Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA795524
`01/17/2017
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91228002
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Defendant
`McWilliam's Wines Group Limited
`
`RAFFI V ZEROUNIAN
`HANSON BRIDGETT LLP
`425 MARKET ST 26TH FLOOR
`SAN FRANCISCO, CA 94105
`UNITED STATES
`ttabfilings@hansonbridgett.com, rzerounian@hansonbridgett.com
`
`Motion to Suspend for Civil Action
`
`Raffi Zerounian
`
`rzerounian@hansonbridgett.com, ttabfilings@hansonbridgett.com
`
`/rvz/
`
`01/17/2017
`
`Attachments
`
`Mtn to Suspend Opposition Proceeding-91228002.pdf(4133767 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`IN RE: APPLICATION SERIAL NO. 79/169,144
`
`
`
`BUTTERBALL, LLC,
`
`
`Opposer,
`
` Opposition No. 91228002
`
`MOTION TO SUSPEND OPPOSITION
`PROCEEDING DUE TO PENDING CIVIL
`ACTION
`
`
`
`
`
`v.
`
`
`McWILLIAM’S WINES GROUP LIMITED,
`
`
`Applicant.
`
`
`
`Applicant McWilliam's Wines Group Limited ("Applicant") hereby moves the Board for an
`
`order suspending the opposition proceeding filed by Opposer Butterball, LLC (“Opposer”)
`
`against Applicant’s U.S. Ser. No. 79/169,144 pending the outcome of Butterball, LLC v.
`
`McWilliam’s Wine Group Limited, Case No. 5:16-cv-00941, a civil action pending between
`
`Opposer and Applicant in the U.S. District Court for the Eastern District of North Carolina ("Civil
`
`Action"). Exhibit A hereto is a copy of the Complaint in the Civil Action.
`
`Because the Civil Action involves the same parties, the same mark, and has issues in
`
`common with this opposition proceeding, Applicant respectfully requests that this proceeding be
`
`suspended, pursuant to 37 C.F.R. §2.117(a), pending the final disposition of the Civil Action.
`
`See TBMP §510.02(a).
`
`Respectfully submitted,
`
`
`By
`/s/ Raffi Zerounian
`Raffi Zerounian, Esq.
`
`Attorneys for Applicant
`McWilliam’s Wines Group Limited
`
`
`
`
`
`Hanson Bridgett LLP
`
`1
`
`
`
`
`
`13023958.1
`
`

`

`
`
`425 Market Street, 26th Floor
`San Francisco, CA 94105
`Tel.: (415) 777-3200
`E-mail: rzerounian@hansonbridgett.com
`
`Date: January 17, 2017
`
`
`
`
`2
`
`13023958.1
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I, Laura Prongos, hereby certify that a true and complete copy of the MOTION TO
`SUSPEND OPPOSITION PROCEEDING DUE TO PENDING CIVIL ACTION was served on
`the parties listed below by mailing said copies on January 17, 2017 via U.S. First Class Mail,
`postage pre-paid to:
`
`Opposer’s Attorney/Correspondent of Record:
`
`Jeanine M. Mitchell
`Sarah A. Keefe
`WOMBLE CARLYLE SANDRIDGE & RICE
`2530 Meridian Parkway, Suite 400
`Durham, NC 27713
`
`
`Dated: January 17, 2017
`
`
`
`
`
`
`
`/s/ Laura Prongos
`Laura Prongos
`
`
`
`
`
`3
`
`13023958.1
`
`

`

`
`
`EXHIBIT A
`
`EXHIBIT A
`
`
`
`13023958.1
`13023958.1
`
`

`

`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF NORTH CAROLINA
`WESTERN DIVISION
`
`
`
`BUTTERBALL, LLC, a North Carolina limited
`liability company,
`
`
`Plaintiff,
`
` v.
`
`MCWILLIAM’S WINES GROUP LTD., a
`foreign corporation,
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Case No: 5:16-cv-00941
`
`JURY TRIAL DEMANDED
`
`Defendant.
`
`
`COMPLAINT
`
`
`
`Plaintiff Butterball, LLC, (“Butterball” or “Plaintiff”), complains of Defendant McWilliam’s
`
`Wines Group Ltd. (“McWilliams” or “Defendant”) as follows:
`
`NATURE OF THE ACTION
`
`This is an action for direct and contributory trademark infringement and direct and
`
`contributory false designation of origin and unfair competition pursuant to 15 U.S.C. §§ 1114 and
`
`1125; direct and contributory trademark dilution pursuant to 15 U.S.C. 1125(c); violation of the
`
`North Carolina Unfair or Deceptive Trade Practices Act, N.C. Gen. Stat. § 75-1.1 et seq.
`
`(“UDTPA”); and trademark infringement and unfair competition under common law. Butterball
`
`seeks injunctive relief, monetary damages, restitution, and all other appropriate relief, including an
`
`order enjoining Defendant from using Butterball’s trademarks in connection with wine sold in the
`
`United States.
`
`PARTIES
`
`1.
`
`Plaintiff Butterball, LLC is a North Carolina limited liability company, having its
`
`principal place of business at 1 Butterball Lane, Garner, North Carolina 27529. Butterball is the
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 1 of 24
`
`

`

`largest producer of turkey products in the United States, and its products are distributed throughout
`
`the United States. As discussed in more detail below, the vast majority of Butterball’s products are
`
`distributed in conjunction with the BUTTERBALL family of trademarks.
`
`2.
`
`On information and belief, Defendant is an Australian corporation with a place of
`
`business at 68 Anzac St., Chullora, NSW 2190, Australia. On information and belief, Defendant is
`
`the owner of a brand of wine labeled “Evans & Tate.” On information and belief, Defendant
`
`produces, sells, distributes, and imports into the United States a variety of Evans & Tate branded
`
`wines, including a type of chardonnay named “BUTTERBALL.”
`
`JURISIDICTION AND VENUE
`
`3.
`
`This is an action arising in part under the Lanham Act, 15 U.S.C. § 1051 et seq., and
`
`North Carolina statutory and common law.
`
`4.
`
`This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. §
`
`1121(a) and 28 U.S.C. §§ 1331, 1338(a), 1338(b), and 1367(a).
`
`5.
`
`This Court has personal jurisdiction over Defendant in that Defendant imports and
`
`distributes its products throughout the United States, including through brick and mortar and online
`
`retailers that allow North Carolina residents to make and receive direct purchases of its wines in this
`
`state and in this judicial district. Defendant’s acts of unfair competition and infringement described
`
`below have harmed and are causing harm to Butterball in North Carolina and in this judicial district.
`
`6.
`
`Venue is proper in this Court under the provisions of 28 U.S.C. § 1391(b)(2),
`
`1391(b)(3) and 1391(c)(3) because Defendant is a foreign corporation, is subject to this Court’s
`
`personal jurisdiction, and a substantial part of the events giving rise to Butterball’s claims occurred
`
`and continue to occur in this State and in this judicial district.
`
`
`
`
`
`
`
`2
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 2 of 24
`
`

`

`
`
`
`
`A.
`
`Butterball’s Trademark Rights
`
`FACTS
`
`7.
`
`Butterball is the owner of all right, title and interest in a family of common law and
`
`registered trademarks and service marks for or incorporating BUTTERBALL, all of which are
`
`distinctive, including the U.S. Trademark Registrations identified below (herein, collectively and/or
`
`individually, as the context dictates, the “BUTTERBALL Marks”):
`
`Mark
`
`BUTTERBALL
`
`
`Reg. No.
`(Serial No.)
`4,337,324
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 3 of 24
`
`Goods / Services
`
`Dressed poultry; fresh turkey products,
`namely, poultry parts, stuffed whole
`turkey, turkey breast, ground turkey,
`ground
`turkey burgers and
`turkey
`sausages
`Deep fat fryers
`
`Deep fat fryers
`
`Processed turkey-based snack food
`
`Processed turkey-based snack food
`
`Marinades; seasonings; spices
`
`Marinades; seasonings; spices
`
`4,369,625
`
`4,365,635
`
`
`4,436,997
`
`4,436,996
`
`
`4,103,106
`
`4,103,105
`
`
`3
`
`
`BUTTERBALL
`
`BUTTERBALL and
`Design
`
`
`BUTTERBALL
`
`BUTTERBALL and
`Design
`
`
`BUTTERBALL
`
`BUTTERBALL and
`Design
`
`
`
`
`
`

`

`Mark
`
`Reg. No.
`(Serial No.)
`
`Goods / Services
`
`
`BUTTERBALL
`
`BUTTERBALL
`
`BUTTERBALL
`
`BUTTERBALL and
`Design
`
`
`BUTTERBALL
`
`BUTTERBALL
`ARTISAN SEASONED
`
`BUTTERBALL
`COOKBOOK PLUS
`
`BUTTERBALL
`COOKBOOK PLUS and
`Design
`
`3,464,317
`
`2,687,114
`
`1,400,556
`
`
`1,151,836
`
`
`4,467,422
`
`
`4,418,703
`
`
`4,456,222
`
`
`4,456,223
`
`
`
`BUTTERBALL EVERY
`DAY
`
`4,637,915
`
`
`Soups
`
`Broth
`
`including
`Poultry processed meats
`salami, pastrami, ham, bologna and
`breast of turkey
`including
`Poultry and poultry parts
`frozen dressed whole turkey, stuffed
`turkey, and frozen turkey breast
`
`for
`software
`Computer application
`mobile devices featuring recipes and
`cooking tips
`Products made from turkey, namely,
`deli meats, ham, salami, pastrami, and
`bologna
`for
`software
`Computer application
`mobile devices featuring recipes and
`cooking tips
`for
`software
`Computer application
`mobile devices featuring recipes and
`cooking tips
`
`Fresh turkey products, namely, poultry
`parts,
`turkey breast, ground
`turkey,
`ground
`turkey burgers and
`turkey
`sausages; products made from turkey,
`namely, smoked sausages, deli meats,
`ham, salami, bologna, hot dogs, and
`pastrami
`
`4
`
`
`
`
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 4 of 24
`
`

`

`Mark
`
`BUTTERBALL EVERY
`DAY
`
`BUTTERBALL EVERY
`DAY CHEF SELECTS
`
`BUTTERBALL
`HEARTLAND
`
`BUTTERBALL TURKEY
`TODAY
`
`
`
`Goods / Services
`
`Turkey bacon
`
`Reg. No.
`(Serial No.)
`4,667,677
`
`4,464,017
`
`
`Dressed poultry; fresh turkey products,
`namely, poultry parts, stuffed whole
`turkey, turkey breast, ground turkey,
`ground
`turkey burgers and
`turkey
`sausages, smoked and processed turkey-
`based products, namely, snack food, deli
`meats,
`turkey breast, ham, salami,
`sausage, hot dogs, bacon and pastrami;
`broth
`4,777,832 Fresh and frozen poultry products,
`namely, fresh and frozen poultry parts,
`turkey breast, chicken breast, ground
`turkey, ground chicken, ground turkey
`burgers, ground chicken burgers, turkey
`sausages
`and
`chicken
`sausages;
`processed
`poultry-based
`products,
`namely, smoked and processed meats
`made from turkey or chicken, namely,
`turkey breasts, chicken breast, ham,
`salami, sausage, hot dogs, and pastrami;
`smoked hams; cooked hams; fresh pork
`products; and processed pork products,
`namely, sausage and deli meats
`Providing information, advice, tips and
`recipes in the fields of cooking
`
`4,641,952
`
`
`8.
`
`Pursuant to 15 U.S.C. § 1057(b), the registration certificates for the BUTTERBALL
`
`Marks, including those marks identified above, constitute prima facie evidence of the validity of
`
`those registrations, of Butterball’s ownership of the trademarks set forth therein, and of Butterball’s
`
`exclusive right to use those trademarks in commerce and in connection with the products and
`
`services specified in the registration certificates.
`
`5
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 5 of 24
`
`
`
`
`
`

`

`9.
`
`For decades, Butterball has widely, extensively, and continuously advertised,
`
`promoted, and sold products and services under the BUTTERBALL Marks nationwide. As a result,
`
`the BUTTERBALL Marks have become famous in the United States, including North Carolina.
`
`Specifically, the public widely recognizes the BUTTERBALL Marks as identifying high-quality and
`
`reliable products, goods, and services that originate with Butterball or that Butterball approves or
`
`endorses.
`
`10.
`
`Butterball derives substantial goodwill, common law rights, and value from its
`
`ownership and use of the BUTTERBALL Marks.
`
`11.
`
`The consumer goodwill associated with the BUTTERBALL Marks is one of
`
`Butterball’s most valuable assets. Accordingly, the integrity of the BUTTERBALL Marks is
`
`extremely important to Butterball and crucial to the continued vitality and growth of Butterball’s
`
`business.
`
`B.
`
`Defendant’s Unlawful Use of the BUTTERBALL Marks
`
`12.
`
`13.
`
`Butterball has never authorized Defendant to use the BUTTERBALL Marks.
`
`Nevertheless, Defendant has knowingly and willfully violated Butterball’s rights in
`
`the distinctive and famous BUTTERBALL Marks by using in commerce—throughout the United
`
`Stated and in this State and in this judicial district—the name BUTTERBALL in connection with
`
`one of its Evans & Tate branded chardonnay wines. Such use commenced well-after the
`
`BUTTERBALL Marks became famous in North Carolina, this judicial district, and the United
`
`States.
`
`14.
`
`As seen below, Defendant’s website prominently uses BUTTERBALL in several
`
`instances to advertise and display its products.
`
`6
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 6 of 24
`
`
`
`
`
`

`

`EXPRESSIONS
`
`
`
`Evans & Tate Margaret River
`
`Expressions range celebrates
`
`the spirit of Margaret River with
`
`a series of serious wines
`
`without the serious attitude.
`
`BROWSE T riE RANGE
`
`
`
`7
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 7 of 24
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 7 of 24
`
`
`
`
`
`

`

`
`
`1
`
`
`
`
`1 Accessed from http://evansandtate.com.au/our-wine/our-range/ on November 16, 2016. The figures have
`been annotated by counsel.
`
`8
`
`
`
`
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 8 of 24
`
`

`

`15.
`
`On information and belief, Defendant makes its BUTTERBALL wine available for
`
`purchase throughout the United States and in this State and judicial district through online vendors as
`
`well as brick and mortar retail stores.
`
`16.
`
`For example, the screenshots below display Defendant’s BUTTERBALL wine as an
`
`online product offering from numerous fully interactive e-commerce websites where, on information
`
`and belief, consumers may purchase BUTTERBALL wine and have it shipped directly to their
`
`homes.
`
`2
`
`
`
`
`
`2 Accessed on November 16, 2016 at http://www.winesking.com/main.asp?request=SEARCH&.
`9
`
`
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 9 of 24
`
`
`
`

`

`3
`
`4
`
`
`
`3 Accessed on November 16, 2016 at https://www.saratogawine.com/Evans-and-Tate-Chardonnay-Butterball-
`2014-750ml.html.
`4 Accessed on November 16, 2016 at http://www.winechateau.com/sku2071337_EVANS--TATE-
`CHARDONNAY-BUTTERBALL-750ML-2014.
`
`
`10
`
`
`
`
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 10 of 24
`
`

`

`
`
`
`
`5
`
`6
`
`5 Accessed on November 16, 2016 at https://www.marketviewliquor.com/product/evans-tate-butterball-
`chardonnay-750ml.html.
`
`11
`
`
`
`
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 11 of 24
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`

`

`17.
`
`Records on file with the U.S. Alcohol and Tobacco Tax and Trade Bureau (“US
`
`TTB”) show that distributors and wholesalers have filed for and received Certificate of Label
`
`Approvals (“COLA”) for BUTTERBALL wine labels to allow them to sell Defendant’s wine in the
`
`United States. See Ex. A, Ebiba, LLC BUTTERBALL US TTB COLA; Ex. B, Park Street Imports,
`
`LLC BUTTERBALL US TTB COLA.
`
`18.
`
`Defendant’s “Evans & Tate” website identifies Total Wine & More (“Total Wine”)
`
`as its international distributor for sales of its wines in the United States.
`
`7
`
`
`
`
`
`
`
`
`
`
`
`
`
`6 Accessed on November 16, 2016 at http://www.binnys.com/all/butterball.
`7 Accessed on November 16, 2016 at http://evansandtate.com.au/international-distributors/.
`12
`
`
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 12 of 24
`
`
`
`

`

`
`
`19.
`
`Total Wine’s website indicates that it carries a variety of Defendant’s Evan & Tate
`
`branded wines, including at least one such product in its Raleigh, N.C. and Cary, N.C. locations in
`
`this District.
`
`8
`
`20.
`
`On information and belief, consumers residing in this State and District have
`
`purchased Defendant’s wine—including the BUTTERBALL wine—using online vendors and brick
`
`and mortar retailers. At least one resident in this District used an online retailer’s e-commerce
`
`website to purchase Defendant’s infringing BUTTERBALL wine and received a shipment at the
`
`resident’s home in this judicial district.
`
`21.
`
`On January 7, 2015, Defendant applied to register the mark BUTTERBALL for use
`
`
`
`8 Accessed on November 16, 2016 at http://www.totalwine.com/wine/brand/evans-tate.
`13
`
`
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 13 of 24
`
`
`
`

`

`with alcoholic beverages, namely wines. See Ex. C, U.S. Serial No. 79/161,141. The registration for
`
`the BUTTERBALL mark issued on January 12, 2016 as U.S. Reg. No. 4,883,706. Ex. D, U.S. Reg.
`
`No. 4,883,706.
`
`22.
`
`Also on January 7, 2015, Defendant filed an application to register the mark
`
`BUTTERBALL and Design for use with alcoholic beverages, namely wines. See Ex. E, U.S. Serial
`
`No. 79/169,144. The registration for Defendant’s alleged BUTTERBALL and Design mark has not
`
`issued.
`
`23.
`
`Once Butterball learned of Defendant’s unlawful attempts to usurp its rights in the
`
`BUTTERBALL Marks, Butterball filed to cancel Defendant’s BUTTERBALL registration and
`
`opposed Defendant’s application to register its alleged BUTTERBALL and Design mark. See, Ex.
`
`F, Butterball’s Petition to Cancel; Ex. G, Butterball’s Notice of Opposition.
`
`24.
`
`On information and belief, at the time Defendant’s infringing use of the
`
`BUTTERBALL Marks began and at all times afterward, Defendants has known, or had reason to
`
`know, of Butterball’s rights in the BUTTERBALL Marks and has at all times known, or had reason
`
`to know, that those marks are famous and valuable.
`
`25.
`
`On information and belief, Defendant knowingly and for profit engaged in the
`
`infringing use of the BUTTERBALL Marks to attract consumers, knowing that consumers would
`
`likely believe, incorrectly, that use of the BUTTERBALL Marks signifies that Defendant’s business
`
`is sponsored or endorsed by, or associated or affiliated with, BUTTERBALL.
`
`26.
`
`Defendant’s infringing use has damaged, and will continue to damage, the reputation,
`
`recognition, and goodwill associated with the famous and distinctive BUTTERBALL Marks.
`
`27.
`
`Defendant’s infringing use has lessened, and will continue to lessen, the capacity of
`
`the BUTTERBALL Marks to identify and distinguish the products and services provided or endorsed
`
`14
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 14 of 24
`
`
`
`
`
`

`

`by, or affiliated with, BUTTERBALL and, thus, dilute the distinctive quality of the BUTTERBALL
`
`Marks.
`
`28.
`
`For the foregoing reasons, Defendant’s infringing use has caused, and will likely
`
`continue to cause, injury to Butterball and to the goodwill and value of its BUTTERBALL Marks.
`
`CLAIMS FOR RELIEF
`
`First Claim For Relief
`Federal Trademark Infringement – 15 U.S.C. § 1114
`
`29.
`
`Butterball realleges and incorporates by reference the foregoing paragraphs as if fully
`
`restated herein.
`
`30.
`
`31.
`
`Butterball owns valid and enforceable rights in the BUTTERBALL Marks.
`
`Defendant has, without Butterball’s consent, used and continues to use the
`
`BUTTERBALL Marks in connection with the marketing, offering for sale, and sale of products,
`
`goods, and services in a manner that is likely to cause confusion, mistake, or deception in consumers
`
`as to the origin, sponsorship, affiliation, and/or nature of Defendant’s services and products in
`
`violation of 15 U.S.C. § 1114.
`
`32.
`
`As a proximate cause of Defendant’s infringement, Defendant has or will receive
`
`substantial profits to which it is not entitled, and Butterball has suffered or will suffer actual
`
`monetary damages, including, without limitation, lost profits, impairment of the value of the
`
`BUTTERBALL Marks, and loss of goodwill.
`
`33.
`
`Butterball is entitled to damages in an amount to be proven at trial under 15 U.S.C. §
`
`1117.
`
`34.
`
`On information and belief, Defendant has acted with full knowledge of Butterball’s
`
`rights in the BUTTERBALL Marks and with the intention to usurp such rights. Defendant’s actions
`
`are intentional, willful, and are calculated to cause confusion, to cause mistake, or to deceive. As a
`15
`
`
`
`
`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 15 of 24
`
`
`
`

`

`result, Defendant is liable to Butterball for treble damages and attorneys’ fees under 15 U.S.C. §
`
`1117.
`
`35.
`
`Defendant’s actions have caused and will continue to cause damages and irreparable
`
`harm to Butterball unless enjoined by this Court. Butterball has no adequate remedy at law.
`
`Second Claim For Relief
`Unfair Competition and False Designation of Origin – 15 U.S.C. § 1125
`
`36.
`
`Butterball realleges and incorporates by reference the foregoing paragraphs as if fully
`
`restated herein.
`
`37.
`
`Defendant’s use of the BUTTERBALL Marks in connection with the marketing,
`
`offering for sale, and sale of their services and products has caused and is likely to continue to cause
`
`confusion, or to cause mistake, or to deceive consumers into believing that Defendant and Butterball
`
`are affiliated, or that certain products, goods, or services offered by Defendant, namely wine, are
`
`made by, sponsored by, approved by, originate with, or are affiliated with Butterball, in violation of
`
`15 U.S.C. § 1125.
`
`38.
`
`Defendant has competed unfairly with Butterball and has realized unjust profits as a
`
`result of its unfair competition.
`
`39.
`
`On information and belief, Defendant has acted with full knowledge of Butterball’s
`
`rights in the BUTTERBALL Marks and with the intention to usurp such rights. Defendant’s actions
`
`are intentional, willful, and were calculated to cause confusion, to cause mistake, or to deceive.
`
`40.
`
`As a result of Defendant’s unfair competition, Butterball has suffered or will suffer
`
`damages, including lost sales, lost profits, and lost goodwill.
`
`41.
`
`Butterball is entitled to damages in an amount to be proven at trial under 15 U.S.C. §
`
`1117.
`
`42.
`
`
`
`
`
`Defendant’s actions have caused irreparable injury to Butterball’s reputation and
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`goodwill and, unless enjoined, Defendant will continue its acts of unfair competition. Butterball has
`
`no adequate remedy at law.
`
`Third Claim For Relief
`Trademark Dilution – 15 U.S.C. § 1125(c)
`
`43.
`
`Butterball realleges and incorporates by reference the foregoing paragraphs as if fully
`
`restated herein.
`
`44.
`
`Defendant’s use of the BUTTERBALL Marks in connection with the marketing,
`
`offering for sale, and sale of their services and products has caused and is likely to continue to cause
`
`dilution of the distinctive quality of the BUTTERBALL Marks and decrease the capacity of such
`
`marks to identify and distinguish Butterball goods and services in violation of 15 U.S.C. § 1125(c).
`
`45.
`
`46.
`
`Defendant has realized unjust profits as a result of its dilution.
`
`On information and belief, Defendant has acted with full knowledge of Butterball’s
`
`rights in the BUTTERBALL Marks. Defendant’s actions are intentional and willful.
`
`47.
`
`As a result of Defendant’s dilution of the BUTTERBALL Marks, Butterball has
`
`suffered or will suffer damages, including lost sales, lost profits, and lost goodwill.
`
`48.
`
`Butterball is entitled to damages in an amount to be proven at trial under 15 U.S.C. §
`
`1117.
`
`49.
`
`Defendant’s actions have caused irreparable injury to Butterball’s reputation and
`
`goodwill and, unless enjoined, Defendant will continue its acts of dilution. Butterball has no
`
`adequate remedy at law.
`
`Fourth Claim For Relief
`Contributory Trademark Infringement – 15 U.S.C. § 1114
`
`50.
`
`Butterball realleges and incorporates by reference the foregoing paragraphs as if fully
`
`restated herein.
`
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`51.
`
`Defendant has, without Butterball’s consent, used and continues to use the
`
`BUTTERBALL Marks in connection with the marketing, offering for sale, and sale of products,
`
`goods, and services in a manner that is likely to cause confusion, mistake, or deception in consumers
`
`as to the origin, sponsorship, affiliation, and/or nature of Defendant’s services and products in
`
`violation of 15 U.S.C. § 1114.
`
`52.
`
`On information and belief, Defendant has acted with full knowledge of Butterball’s
`
`rights in the BUTTERBALL Marks and with the intention to usurp such rights. Defendant’s actions
`
`are intentional, willful, and are calculated to cause confusion, to cause mistake, or to deceive.
`
`53.
`
`Defendant has materially contributed to the above-described infringement by having
`
`permitted and continuing to permit the distributors, wholesalers, and retailers identified above—and,
`
`upon information and belief, others—to offer for sale and sell the infringing BUTTERBALL wine.
`
`Defendant’s actions have occurred notwithstanding: (1) on information and belief, Defendant’s
`
`actual knowledge of the offering for sale and sale of such infringing products; (2) Defendant’s
`
`constructive knowledge of the offering for sale and sale of such infringing products; or, alternatively
`
`(3) Defendant’s willful blindness to the offering for sale and the sale of such infringing products.
`
`54.
`
`Defendant’s acts constitute contributory trademark infringement in violation of 15
`
`U.S.C. § 1114.
`
`55.
`
`As a proximate cause of Defendant’s infringement, Defendant has or will receive
`
`substantial profits to which it is not entitled, and Butterball has suffered or will suffer actual
`
`monetary damages, including, without limitation, lost profits, impairment of the value of the
`
`BUTTERBALL Marks, and loss of goodwill. As a result, Defendant is liable to Butterball for treble
`
`damages and attorneys’ fees under 15 U.S.C. § 1117.
`
`56.
`
`Defendant’s actions have caused and will continue to cause damages and irreparable
`
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`harm to Butterball unless enjoined by this Court. Butterball has no adequate remedy at law.
`
`Fifth Claim For Relief
`Contributory Unfair Competition and False Designation of Origin – 15 U.S.C. § 1125
`
`57.
`
`Butterball realleges and incorporates by reference the foregoing paragraphs as if fully
`
`restated herein.
`
`58.
`
`Defendant’s use of the BUTTERBALL Marks in connection with the marketing,
`
`offering for sale, and sale of their services and products has caused and is likely to continue to cause
`
`confusion, or to cause mistake, or to deceive consumers into believing that Defendant and Butterball
`
`are affiliated, or that certain products, goods, or services offered by Defendant, namely wine, are
`
`made by, sponsored by, approved by, originate with, or are affiliated with Butterball, in violation of
`
`15 U.S.C. § 1125.
`
`59.
`
`On information and belief, Defendant has acted with full knowledge of Butterball’s
`
`rights in the BUTTERBALL Marks and with the intention to usurp such rights. Defendant’s actions
`
`are intentional, willful, and were calculated to cause confusion, to cause mistake, or to deceive.
`
`60.
`
`Defendant has materially contributed to the above-described unfair competition and
`
`false designation of origin by having permitted and continuing to permit the distributors, wholesalers,
`
`and retailers identified above—and, upon information and belief, others—to offer for sale and sell
`
`the infringing BUTTERBALL wine. Defendant’s actions have occurred notwithstanding: (1) on
`
`information and belief, Defendant’s actual knowledge of the offering for sale and sale of such
`
`infringing products; (2) Defendant’s constructive knowledge of the offering for sale and sale of such
`
`infringing products; or, alternatively (3) Defendant’s willful blindness to the offering for sale and the
`
`sale of such infringing products.
`
`61.
`
`Defendant’s acts constitute contributory unfair competition and false designation of
`
`origin in violation of 15 U.S.C. § 1125.
`
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`62.
`
`As a result of Defendant’s unfair competition, Butterball has suffered or will suffer
`
`damages, including lost sales, lost profits, and lost goodwill.
`
`63.
`
`Butterball is entitled to damages in an amount to be proven at trial under 15 U.S.C. §
`
`1117.
`
`64.
`
`Defendant’s actions have caused irreparable injury to Butterball’s reputation and
`
`goodwill and, unless enjoined, Defendant will continue its acts of unfair competition. Butterball has
`
`no adequate remedy at law.
`
`Sixth Claim For Relief
`Contributory Trademark Dilution -- § 1125(c)
`
`65.
`
`Butterball realleges and incorporates by reference the foregoing paragraphs as if fully
`
`restated herein.
`
`66.
`
`Defendant’s use of the BUTTERBALL Marks in connection with the marketing,
`
`offering for sale, and sale of their services and products has caused and is likely to continue to cause
`
`dilution of the distinctive quality of the BUTTERBALL Marks and decreasing the capacity of such
`
`marks to identify and distinguish Butterball’s goods and services in violation of 15 U.S.C. § 1125(c).
`
`67.
`
`On information and belief, Defendant has acted with full knowledge of Butterball’s
`
`rights in the BUTTERBALL Marks. Defendant’s actions are intentional and willful.
`
`68.
`
`Defendant has materially contributed to the above-described trademark dilution by
`
`having permitted and continuing to permit the distributors, wholesalers, and retailers identified
`
`above—and, upon information and belief, others—to offer for sale and sell the infringing
`
`BUTTERBALL wine. Defendant’s actions have occurred notwithstanding: (1) on information and
`
`belief, Defendant’s actual knowledge of the offering for sale and sale of such infringing products; (2)
`
`Defendant’s constructive knowledge of the offering for sale and sale of such infringing products; or,
`
`alternatively (3) Defendant’s willful blindness to the offering for sale and the sale of such infringing
`20
`
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`products.
`
`69.
`
`70.
`
`Defendant has realized unjust profits as a result of its dilution.
`
`As a result of Defendant’s dilution of the BUTTERBALL Marks, Butterball has
`
`suffered or will suffer damages, including lost sales, lost profits, and lost goodwill.
`
`71.
`
`Butterball is entitled to damages in an amount to be proven at trial under 15 U.S.C. §
`
`1117.
`
`72.
`
`Defendant’s actions have caused irreparable injury to Butterball’s reputation and
`
`goodwill and, unless enjoined, Defendant will continue its acts of dilution. Butterball has no
`
`adequate remedy at law.
`
`Seventh Claim For Relief
`Violation of the UDTPA – N.C. Gen. Stat. § 75-1.1, et seq.
`
`73.
`
`Butterball realleges and incorporates by reference the foregoing paragraphs as if fully
`
`restated herein.
`
`74.
`
`Defendant’s conduct, which is in or affecting commerce, constitutes unfair methods
`
`of competition and/or unfair or deceptive acts or practices within the meaning of N.C. Gen. Stat. §
`
`75-1.1(a) in that it causes likelihood of confusion with, or misunderstanding as to, affiliation,
`
`connection or association with Butterball and Defendant in connection with the BUTTERBALL
`
`Marks.
`
`75.
`
`On information and belief, Defendant’s unlawful conduct as set forth herein has been
`
`and continues to be willful, deliberate, and in bad faith.
`
`76.
`
`Defendant’s unlawful conduct has and will continue to cause irreparable damage to
`
`Butterball, for which Butterball has no adequate remedy at law. Unless enjoined, Defendant will
`
`continue the conduct, further injuring Butterball and confusing the public.
`
`On information and belief, Defendant has received revenues and profits as a result of
`21
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`Case 5:16-cv-00941-BO Document 1 Filed 12/12/16 Page 21 of 24
`
`77.
`
`
`
`
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`its unlawful conduct, to which Defendant is not entitled, and Butterball has also suffered damages as
`
`a result of such unlawful conduct, for which Defendant is responsible.
`
`78.
`
`As a result, Defendant should be liable to Butterball for treble damages and attorneys’
`
`fees under N.C. Gen. Stat. §§ 75-16 and 75-16.1.
`
`Eighth Claim For Relief
`Common Law Trademark Infringement
`
`79.
`
`Butterball realleges and incorporates by reference the foregoing paragraphs as if fully
`
`restated herein.
`
`80.
`
`Butterball is the owner of valid common law rights in the BUTTERBALL Marks,
`
`which it or its predecessors-in-interest have used continuously and in connection with the provision
`
`of various products and services, some of which are described in the above chart, long before
`
`Defendant’s adoption and first use of the BUTTERBALL Marks.
`
`81.
`
`Defendant’s actions complained of herein are likely to cause confusion, mistake or
`
`deception among consumers as to an affiliation, connection, or association of Defendant’s goods and
`
`services with Butterball and the BUTTERBALL Ma