendant, KARMA CHAMPAGNE, INC. ("Defendant"), alleges as follows:
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`JURISDICTION AND VENUE
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`1.
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`Plaintiff Karma Culture is a New York corporation with its principal place of
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`business in Pittsford, New York. Karma Culture is engaged in the manufacture, sale and
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`distribution of beverages throughout the United States and abroad.
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`2.
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`Upon information and belief, defendant Karma Champagne, Inc. is a California
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`corporation with its principal place of business in Cardiff by the Sea, California. Karma
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`Champagne, Inc. is engaged in the manufacture, sale and distribution of beverages, including,
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`but not limited to, wines and sparkling wines. Such sale and distribution extends to interstate
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`commerce.
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`3.
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`This is an action for infringement of Plaintiffs federally-registered trademark
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`under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), for unfair competition and false
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`designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and for
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`substantial and related claims of infringement and unfair competition under the statutory and
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`common laws ofthe State ofNew York.
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 2 of 10
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`4.
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`This Court has jurisdiction of this action by virtue of 15 U.S.C. §§ 1114 and
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`1125(a) and the Court has jurisdiction over the State common law claims by virtue of 28 U.S.C.
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`§§ 1331, 1332(a) 1338(a) and (b), and pursuant to the principles of supplemental jurisdiction
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`under 28 U.S.C. § 1367, as well as CPLR 302(a)(3).
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`5.
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`Venue in this district is proper under 28 U.S.C. § 1391.
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`NATURE OF THE ACTION
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`6.
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`Karma Culture is a leading manufacturer of high-quality beverages, including a
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`line of spring waters infused with various vitamins, minerals and other supplements (the "Karma
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`Beverage Products").
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`7.
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`On Oct. 19, 2006, Karma Culture filed with the U.S. Patent & Trademark Office
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`("USPTO") an intent-to-use trademark application for the trademark "KARMA" which
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`subsequently registered as United States Trademark Registration Number 4,063,528, ("the '528
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`Registration"). A copy ofthe '528 Registration is attached hereto as Exhibit "A."
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`8.
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`Since at least as early as the first use date of September 2, 2011 set forth in the
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`'528 Registration, Karma Culture has continuously used the KARMA mark on and in association
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`with the marketing and sale of the Karma Beverage Products in interstate and foreign commerce.
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`9.
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`Since the date of issuance ofthe '528 mark in 2011, Karma Culture has been and
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`still is the owner of the KARMA mark and the '528 Registration which has been neither assigned
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`nor transferred.
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`10.
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`Karma Culture has, since the time it registered the KARMA nark, given notice to
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`the public that "KARMA" is a registered trademark by affixing the registration notice next to the
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`KARMA mark as provided by 15 U.S.C. § 1111.
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`11.
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`Since at least 2011, Karma Culture has used the KARMA mark in commerce in
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`connection with its business of manufacturing and selling beverages. Over the years, Karma
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 3 of 10
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`Culture has earned a reputation for quality goods and services, personal attention to its customers
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`and integrity in its business dealings and, as such, has earned the respect of both its customers
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`and competitors.
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`12.
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`In the years that its business has been in operation, Karma Culture has advertised
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`and otherwise promoted its products throughout the United States and, as a result, has developed
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`significant name recognition and goodwill and has attained a solid reputation within the
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`marketplace.
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`13.
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`Karma Culture's advertising and other promotional efforts have been undetiaken
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`at great expense for the purpose of developing and perpetuating name recognition and goodwill
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`among existing and prospective customers, vendors and other constituencies.
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`14.
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`These advertising and promotional efforts have been effective and Karma
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`Culture's KARMA trademark is associated with Karma Culture within the minds of consumers.
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`DEFENDANT'S UNLAWFUL ACTIVITIES
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`15.
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`Upon information and belief, Defendant is engaged in, among other things, the
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`offering for sale and selling of beverages, including wines and sparkling wines.
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`16. Without Karma Culture's authorization, and upon information and belief,
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`beginning after Karma Culture acquired protectable exclusive rights in the Karma Culture's
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`KARMA mark, Defendant adopted and began using a mark substantially identical to Karma
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`Culture's KARMA mark in US commerce.
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`17. Without the permission of Karma Culture, Defendant has produced, advertised
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`and sold beverages under the name "Karma." The packaging for this product prominently
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`displays the name "Karma" in conspicuously large print.
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 4 of 10
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`18.
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`A reasonably prudent consumer could easily confuse or misconstrue such
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`advertising and marking on the packaging of the product to assume the existence of a connection
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`between Defendant's product and Karma Culture's KARMA mark.
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`19.
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`By utilizing the "Karma" name for its beverages, Defendant has attempted to
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`capitalize on the goodwill and reputation of Karma Culture's KARMA brand and '528 mark,
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`which the average public consumer associates with high quality beverages.
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`FIRST CAUSE OF ACTION
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`(Trademark Infringement in Violation of Section 32 of the Lanham Act)
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`20.
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`Karma Culture realleges and incorporates by reference paragraphs 1 through 19
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`above.
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`21.
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`Defendant, without consent or license from Karma Culture, has infringed and
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`continues to infringe upon the '528 mark by using the name "Karma" in connection with the sale
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`and distribution ofbeverages.
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`22.
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`Defendant's use of the '528 mark is likely to cause confusion, mistake and
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`deception and will continue to cause confusion, mistake and deception in violation of 15 U.S.C.
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`§ 1114, until Defendant's actions cease.
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`23.
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`Upon information and belief, Defendant's sale and distribution of the infringing
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`product has and is occurring through both interstate and foreign commerce.
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`24.
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`Karma Culture's use and registration of the '528 mark preceded Defendant's
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`infringing and imitating use of the name "Karma."
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`25.
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`Upon information and belief, Defendant intended and continues to intend to cause
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`confusion and mistake to deceive the buyers of Defendant's products into believing that they
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`were and are buying products produced by, marketed by, sponsored by, approved by or licensed
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`by Karma Culture.
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 5 of 10
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`32.
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`Defendant's use of the "Karma" name for its products has and continues to
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`deceive, mislead and confuse customers.
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`33.
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`Such actions have constituted, and will continue to constitute unfair competition
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`under 15 U.S.C. § 1125(a).
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`34.
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`As a proximate result of Defendant's acts, Karma Culture has suffered great
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`detriment to its business, goodwill, reputation and profits, all to its damage in an amount as yet
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`not fully ascertained.
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`35.
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`Defendant's infringement upon the '528 mark has deprived Karma Culture of its
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`rightful ability to police the quality of goods uniquely associated with its mark and to ensure that
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`its valuable goodwill and reputation are protected.
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`36.
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`Karma Culture is entitled to all remedies available under the Lanham Act,
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`including, but not limited to, injunctive relief, compensatory damages, treble damages, and
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`disgorgement of profits.
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`THIRD CAUSE OF ACTION
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`(Trademark Infringement and Injury to Business Reputation in Violation
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`of New York General Business Law Sections 360-k and 360-1)
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`37.
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`Karma Culture realleges and incorporates by reference paragraphs 1 through 36
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`above.
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`38.
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`Defendant's labeling of its products with the name "Karma" is likely to cause
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`confusion or mistake among consumers regarding the source of Defendant's infringing product.
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`39.
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`Due to the similar nature of the products sold by Karma Culture and the infringing
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`products sold by Defendant, an average consumer seeking to purchase beverages reasonably
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`could believe that a connection exists between the infringing products and Karma Culture and/or
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`the '528 mark.
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 6 of 10
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`40.
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`As a direct and proximate result of Defendant's continued infringement upon the
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`'528 mark, Karma Culture will suffer immediate and irreparable harm to the reputation of its
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`business and the value ofthe '528 mark itself.
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`41.
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`Karma Culture is entitled to injunctive, monetary and all other relief pursuant to
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`New York General Business Law Sections 360-k, 360-1, and 360-m.
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`TRIAL BY JURY DEMANDED
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`Plaintiff demands a trial by jury on all issues so triable.
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`WHEREFORE, the Plaintiff Karma Culture demands with respect to each of its claims:
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`A.
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`Granting a permanent injunction, restraining and enjoining the Defendant, its
`officers, directors, agents, servants, employees and all others acting on its behalf
`or in its stead, from further acts of trade name infringement and unfair
`competition and, more particularly, from, in any manner, directly or indirectly:
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`(i)
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`using the mark KARMA and any other marks which are confusingly similar
`to or marks that are dilutive to or otherwise violate Karma Culture's
`KARMA trademark;
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`(ii) using or otherwise exploiting the mark KARMA and any other marks which
`are confusingly similar to or otherwise violate Karma Culture's KARMA
`trademark in connection with beverages;
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`(iii) assisting, aiding or abetting any other person or entity from engaging or
`performing any of the activities referred to in subparagraphs 1 (i)-(ii) above;
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`(iv) declaring that the Defendant has unfairly competed with the Plaintiff by the
`acts complained of.herein and further declaring the respective rights and
`responsibilities of the parties;
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`B.
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`C.
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`Granting an order requiring the Defendant to deliver up for destruction all
`products, and all promotional and/or advertising materials of any kind bearing the
`mark KARMA and any other marks which are confusingly similar to or otherwise
`violate Karma Culture's KARMA trademark;
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`Awarding to Karma Culture any profits generated by the Defendant as a result of
`the acts complained of and further awarding Karma Culture its damages as a
`result of the Defendant's wrongful trademark infringement and unfair competition
`in an amount to be determined by an accounting, if necessary;
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`D.
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`Awarding Karma Culture its attorneys' fees and costs; and
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 7 of 10
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`E.
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`Granting Karma Culture such other and further relief as to this Court may seem
`just and proper.
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`DATED: March 19,2016
`Rochester, New York
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`WOODSO
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`Donald W. O'Brien, Jr., Esq.
`Katherine H. McGuire, Esq.
`Attorneys for Plaintiff
`700 Crossroads Building
`2 State Street
`Rochester, New York 14614
`585.987.2800
`dobrien@woodsoviatt.com
`kmcguire@woodsoviatt.com
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 8 of 10
`- Case 6:16—cv—O6183 Document 1 Filed 03/19/16 Page 8 of 10
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`EXHIBIT A
`EXHIBIT A;
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 9 of 10
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`KARMA
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`Reg. No. 4,063,528
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`KARMA CULTURE, LLC (NEW YORK LIMITED LIABILITY COMPANY)
`P.O. BOX 698
`Registered Nov. 29, 2011 MENDON, NY I4S06
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`Int. CI.: 5
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`TRADEMARK
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`FOR: OIETARY SUPPLEMENTS IN THE NATURE OF STIMULANTS IN LIQUID FORM
`MADE FROM BOTANICALS, ALGAE, SPICES, AND HERBS FOR USE IN RESTOIUNG
`MENTAL ALERTNESS, ALL FOR NON-MEDICINAL PURPOSES, IN CLASS 5 (U.S. CLS. 6,
`18, 44, 46, 5 I AND 52).
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`PRINCIPAL REGISTER
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`FIRST USE 9-2-2011; IN COMMERCE 9-2-2011.
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`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR(cid:173)
`TICULAR FONT, STYLE, SIZE, OR COLOR.
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`SN 77-024,533, FILED 10-19-2006.
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`STEVEN PEREZ, EXAMINING ATTORNEY
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`UirccTnr oflhe UnileJ States l'llh:nt and 'lhldcmurk Office
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`Case 6:16-cv-06183 Document 1 Filed 03/19/16 Page 10 of 10
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`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADEMARK REGISTRATION
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`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
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`Requirements in the First Ten Years*
`What and When to File:
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`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years aner the registration date. See 15 U .S.C. §§ 1058, ll4lk. If the declaration is
`accepted, the registration will continue in force lor the remainder ol'the ten-year period, calculated