Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA851938
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`Filing date:
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`10/13/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91233036
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`Party
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`Correspondence
`Address
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`Defendant
`Southern Foods, Inc.
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`NATHAN T HARRIS
`LANDO & ANASTASI LLP
`ONE MAIN STREET, 11TH FLOOR
`CAMBRIDGE, MA 02142
`UNITED STATES
`Email: nthtrademarkslaw.com@lalaw.com
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Other Motions/Papers
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`Nathan T. Harris
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`nharris@lalaw.com
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`/Nathan T. Harris/
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`10/13/2017
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`Attachments
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`S2242-5000 - Response to Order re Court Proceedings.pdf(356425 bytes )
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`
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`ESTTA Tracking number:
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`ESTTA851938
`
`Filing date:
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`10/13/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91233036
`
`Party
`
`Correspondence
`Address
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`Defendant
`Southern Foods, Inc.
`
`NATHAN T HARRIS
`LANDO & ANASTASI LLP
`ONE MAIN STREET, 11TH FLOOR
`CAMBRIDGE, MA 02142
`UNITED STATES
`Email: nthtrademarkslaw.com@lalaw.com
`
`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Other Motions/Papers
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`Nathan T. Harris
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`nharris@lalaw.com
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`/Nathan T. Harris/
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`10/13/2017
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`Attachments
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`S2242-5000 - Response to Order re Court Proceedings.pdf(356425 bytes )
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`
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`Opposer/Petitioner/
`Counterdefendant,
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`v.
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`SOUTHERN FOODS, INC.,
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`__________________________________________
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`BOKHARY FOODS, INC.,
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`Applicant/Registrant/
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`Counterclaimant.
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`_________________________________________ )
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`RESPONSE TO BOARD’S ORDER REGARDING DISTRICT COURT PROCEEDINGS
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`Proceeding No.: 91/233036
`Proceeding No.: 92/065486
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`
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`In response to the Board’s September 27, 2017 Order (Dkt. No. 18) in Proceeding No.
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`92/065486, Southern Foods, Inc. hereby submits copies of the pleadings in the co-pending U.S.
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`District Court litigation captioned Bokhary Foods, Inc. v. Southern Foods, Inc., Civ. No. Case
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`1:17-cv-11096-DJC (D. Mass.). Copies of the following pleadings are attached:
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` Exhibit 1: Complaint And Jury Demand [by Bokhary Foods, Inc.]
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` Exhibit 2: Answer and Counterclaims [by Southern Foods, Inc.]
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` Exhibit 3: Answer to the Counterclaim [by Bokhary Foods, Inc.]
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`Respectfully submitted,
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`
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`
`
` /Nathan T. Harris/
`Nathan T. Harris
`Peter C. Lando
`LANDO & ANASTASI, LLP
`One Main Street – 11th Floor
`Cambridge, MA 02142
`Tel: (617) 395-7013
`Fax: (617) 395-7070
`Email: nthtrademarks@lalaw.com
`Attorneys for Southern Foods, Inc.
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`‐ 1 -
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`CERTIFICATE OF SERVICE
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`I hereby certify that the foregoing document was served upon Bokhary Foods, Inc. this
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`13th day of October, 2017, by mailing a copy thereof via email to its counsel at the following
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`address:
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`marcus@scottcollinslaw.com
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`
` /Nathan T. Harris/
`Nathan T. Harris
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`‐ 2 -
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`Exhibit 1
`Exhibit 1
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`Case 1:17-cv-11096-DJC Document 1 Filed 06/14/17 Page 1 of 9
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`UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF MASSACHUSETTS
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`
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`Bokhary Foods, Inc
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`v.
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`PLAINTIFF
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`Civil Action No. _________________
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`JURY TRIAL DEMANDED
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`Southern Foods, Inc
`DEFENDANTS.
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`
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`COMPLAINT AND JURY DEMAND
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`Plaintiff Bokhary Foods, Inc. (“Bokhary”) hereby alleges as follows for its complaint against
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`Defendant Southern Foods, Inc. (“Southern”):
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`THE PARTIES
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`1. Bokhary Foods, the plaintiff, is a Massachusetts Corporation having its principal place of
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`business at 315 Moody Street Waltham, MA 02453.
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`2. On information and belief, defendant, Southern Foods, Inc., is a Massachusetts
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`Corporation having its principal place of business at nine Cummings Park, Woburn, MA,
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`01810.
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`3. Southern Foods, includes a division named Godavari Indian Restaurants, with a common
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`principal place of business, stated above. Southern Foods has committed the wrongful
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`acts, complained of herein, within this judicial district and elsewhere.
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`Case 1:17-cv-11096-DJC Document 1 Filed 06/14/17 Page 2 of 9
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`
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`JURISDICTION AND VENUE
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`4. This is a civil action for patent infringement, trademark infringement, unfair competition,
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`and false designations, descriptions, and representations arising under the laws of the
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`United States and under the state law and common law of the Commonwealth of
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`Massachusetts.
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`
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`5. This court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§
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`1331, 1338(a), and 1367.
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`6. This court has personal jurisdiction over Defendant, upon information and belief,
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`Defendant has knowingly and purposefully transacted business in Massachusetts by
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`selling, offering to sell, and/or distributing products, promotional materials, and
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`advertisements to residents of Massachusetts. In addition, the amount in controversy
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`exceeds $75,000, exclusive of interest and costs, and jurisdiction is, therefore, proper
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`pursuant to 28 U.S.C. § 1332(a), (b), and (c). Furthermore, this court has jurisdiction
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`over this case pursuant to 15 U.S.C. A. § 114(a) of the Lanham Act.
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`7. On information and belief, Defendant conducts business in this judicial district,
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`Defendant has caused tortious injury in this commonwealth through the wrongful acts
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`complained of herein, and/or the infringing goods have been advertised and/or distributed
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`in this state and, therefore, this court has personal jurisdiction over Defendant under the
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`
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`Case 1:17-cv-11096-DJC Document 1 Filed 06/14/17 Page 3 of 9
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`Massachusetts long arm statute, M.G.L. Ch. 223A, Section 3, and venue is proper under
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`28 U.S.C. § 1391.
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`
`
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`FACTUAL BACKGROUND
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`7. Plaintiff is the owner of the Godavari trademark, registration number 4426537. Plaintiff
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`located at Bokhary Foods of 315 Moody Street Waltham, MA 02453. The Godavari
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`trademark was registered October 29, 2013. The Godavari trademark specifies food
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`Products that are from the Godavari River. Godavari is a well-known river to the people
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`of Eastern India, who have over 80 specific food dishes. Bokhary has a wide variety of
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`food products, sold to the public, and has been utilizing their product since its registration
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`October 28, 2013.
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`8. Godavari food products are sold in stores, and bear the Godavari trademark prominently
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`on their labels. Plaintiff has spent substantial monetary sums to market the brand and to
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`show that it is NOT related to the Godavari River of India. While, in India, the rivers
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`name is well known, in the United States of America the Godavari trademark has taken
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`on its own meaning.
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`9. Defendant has a duplicate trademark for Godavari, registered May, 10th, 2016,
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`registration number 4955437, the Defendant was aware of the fact that Plaintiff had,
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`previously, informed them of their trademark. Defendant has continued to utilize the
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`Godavari’s trademark as a draw in customers.
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`Case 1:17-cv-11096-DJC Document 1 Filed 06/14/17 Page 4 of 9
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`10. Defendant is completely aware that their trademark was directly contrary to the
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`previously acquired plaintiff’s trademark. Plaintiff has made numerous attempts to stop
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`Defendant’s use of the mark. However, defendant has continued to make use of the
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`Godavari name without any licensure or permission of the plaintiff trademark owner.
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`The Defendants continued use of the Godavari mark has caused plaintiff to be seen as
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`both a food provider and a restaurant chain. At no point has defendant attempted to
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`distance their name from Plaintiff’s trademark.
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`11. Defendant states in a manner, which falsely suggests that, the Godavari trademark and
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`name are their property, and that the defendant develops all Godavari goods.
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`12. Defendant, using the Godavari trademark, has even begun to franchise out the idea to
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`patrons. The actions of Defendant, utilizing the good will of Plaintiff, have caused a
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`noticeable decline in the sales of Plaintiff.
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`
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`13. Defendant’s use of the trademark, without permission, has caused plaintiff to suffer
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`losses to both sales and in potential client’s belief that the defendant’s restaurant is the
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`same as the Plaintiff’s trademark.
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`
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`COUNT I FEDERAL TRADEMARK INFRINGEMENT
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`14. This Cause of Action for Federal Trademark Infringement arises under § 32 of the
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`Lanham Act, 15 U.S.C. § 1114(a) et seq.
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`
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`Case 1:17-cv-11096-DJC Document 1 Filed 06/14/17 Page 5 of 9
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`15. Defendant use of the product Godavari in commerce is likely to cause confusion,
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`mistake, or deception as to the origin of the Defendant’s products and mislead purchasers
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`and potential purchasers of the Defendants products to believe that the Defendants
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`products are those of the Plaintiff or are sponsored by them.
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`16. Godavari is a trademarked product of Plaintiff, trademark registration number 4426537,
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`issued October 29, 2013. The above stated acts of the defendant, use of the name
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`Godavari as their own trademark, constitute infringement of the plaintiff’s trademark in
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`violation of § 32 of the Lanham Act, 15 U.S.C. 1114.
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`17. Such use of the trademark has been and continues to be willful and deliberate.
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`18. Plaintiff has given the Defendant written notice of its infringement.
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`19. The above stated acts of infringement by the defendant have caused, and will continue to
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`cause, irreparable injury, loss, and damage to Plaintiff.
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`
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`COUNT II COMMON LAW TRADEMARK INFRINGEMENT
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`20. This cause of action for trademark infringement arises under the common law of
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`Massachusetts.
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`21. Defendant’s use of Godavari wordmark is likely to cause confusion, mistake, or
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`deception as to the origin of Defendant’s products and mislead purchasers and potential
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`purchasers of Defendant’s products to believe that Defendant’s products originate from,
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`or are in some way related to the Plaintiff.
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`22. The above stated actions of the Defendant constitute infringement of Plaintiff’s Godavari
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`trademark, in violation of the common law of Massachusetts.
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`Case 1:17-cv-11096-DJC Document 1 Filed 06/14/17 Page 6 of 9
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`23. Plaintiff has suffered damage to its business and or good will because of the Defendant’s
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`conduct, and the defendant is being unjustly enriched.
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`24. Plaintiff has given written notice to the defendant.
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`25. The aforesaid acts of Defendant have caused, and unless enjoined by this court, will
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`continue to cause, irreparable damage, loss, and injury to Plaintiff.
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`COUNT III DILUTION
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`26. This cause of action arises under 15 U.S.C. 1125(c) of the Lanham Act.
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`27. Plaintiff is the creator of Godavari, as described above, a “famous” mark known
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`throughout the region. Godavari food products are well known to the community.
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`28. Defendant knew, or should have known, of the Godavari trademark used in the same
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`geographical location at the time they utilized the trademark.
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`29. As a direct result of the Defendant’s usage of their trademark, Plaintiff’s trademark has
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`become “blurred” and has lost, and/or, will continue to lose its ability to serve as a unique
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`identifier of the plaintiff’s product.
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`30. Defendant’s infringement on Plaintiff’s mark has caused, and will continue to cause,
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`consumers to mistakenly associate the “famous” Plaintiff’s mark with the, Defendant’s
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`inferior or offensive trademark.
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`31. The defendant’s continued use of its mark has caused, and will continue to cause,
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`irreparable harm and injury to the franchisor and to the franchisor’s reputation and
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`goodwill, for which the franchisor has no adequate remedy at law.
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`32. The threat of future injury to the general public and to the franchisor’s business, identity,
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`goodwill and reputation necessitates the award of injunctive relief to prevent the
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`Case 1:17-cv-11096-DJC Document 1 Filed 06/14/17 Page 7 of 9
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`Defendant’s continued wrongful and false acts and/or the use and infringement of the
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`franchisor’s registered name and marks.
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`COUNT IV UNFAIR COMPETITION
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`33. This cause of action arises under 15 U.S.C. 1125(c) of the Lanham Act.
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`34. Plaintiff is the owner of Godavari Trademark, registration number 4426537, issued
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`October 29, 2013.
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`35. Defendant willfully ignored Plaintiff’s trademark, Defendant’s use constitutes a use in
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`commerce of a false designation of origin and/or a misleading description or
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`representation intended to misrepresent the nature, characteristics, qualities, or
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`geographic origin of his or her or another person’s goods, services, or commercial
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`activities.
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`36. Defendant’s acts, practices and conduct constitute unfair competition, false designation,
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`false advertising, and/or unfair and deceptive trade practices in that they are likely to
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`cause confusion and mistake by the franchisor’s customers, suppliers and franchisees,
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`and the general public.
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`37. As a direct result of Defendant’s use of the trademark, Plaintiff has, and will continue to,
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`suffer irreparable harm, damage to company goodwill, and injury as a result of willful
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`misuse of the mark.
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`38. Plaintiff has no adequate remedy at law.
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`39. The Plaintiff, and the general public’s, injury as a direct result of the defendant’s
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`infringement necessitates an award of injunctive relief against the defendants continued
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`use of the infringing mark.
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`Case 1:17-cv-11096-DJC Document 1 Filed 06/14/17 Page 8 of 9
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`COUNT V FALSE ADVERTISING
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`40. This cause of action arises under 15 U.S.C. 1125(a) of the Lanham Act.
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`41. Plaintiff is the owner of Godavari Trademark, registration number 4426537, issued
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`October 29, 2013.
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`42. The Plaintiff’s trademark has become inherently distinctive, famous, or has acquired a
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`secondary meaning.
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`43. The Defendant has continued to misuse the Plaintiff’s trademark in commerce as a false
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`designation of the goods origin and or a misleading description or representation intended
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`to misrepresent the nature, characteristics, qualities, or geographic origin of his or her or
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`another person’s goods, services, or commercial activities.
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`44. The Defendant’s actions, practices and conduct, have caused, and will continue to cause a
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`likelihood of confusion among the plaintiff’s customers, suppliers, and the public.
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`45. As a direct or proximate cause of the above-mentioned acts, the Plaintiff has been, and
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`may continue to be, substantially damaged in its business reputation and goodwill.
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`Prayer for Relief
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`Wherefore the Plaintiff prays for the following relief:
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`That the defendants and all officers, agents, servants, employees, attorneys and all other
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`persons in active concert or participation with any of them be enjoined and restrained
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`during the prayer pendency of this action permanently there after from using the name,
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`mark or designation GODAVARI or any confusingly similar name or mark in connection
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`with identifying defendants business.
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`Case 1:17-cv-11096-DJC Document 1 Filed 06/14/17 Page 9 of 9
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`That Plaintiff recover from Defendant the amount of damages sustained by Plaintiff as
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`found by the Court, in consequence of Defendant’s unlawful acts, together with
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`appropriate interest on such damages, and that, pursuant to Section 35 of the Lanham
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`Act, 15 U.S.C. § 1117, such damages may be Trebled.
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`Jury Trial Demand
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`In accordance with Federal Rule of Civil Procedure 38, Plaintiff demands a trial by jury on all
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`issues so triable.
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`Respectfully Submitted
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`
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`Marcus L. Scott, Esq. #692433
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`Marcus@Scottcollinslaw.com
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`ScottCollins LLP.
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`30 Massachusetts Ave. 01845
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`N. Andover, MA
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`Exhibit 2
`Exhibit 2
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`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 1 of 14
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`Civil Action. No. 1:17-cv-11096
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`JURY TRIAL DEMANDED
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`BOKHARY FOODS INC.,
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`Plaintiff,
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`v.
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`SOUTHERN FOODS, INC.,
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`Defendant.
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`SOUTHERN FOODS, INC.,
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`Counterclaimant,
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`v.
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`BOKHARY FOODS INC.,
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`Counterclaim Defendant,
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`ANSWER AND COUNTERCLAIMS
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`Defendant Southern Foods, Inc. (“Southern”), by its counsel, hereby sets forth its Answer
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`and Counterclaims, stating as follows:
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`1.
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`Southern lacks information or knowledge sufficient to form a belief as to the truth
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`of the allegations set forth in Paragraph 1 of the Complaint, and therefore denies those
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`allegations.
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`2.
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`Southern admits that it is a Massachusetts corporation having its principal place of
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`business at 9 Cummings Park, Woburn, Massachusetts 01810.
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`‐ 1 -
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`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 2 of 14
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`3.
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`Southern admits that it offers Indian restaurant services under the mark
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`GODAVARI. Southern denies that it has committed the wrongful acts complained of herein. To
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`the extent Paragraph 3 contains any further allegations, they are denied.
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`JURISDICTION AND VENUE
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`4.
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`Southern admits that this is a civil action for trademark infringement, unfair
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`competition, and false designation arising under the laws of the United States and under the state
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`law and common law of the Commonwealth of Massachusetts. Southern denies that this is a civil
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`action for “patent infringement,” and denies that it has infringed any valid trademarks of
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`Bokhary Foods, Inc. (“Bokhary”).
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`5.
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`6.
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`Southern admits that this Court has subject matter jurisdiction.
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`Southern admits that this Court has personal jurisdiction over Southern because of
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`the Counterclaims asserted herein, and admits that it has offered Indian restaurant services in
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`Massachusetts. To the extent Paragraph 6 contains any further allegations, they are denied.
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`
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`7 [part 1].
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`Southern admits that it conducts business in this judicial district, and
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`admits that venue properly lies in this district. Southern denies that it has caused tortious injury
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`or committed wrongful acts. To the extent the first numbered Paragraph 7 contains any further
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`allegations, they are denied.
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`FACTUAL BACKGROUND
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`7 [ part 2].
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`Southern admits that the Godavari River is a well-known river to the
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`people of Eastern India and beyond. To the extent the second numbered Paragraph 7 contains
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`allegations regarding the records of the United States Patent & Trademark Office (“USPTO”), no
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`response is required; the records speak for themselves. Southern lacks information or knowledge
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`‐ 2 -
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`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 3 of 14
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`sufficient to form a belief as to the truth of any remaining allegations of the second numbered
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`Paragraph 7, and therefore denies those allegations.
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`8.
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`Southern admits that the name of the Godavari River is well-known in India and
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`beyond, and, to the extent understood, denies that Bokhary’s alleged GODAVARI mark has
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`“taken on its own meaning” in the United States or elsewhere. Southern lacks information or
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`knowledge sufficient to form a belief as to the truth of any remaining allegations of Paragraph 8,
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`and therefore denies those allegations.
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`9.
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`To the extent that Paragraph 9 contains allegations regarding the records of the
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`USPTO, no response is required; the records speak for themselves. To the extent the remaining
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`allegations of Paragraph 9 are understood, they are denied.
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`10.
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`Southern admits that it has received correspondence from Bokhary’s counsel
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`regarding Southern’s GODAVARI mark. To the extent the remaining allegations of Paragraph
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`10 are understood, they are denied.
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`11.
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`To the extent the allegations of Paragraph 11 are understood, they are denied.
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`12.
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`To the extent the allegations of Paragraph 12 are understood, they are denied.
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`13.
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`To the extent the allegations of Paragraph 13 are understood, they are denied.
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`To the extent the caption “COUNT I FEDERAL TRADEMARK INFRINGEMENT”
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`contains any allegations, they are denied.
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`14.
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`Southern admits that the Complaint alleges trademark infringement under Section
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`32 of the Lanham Act. To the extent Paragraph 14 contains any further allegations, they are
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`denied.
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`15.
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`The allegations of Paragraph 15 are denied.
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`16.
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`To the extent the allegations of Paragraph 16 are understood, they are denied.
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`‐ 3 -
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`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 4 of 14
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`17.
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`The allegations of Paragraph 17 are denied.
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`18.
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`Southern admits that it has received correspondence from Bokhary’s counsel
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`regarding Southern’s GODAVARI mark. To the extent Paragraph 18 contains any further
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`allegations, they are denied.
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`19.
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`The allegations of Paragraph 19 are denied.
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`To the extent the caption “COUNT II COMMON LAW TRADEMARK
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`INFRINGEMENT” contains any allegations, they are denied.
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`20.
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`Southern admits that the Complaint alleges common law trademark infringement.
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`To the extent Paragraph 20 contains any further allegations, they are denied.
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`21.
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`The allegations of Paragraph 21 are denied.
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`22.
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`The allegations of Paragraph 22 are denied.
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`23.
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`The allegations of Paragraph 23 are denied.
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`24.
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`Southern admits that it has received correspondence from Bokhary’s counsel
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`regarding Southern’s GODAVARI mark. To the extent Paragraph 24 contains any further
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`allegations, they are denied.
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`25.
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`The allegations of Paragraph 25 are denied.
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`To the extent the caption “COUNT III DILUTION” contains any allegations, they are
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`denied.
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`26.
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`Southern admits that the Complaint purports to allege a violation of 15 U.S.C. §
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`1125(c). To the extent Paragraph 26 contains any further allegations, they are denied.
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`27.
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`Southern denies that Bokhary’s alleged GODAVARI mark is a famous mark.
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`Southern lacks information or knowledge sufficient to form a belief as to the truth of the second
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`‐ 4 -
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`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 5 of 14
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`sentence of Paragraph 27, and therefore denies that allegation. To the extent Paragraph 27
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`contains any further allegations, they are denied.
`
`28.
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`The allegations of Paragraph 28 are denied.
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`29.
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`The allegations of Paragraph 29 are denied.
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`
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`30.
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`Southern denies that Bokhary’s alleged GODAVARI mark is a famous mark, and
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`expressly denies that any of Southern’s marks are “inferior or offensive.” To the extent
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`Paragraph 30 contains any further allegations, they are denied.
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`31.
`
`To the extent the allegations of Paragraph 31 are understood, they are denied.
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`32.
`
`To the extent the allegations of Paragraph 32 are understood, they are denied.
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`To the extent the caption “COUNT IV UNFAIR COMPETITION” contains any
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`allegations, they are denied.
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`33.
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`Southern admits that the Complaint purports to allege a violation of 15 U.S.C. §
`
`1125(c). To the extent Paragraph 33 contains any further allegations, they are denied.
`
`34.
`
`To the extent that Paragraph 34 contains allegations regarding the records of the
`
`USPTO, no response is required; the records speak for themselves.
`
`35.
`
`The allegations of Paragraph 35 are denied.
`
`36.
`
`The allegations of Paragraph 36 are denied.
`
`37.
`
`The allegations of Paragraph 37 are denied.
`
`38.
`
`The allegations of Paragraph 38 are denied.
`
`39.
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`The allegations of Paragraph 39 are denied.
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`To the extent the caption “COUNT V FALSE ADVERTISING” contains any allegations,
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`they are denied.
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`
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`‐ 5 -
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`
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`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 6 of 14
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`40.
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`Southern admits that the Complaint purports to allege a violation of 15 U.S.C. §
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`1125(a). To the extent Paragraph 40 contains any further allegations, they are denied.
`
`41.
`
`To the extent that Paragraph 41 contains allegations regarding the records of the
`
`USPTO, no response is required; the records speak for themselves.
`
`42.
`
`To the extent the allegations of Paragraph 42 are understood, they are denied.
`
`43.
`
`The allegations of Paragraph 43 are denied.
`
`44.
`
`The allegations of Paragraph 44 are denied.
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`45.
`
`The allegations of Paragraph 45 are denied.
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`To the extent that Bokhary’s Prayer for Relief contains any allegations, they are denied.
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`
`
`WHEREFORE, Southern denies that Bokhary is entitled to any relief from the Court.
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`
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`AFFIRMATIVE DEFENSES
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`First Defense – Failure to State A Claim
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`Bokhary’s Complaint fails to state a claim upon which relief may be granted.
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`Second Defense - Non-Infringement
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`Southern has not infringed and does not infringe any valid and enforceable trademark of
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`Bokhary.
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`Third Defense - Invalidity
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`Bokhary’s alleged GODAVARI trademark has not acquired secondary meaning. The
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`asserted U.S. Registration No. 4,426,537 (the “’537 Registration”) and the alleged GODAVARI
`
`mark on which it is based are invalid under Section 2 of the Lanham Act, 15 U.S.C. § 1052 on
`
`the ground that Bokhary’s Mark is primarily geographically descriptive under Sections 2(e)(2).
`
`
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`‐ 6 -
`
`
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`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 7 of 14
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`Fourth Defense – Estoppel/Laches/Waiver
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`Bokhary’s claims are barred, in whole or in part, by the doctrines of estoppel, laches,
`
`and/or waiver. Bokhary delayed filing suit for an unreasonable and inexcusable length of time
`
`after becoming aware of Southern’s GODAVARI mark. This delay caused Southern to suffer
`
`material prejudice, including potential economic and evidentiary harm.
`
`Fifth Defense – Limitation of Remedies
`
`Bokhary is not entitled to injunctive relief because any alleged injury to Bokhary is not
`
`immediate or irreparable, and Bokhary has an adequate remedy at law.
`
`Sixth Defense – Speculative Damages
`
`Bokhary is not entitled to damages because any alleged damages are speculative.
`
`COUNTERCLAIMS
`
`For its counterclaim against Plaintiff Bokhary Foods Inc. (“Bokhary”), Counterclaim-
`
`Plaintiff Southern Foods, Inc. (“Southern”) alleges as follows:
`
`THE PARTIES
`
`
`
`1.
`
`Southern is a Massachusetts corporation with its principal place of business at 9
`
`Cummings Park, Woburn, Massachusetts 01810.
`
`
`
`2.
`
`Upon information and belief, Bokhary is a Massachusetts corporation with its
`
`principal place of business at 315 Moody Street, Waltham, Massachusetts 02453.
`
`
`
`JURISDICTION AND VENUE
`
`
`
`3.
`
`This Court has subject matter jurisdiction under 28 U.S.C. § 1331, as this case
`
`arises under the Lanham Act, 15 U.S.C. § 1125. Venue is proper in this Court under 28 U.S.C. §
`
`1391.
`
`
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`‐ 7 -
`
`
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`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 8 of 14
`
`FACTUAL ALLEGATIONS
`
`
`
`4.
`
`Bokhary’s alleged GODAVARI mark refers to the Godavari River, the second-
`
`longest river in India. The Godavari River is well-known in India, and to people of Indian
`
`descent around the world, including in this judicial district. Relatedly, “Godavari” is used to refer
`
`to the region in which the river is located, including the Godavari District.
`
`5.
`
`The Godavari region of India is well-known as a source of rice and rice products
`
`to the people of India, to people of Indian descent throughout the world, to those who otherwise
`
`have family ties to India, and to those who have traveled to or are otherwise familiar with India.
`
`Bokhary concedes as much, indicating that “[t]he Godavari trademark specifies food products
`
`that are from the Godavari River”; that “Godavari is a well-known river to the people of Eastern
`
`India”; and that “in India, the rivers [sic] name is well known[.]” (Complaint, ¶¶ 7, 8.)
`
`
`
`6.
`
`The attached Exhibits 1-3 demonstrate that the Godavari region is generally
`
`known, both to consumers in the United States and elsewhere, as a major source of rice and rice
`
`products, the principal agricultural products of the region:
`
` Exhibit 1: NDTV.com, which claims to be “the only English News Channel from
`
`India which is beamed in the UK, USA, Canada, South Africa, Middle East,
`
`Australia, New Zealand, Mauritius and most of the SAARC Countries to reach out to
`
`the Indian Diaspora,” notes that “the Krishna, West and East Godavari districts [are]
`
`often called the rice bowl of the country.” NDTV.com, “Andhra Pradesh's 50-Year-
`
`Old Dream Comes True as Krishna Meets Godavari,” accessible at
`
`http://www.ndtv.com/india-news/godawari-krishna-inter-linking-of-two-massive-
`
`rivers-is-a-dream-come-true-1218426 (last accessed July 25, 2017) (emphasis added).
`
`
`
`‐ 8 -
`
`
`
`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 9 of 14
`
` Exhibit 2: Encyclopædia Britannica notes that “the development of a navigable
`
`irrigation-canal system [at the mouth of the Godavari River], linking its delta with
`
`that of the Krishna River to the southwest, has made the land one of the richest rice-
`
`growing areas of India.” Encyclopædia Britannica, “Godavari River”, accessible at
`
`https://www.britannica.com/place/Godavari-River (last accessed July 25, 2017)
`
`(emphasis added).
`
` Exhibit 3: A travel guide explains that “The rice-growing delta of the Krishna and
`
`Godavari rivers is one of Andhra Pradesh's most prosperous and densely populated
`
`regions, and the core region of Andhra culture.” Footprint Guides, “Krishna-Godavari
`
`Delta,” accessible at http://www.footprinttravelguides.com/asia/india/andhra-
`
`pradesh/krishna-godavari-delta/ (last accessed July 25, 2017) (emphasis added).
`
`
`
`
`
`7.
`
`Bokhary’s U.S. Registration No. 4,426,537 (the “’537 Registration”) recites “rice;
`
`rice-based snack foods; rice flour; flour for food; edible flour; soya flour; wheat flour; pulse flour
`
`for food; flour-based chips; pickles and pickle relish.”
`
`
`
`8.
`
`When Bokhary filed U.S. Appl. Serial No. 85/717,891 (the ’891 Application”),
`
`which registered as the ’537 Registration, it did not disclose the geographic significance of the
`
`term “Godavari” to the USPTO. The records of the USPTO confirm that the Examining Attorney
`
`assigned to examine the ’891 Application also did not consider whether the term had any
`
`geographic significance.
`
`9.
`
`The primary significance of “Godavari” is a generally known geographic region,
`
`namely the Godavari River and surrounding region, known for its rice and related goods.
`
`
`
`‐ 9 -
`
`
`
`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 10 of 14
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`Relevant consumers would be likely to believe that the goods of the ’537 Registration are grown,
`
`manufactured, or otherwise originate in the Godavari region of India.
`
`
`
`10.
`
`Since the 1990s, Indian-born immigrants have been the second largest immigrant
`
`group in the United States. According to the U.S. Census Bureau, as of 2013 there were roughly
`
`4 million people of Asian Indian descent living in the United States, with more than 85,000
`
`living in Massachusetts, primarily in the Greater Boston area.
`
`
`
`11.
`
`Upon information and belief, Bokhary’s food products are primarily sold through
`
`Indian and Southeast Asian market stores and other channels of trade directed to consumers who
`
`are from India, are of Indian descent, or are otherwise familiar with Indian food products and the
`
`regions in which they are often grown or produced.
`
`Count I – Declaration of Geographic Descriptiveness of
`Bokhary’s Alleged GODAVARI Mark
`
`Southern restates and incorporates herein by reference the allegations in
`
`12.
`
`Paragraphs 1-11.
`
`13.
`
` Bokhary’s alleged GODAVARI mark consists of matter which, when applied to
`
`its goods, is primarily geographically descriptive under 15 U.S.C. § 1052(e)(2).
`
`14.
`
`The primary significance of Bokhary’s alleged GODAVARI mark to these
`
`members of the consuming public is the name of the Godavari river and surrounding region,
`
`which is famous for growing and producing rice and other food products offered Bokhary.
`
`Indeed, Bokhary alleges that “[t]he Godavari trademark specifies food products that are from the
`
`Godavari River,” which it concedes is well-known to people from India. (See Complaint, ¶¶ 7,
`
`8.)
`
`15. Bokhary’s alleged GODAVARI mark did not achieve secondary meaning
`
`between the time it allegedly began using its mark in 2013 and the date by which Southern began
`
`
`
`‐ 10 -
`
`
`
`Case 1:17-cv-11096-DJC Document 4 Filed 07/28/17 Page 11 of 14
`
`using its GODAVARI mark, at least as early as June 2015. That is, Bokhary cannot demonstrate
`
`that as of June 2015, “a substantial portion of the consuming public associate[d] [the
`
`GODAVARI mark] specifically with [Bokhary’s] business.” See Boston Beer Co. Ltd. v. Slesar
`
`Bros. Brewing Co., Inc., 9 F.3d 175 (1993). Rather, in June 2015 and continuing through today,
`
`consumers would understand Bokhary’s alleged GODAVARI mark to refer to the famous river
`
`and region where Bokhary’s goods originate.
`
`16.
`
`In fact, Bokhary’s marketing materials and product packaging strengthen the
`
`geographic association in the minds of consumers. Bokhary’s website indicates that its goods
`
`originate in the Godavari region by being “[g]rown in the Indian states of Andhra Pradesh
`
`(Godavari Dist).” See Exhibit 4, “Home Page,” accessible at http://godavaririce.com/i.php (last
`
`accessed July 25, 2017). And Bokhary’s product packaging bears the GODAVARI mark along
`
`with a depiction a village on a river bank, evoking the Godavari River and surrounding region in
`
`which B
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