Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1011045
`
`Filing date:
`
`10/24/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91249874
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Smoky Mountain Winery, Inc.
`
`JOHN T WINEMILLER
`MERCHANT & GOULD PC
`P O BOX 2910
`MINNEAPOLIS, MN 55402
`UNITED STATES
`dockmpls@merchantgould.com, jwinemiller@merchantgould.com, akre-
`is@merchantgould.com
`865-380-5960
`
`Motion to Suspend for Civil Action
`
`JOHN T. WINEMILLER
`
`dockmpls@merchantgould.com, jwinemiller@merchantgould.com, akre-
`is@merchantgould.com
`
`/John T. Winemiller/
`
`10/24/2019
`
`Motion for Suspension of Proceedings Based on A Relevant Civil Ac-
`tion.pdf(605961 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Smoky Mountain Winery, Inc.,
`
`
`
`
`
`King Distillery Co. LLC,
`
`
`
`
`
`
`
`Applicant.
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`Opposition No. 91249874
`
`Mark: SMOKY MOUNTAIN
`MOONSHINE
`
`
`App. No. 88/195362
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`)
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`MOTION FOR SUSPENSION OF PROCEEDINGS BASED ON
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`A RELEVANT CIVIL ACTION
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`
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`Opposer, Smoky Mountain Winery, Inc., hereby requests that the Board suspend this
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`Opposition proceeding pending the outcome of a civil action involving the Applicant, King
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`Distillery Co. By rule, “[w]henever it comes to the attention of the Board that a party or parties
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`to a case pending before it are involved in a civil action that may have a bearing on the Board
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`case, proceedings before the Board may be suspended until final determination of the civil
`
`action.” TBMP § 510.02(a) (emphasis added). Under these circumstances, the Board should
`
`suspend this Opposition proceeding until final determination of the civil action.
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`In accordance with TBMP § 510.02(a), the Board will suspend proceedings in a case
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`before it if the final determination of the other proceeding may have a bearing on the issues
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`before the Board outside of any unusual circumstances. 37 C.F.R. § 2.117(a). See, e.g., New
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`Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (civil
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`action need not be dispositive of Board proceeding, but only needs to have a bearing on issues
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`

`

`before the Board); General Motors Corp v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933,
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`1936-37 (TTAB 1992) (relief sought in federal district court included an order directing Office to
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`cancel registration involved in cancellation proceeding); Other Telephone Co. v. Connecticut
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`National Telephone Co., 181 USPQ 125, 126-27 (TTAB 1974) (decision in civil action for
`
`infringement and unfair competition would have bearing on outcome of Trademark Act § 2(d)
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`claim before Board), pet. denied, 181 USPQ 779 (Comm’r 1974). See also Tokaido v. Honda
`
`Associates Inc., 179 USPQ 861, 862 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp.,
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`171 USPQ 805, 806-07 (TTAB 1971); Martin Beverage Co. v. Colita Beverage Corp., 169
`
`USPQ 568, 570 (TTAB 1971).
`
`This Opposition involves no unusual circumstances. In this case, registration has been
`
`opposed by Opposer Smoky Mountain Winery on the grounds that it has superior rights in the
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`mark SMOKY MOUNTAIN WINERY (U.S. Reg. No. 5672173); that Applicant King Distillery
`
`Co. LLC’s mark SMOKY MOUNTAIN MOONSHINE (the subject of U.S. App. No.
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`88/195362) so resembles Opposer’s registered SMOKY MOUNTAIN WINERY mark as applied
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`to the goods identified in the Notice of Opposition as to be likely to cause confusion in trade; and
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`that Opposer will therefore be damaged if Applicant were allowed to secure the registration for
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`which it has made application.
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`Applicant King Distillery Co. LLC is currently the defendant in civil litigation in the case
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`of Ole Smoky Distillery, LLC v. King Distilling Co. LLC, No. 3:19-cv-00178-JRG-DCP, which is
`
`pending in the United States District Court for the Eastern District of Tennessee. A true and
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`correct copy of the Ole Smoky Distillery Complaint is attached hereto as Exhibit A.
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`In the civil litigation, Ole Smoky Distillery, LLC (“Ole Smoky Distillery”) contests
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`Applicant King Distillery Co. LLC’s purported use and registration of the mark SMOKY
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`2
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`

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`MOUNTAIN MOONSHINE (the subject of U.S. App. No. 88/195362) as an alleged
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`infringement of Ole Smoky Distillery’s rights in numerous registered/incontestable trademarks,
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`including the marks OLE SMOKY MOONSHINE (U.S. Reg. No. 5111844), OLE SMOKY
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`TENNESSEE MOONSHINE (U.S. Reg. No. 4069789), and other OLE SMOKY-formative
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`marks (e.g., OLE SMOKY MOONSHINE, U.S. Reg. No. 5111844) in connection with its
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`distilled spirits and related merchandise. This civil action raises claims of federal trademark
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`infringement, federal unfair competition, and federal dilution (among other claims) against
`
`Applicant King Distillery Co. regarding its use and attempted registration of the SMOKY
`
`MOUNTAIN MOONSHINE trademark.1
`
`
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`A decision in Ole Smoky Distillery, LLC v. King Distilling Co. LLC regarding
`
`infringement and unfair competition may have a direct impact on the outcome of the Trademark
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`Act § 2(d) claim asserted by Opposer before this Board. Ole Smoky Distillery, LLC seeks,
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`among other remedies, to enjoin use and registration of the SMOKY MOUNTAIN
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`MOONSHINE mark by Applicant King Distilling Co. A decision by the district court to enjoin
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`use and intended registration of the SMOKY MOUNTAIN MOONSHINE mark (also the subject
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`matter of the pending opposition) by Applicant would directly impact this proceeding. If
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`Applicant is enjoined from using the SMOKY MOUNTAIN MOONSHINE mark, it cannot
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`maintain the requisite intent-to-use or use of the opposed mark. Accordingly, Applicant would
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`need to abandon the opposed application, resulting in all claims in the current opposition
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`becoming moot. Therefore, suspension of this opposition proceedings will save time, effort, and
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`expense for both the parties and the Board.
`
`
`1 Opposer notes that Ole Smoky Distillery and King Distilling Co. are parties in U.S. Opposition No. 91249782,
`wherein Ole Smoky Distillery has asserted claims of priority and likelihood of confusion, and dilution by blurring,
`against King Distilling Co. regarding its SMOKY MOUNTAIN MOONSHINE trademark application (the same
`trademark application that is the subject of the current opposition between Smoky Mountain Winery and King
`Distilling Co.). This Opposition has been suspended pending final disposition of the aforementioned civil action.
`3
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`
`
`

`

`
`
`Based on the foregoing, Opposer respectfully requests suspension of this opposition
`
`pending a decision by the District Court in Ole Smoky Distillery, LLC v. King Distilling Co. LLC
`
`(Case No. 3:19-cv-00178-JRG-DCP)
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`
`
`
`
`
`
`
`
`
`
`Smoky Mountain Winery, Inc.,
`
`
`
`s/John T. Winemiller
`John T. Winemiller
`Merchant & Gould P.C.
`P.O. Box 2910
`Minneapolis, MN 55402
`Tel: 865-380-5960
`dockmpls@merchantgould.com
`jwinemiller@merchantgould.com
`
`4
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`

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`
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`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a true copy of the foregoing MOTION FOR
`
`SUSPENSION OF PROCEEDINGS BASED ON A CIVIL ACTION was served via email
`on the 24th day of October 2019 upon the following attorney of record for Applicant:
`
`
`Mark S. Graham
`The Graham Law Firm
`7416 Kentfield Drive
`Knoxville, TN 37919
`mgraham@graham-iplaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`s/John T. Winemiller
`John T. Winemiller
`
`
`
`5
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`

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`
`EXHIBIT A
`EXHIBIT A
`
`
`
`

`

`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TENNESSEE
`
`OLE SMOKY DISTILLERY, LLC,
`
`Plaintiff,
`
` No. ______________________
`
`v.
`
`JURY TRIAL REQUESTED
`
`KING DISTILLING CO. LLC,
`
`Defendant.
`
`COMPLAINT
`
`Plaintiff, Ole Smoky Distillery, LLC (“Ole Smoky”), for this Complaint against Defendant,
`
`King Distilling Co. LLC (“King Distilling”), states as follows:
`
`INTRODUCTION
`
`1.
`
`Founded in 2010, Ole Smoky is the leading distiller of premium moonshine in the
`
`world and was the first federally licensed distillery in East Tennessee history. In 2009, Tennessee
`
`laws were changed to allow distilleries such as Ole Smoky to make and sell moonshine.
`
`2.
`
`Ole Smoky’s moonshine products can be found at its distilleries, online, in grocery
`
`and liquor stores nationwide, and on-premise at many of the largest sporting and entertainment
`
`venues in the U.S. Ole Smoky’s products also include branded apparel, gifts, and accessories.
`
`3.
`
`One of Ole Smoky’s moonshine distilleries located in East Tennessee is the most
`
`visited in the world, and each year over four million people visit Ole Smoky’s three East Tennessee
`
`distilleries.
`
`4.
`
`Seeking to capitalize on Ole Smoky’s success and explosive growth, King Distilling
`
`has taken substantial steps towards opening a distillery in Sevier County under the mark SMOKY
`
`

`

`MOUNTAIN MOONSHINE. King Distilling intends to offer both distilled spirits and branded
`
`apparel under the SMOKY MOUNTAIN MOONSHINE mark.
`
`5.
`
`King Distilling’s planned “Smoky Mountain Moonshine” distillery is located in close
`
`proximity to Ole Smoky’s Sevier County distilleries. Further, the location of King Distilling’s
`
`distillery at which SMOKY MOUNTAIN MOONSHINE will be sold is located on the primary
`
`thoroughfare to Ole Smoky’s distilleries in Pigeon Forge and Gatlinburg along which Ole Smoky
`
`maintains a heavy presence through billboards and other advertising, and the millions of visitors to
`
`Ole Smoky’s distilleries are likely to be confused as to the source or affiliation of King Distilling’s
`
`goods as they relate to Ole Smoky’s goods.
`
`6.
`
`Despite being aware of Ole Smoky’s rights to its marks and the likelihood of
`
`consumer confusion, King Distilling continues to move forward with opening its retail location and
`
`selling distilled spirits and branded apparel under the SMOKY MOUNTAIN MOONSHINE mark.
`
`PARTIES
`
`7.
`
`Ole Smoky is a Tennessee limited liability company and currently has its principal
`
`address at 236 E. Main St. #136, Sevierville, Tennessee 37862.
`
`8.
`
`Upon information and belief, King Distilling is a Tennessee limited liability company
`
`having an address at 5543 Edmondson Pike, Suite 240, Nashville, Tennessee 37211.
`
`JURISDICTION AND VENUE
`
`9.
`
`This is an action for infringement of trademark and service mark rights and unfair
`
`competition under the common law and the United States Trademark Act of 1946 (the Lanham Act),
`
`15 U.S.C. § 1051, et seq.
`
`10.
`
`This Court has jurisdiction of this matter pursuant to 28 U.S.C. § 1331, 28 U.S.C.
`
`2
`
`

`

`§ 1338(a), and 28 U.S.C. § 1338(b).
`
`11.
`
`Personal jurisdiction over King Distilling is proper because King Distilling is
`
`domiciled, conducts business, and has committed and will commit acts of trademark infringement in
`
`Tennessee.
`
`12.
`
`Venue is proper in this Court pursuant to 28 U.S.C. § 1391 because King Distilling
`
`has committed and will commit acts of trademark infringement and is opening a regular place of
`
`business in this judicial district.
`
`FACTUAL ALLEGATIONS
`
`Ole Smoky Distillery’s Products and Marks
`
`13.
`
`Ole Smoky Distillery is and has been in the business of offering for sale high-quality
`
`distilled spirits and other goods throughout the United States since at least as early as 2010.
`
`14.
`
`Ole Smoky Distillery has continuously and substantially exclusively used the marks
`
`OLE SMOKY MOONSHINE, OLE SMOKY TENNESSEE MOONSHINE, and other OLE
`
`SMOKY-formative marks in connection with its distilled spirits and related merchandise since at
`
`least as early as 2010 (the “Ole Smoky Moonshine Marks”).
`
`15.
`
`Ole Smoky Distillery is the owner of multiple federal trademark registrations and
`
`pending applications for the Ole Smoky Moonshine Marks covering distilled spirits and other related
`
`goods, including the marks shown in the below table of U.S. trademark registrations:
`
`Mark
`OLE SMOKY
`TENNESSEE
`MOONSHINE
`OLE SMOKY
`TENNESSEE
`MOONSHINE
`
`Reg. or Ser. No.
`4,069,788
`
`Filing Date
`Jan. 13, 2011
`
`5,141,616
`
`Jul. 9, 2016
`
`Goods
`Alcoholic beverages except
`beers
`
`Hats; shirts; sweatshirts;
`tank tops; tops; short-sleeved
`or long-sleeved t-shirts
`
`3
`
`

`

`5,087,832
`
`August 19, 2015
`
`Alcoholic beverages
`containing fruit; distilled
`spirits
`
`5,501,669
`
`August 19, 2015
`
`Hats; Headwear; Shirts;
`Tops as clothing
`
`5,501,671
`
`Nov. 1, 2017
`
`Shot glasses; beverage
`glassware
`
`4,069,789
`
`Jan. 13, 2011
`
`Alcoholic beverages except
`beers
`
`5,029,462
`
`Sep. 29, 2013
`
`OLE SMOKY
`MOONSHINE
`
`5,111,844
`
`Oct. 30, 2013
`
`OLE SMOKY
`
`5,745,967
`
`May 7, 2019
`
`Button down shirts; hats;
`jackets; scarves; short-
`sleeved or long-sleeved t-
`shirts; sweatshirts; tank tops;
`tops; visors
`
`Button down shirts; hats;
`jackets; long-sleeved shirts;
`short-sleeved shirts; sweat
`shirts; tank tops; tops; visors;
`distilled spirits
`Retail store services
`featuring T-shirts, hoodies,
`hats, headwear, beanies,
`bandanas, ponchos, mugs,
`water bottles, shot glasses,
`candles, keychains, magnets,
`postcards, stickers, coasters,
`insulated sleeve holders for
`beverage containers, food
`products, soft drinks, and
`alcoholic beverages except
`beers; concession stand
`services featuring hot drinks,
`cold drinks, popcorn, ice
`
`4
`
`

`

`OLE SMOKY
`
`5,141,733
`
`Feb. 14, 2017
`
`OLE SMOKY
`
`4,096,942
`
`Nov. 1, 2010
`
`OLE SMOKY
`
`4,088,878
`
`Nov. 1, 2010
`
`OLE SMOKY
`OLE SMOKY
`
`4,092,396
`4,106,507
`
`Nov. 1, 2010
`Nov. 1, 2010
`
`OLE SMOKY
`
`4,106,515
`
`Nov. 2, 2010
`
`OLE SMOKY
`
`4,180,903
`
`Nov. 1, 2010
`
`OLE SMOKY
`
`4,580,363
`
`Nov. 1, 2010
`
`cream, cotton candy,
`pretzels, nachos and cheese,
`hot dogs, and chips;
`entertainment services in the
`nature of live musical
`performances; entertainment
`services, namely, moonshine
`and whiskey tastings
`Alcoholic beverages except
`beers
`Short sleeve t-shirts, long
`sleeve t-shirts, sweatshirts,
`jackets, tops, button down
`shirts, tank tops, hats,
`stocking hats, scarves, and
`visors
`Mugs; shot glasses; reusable
`plastic and metal water
`bottles sold empty; flasks;
`insulated containers for
`beverage bottles and cans;
`moonshine jugs and glass
`jars
`Bags, namely, backpacks
`Non-alcoholic bloody mary
`mix and cocktail mixes
`Metal key chains and
`novelty signs made of wood
`Pens; pencils; novelty signs
`made of paper or cardboard;
`bumper stickers; note pads;
`merchandise bags
`Leather and imitation leather
`wallets
`
`16.
`
`As shown below, the Ole Smoky Moonshine Marks prominently feature the term
`
`“Smoky”, often shown in close proximity to the term “Moonshine” that is also prominently featured
`
`in the stylized form of the Ole Smoky Moonshine Marks.
`
`5
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`

`

`17.
`
`Ole Smoky offers more than 70 creative moonshine flavors in retail locations around
`
`the world. Ole Smoky’s moonshine products can be found at its distilleries, online, in grocery and
`
`liquor stores nationwide, and on-premise at many of the largest sporting and entertainment venues in
`
`the U.S. Ole Smoky’s products also include branded apparel, gifts, and accessories.
`
`18.
`
`In 2018, Ole Smoky received over 4 million visitors at its three retail locations in
`
`Sevier County, Tennessee. One of Ole Smoky’s moonshine distilleries located in East Tennessee is
`
`the most visited in the world. The over four million visitors to Ole Smoky’s distilleries is greater than
`
`the estimated total number of visitors to all of Scotland’s visitors combined and is significantly more
`
`than the estimated 1.4 million visitors to the ten distilleries located on Kentucky’s Bourbon Trail.
`
`19.
`
`Ole Smoky’s retail locations in Sevier County features self-guided tours, distilled
`
`spirit tastings, live music, and retail shopping including clothing. Ole Smoky’s three distilleries
`
`include THE HOLLER℠ and THE BARRELHOUSE℠ which are located in Gatlinburg, TN, and
`
`THE BARN℠ located in Pigeon Forge, TN. Ole Smoky has also recently opened a distillery and
`
`retail location in Nashville, TN.
`
`20.
`
`Ole Smoky has expended considerable time, effort, and expense in promoting,
`
`advertising, and making well-known among the purchasing public and the trade in general Ole
`
`Smoky’s goods offered and provided under the Ole Smoky Moonshine Marks in commerce in the
`
`United States, with the result that Ole Smoky has established valuable and exclusive rights and
`
`goodwill in the Ole Smoky Moonshine Marks as symbols of a source or origin of Ole Smoky’s
`
`6
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`

`

`distilled spirit goods among the purchasing public and the trade in general.
`
`21.
`
`Ole Smoky advertises its products under the Ole Smoky Moonshine Marks
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`extensively throughout the United States and in East Tennessee. For example, Ole Smoky advertises
`
`under the Ole Smoky Moonshine Marks on nearly 40 billboards located along I-40 between
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`Knoxville and the North Carolina state line, and along Highway 66 between I-40 and Pigeon Forge.
`
`Each of Ole Smoky’s billboards located along Highway 66 between I-40 and Pigeon forge generate
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`an estimated 14 million consumer impressions annually.
`
`22.
`
`By reason of their inherent distinctiveness and the extensive, intensive, and
`
`substantially continuous use, promotion, marketing, and advertisement thereof, the Ole Smoky
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`Moonshine Marks are and have become distinctive, well known, and famous in commerce in the
`
`United States, and became well known and famous well before the first use or filing date of any mark
`
`owned by King Distilling.
`
`23.
`
`Ole Smoky has further developed substantial common law rights in and to the Ole
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`Smoky Moonshine Marks by virtue of its substantially continuous use, promotion, marketing, and
`
`advertisement of goods under the Ole Smoky Moonshine Marks, which are distinctive and well-
`
`known in the United States and throughout the world.
`
`24.
`
`The Ole Smoky Moonshine Marks are valid and subsisting marks, owned and not
`
`abandoned by Ole Smoky for use with Ole Smoky’s distilled spirits and other goods.
`
`25.
`
`Ole Smoky is the owner and beneficiary of all goodwill associated with the use of the
`
`Ole Smoky Moonshine Marks.
`
`King Distilling’s Planned Use of “Smoky Mountain Moonshine”
`
`26.
`
`Upon information and belief, King Distilling is the owner of record of U.S.
`
`7
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`

`

`Trademark Application Serial No. 88/195,362 for the mark SMOKY MOUNTAIN MOONSHINE
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`(“the Smoky Mountain Moonshine Mark”).
`
`27.
`
`The application to register the Smoky Mountain Moonshine Mark was filed on
`
`November 15, 2018 and provides that King Distilling intends to use the Smoky Mountain Moonshine
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`mark in connection with “distilled spirits” and “clothing, namely, tops, bottoms, t-shirts and hats.”
`
`28.
`
`Upon information and belief, King Distilling intends to offer various goods under the
`
`Smoky Mountain Moonshine Mark including distilled spirits and clothing, which are identical to
`
`goods registered under the Ole Smoky Moonshine Marks.
`
`29.
`
`King Distilling has taken concrete and tangible steps towards using the Smoky
`
`Mountain Moonshine Mark in connection with distilled spirits, apparel, and other related goods.
`
`30.
`
`Upon information and belief, King Distilling is in the process of opening a retail
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`location and offering for sale distilled spirits, apparel, and other goods under the Smoky Mountain
`
`Moonshine Mark.
`
`31.
`
`Upon information and belief, King Distilling has leased or purchased retail space
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`located at 1970 Winfield Dunn Pkwy., Sevierville, TN 37876.
`
`32.
`
`Upon information and belief, King Distilling intends to operate the Sevierville, TN
`
`location under the Smoky Mountain Moonshine Mark.
`
`33.
`
`Upon information and belief, King Distilling intends to manufacture and sell distilled
`
`spirit goods at the retail location in Sevierville, TN, and will further offer for sale goods including
`
`clothing and apparel at the same location, both under the Smoky Mountain Moonshine Mark.
`
`34.
`
`Upon information and belief, King Distilling intends to offer distilled spirits with a
`
`label featuring the Smoky Mountain Moonshine Mark.
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`8
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`

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`35.
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`King Distilling’s planned retail location is located approximately 10 miles from Ole
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`Smoky’s Pigeon Forge location along Highway 66 and less than 0.5 miles from at least one of Ole
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`Smoky’s billboards featuring the Ole Smoky Moonshine Marks, and consumers visiting Ole Smoky’s
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`Pigeon Forge and Gatlinburg retail locations would pass King Distilling’s retail location when
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`travelling to Ole Smoky’s retail locations along Highway 66.
`
`36.
`
`Concerned about the threat to its trademark rights, including the use of the Smoky
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`Mountain Moonshine Mark, Ole Smoky sent a letter to counsel for King Distilling on December 21,
`
`2018, advising that continued efforts to register or use the Smoky Mountain Moonshine Mark were
`
`likely to cause confusion with the Ole Smoky Moonshine Marks owned by Ole Smoky.
`
`37.
`
`Ole Smoky sent a follow up letter to counsel for King Distilling on January 23, 2019,
`
`again advising that continued efforts to register and use the Smoky Mountain Moonshine Mark
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`would cause confusion with Ole Smoky’s Ole Smoky Moonshine Marks and to refute the assertions
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`made in a response letter from King Distilling’s counsel dated January 10, 2019.
`
`38.
`
`King Distilling’s application to register the Smoky Mountain Moonshine Mark was
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`published at the U.S. Patent & Trademark Office on April 2, 2019, and Plaintiff filed and was
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`granted a first 90-day request for an extension of time to oppose Defendant’s application to register
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`the Smoky Mountain Moonshine Mark.
`
`39.
`
`Ole Smoky first learned that Defendant had taken additional steps towards using the
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`Smoky Mountain Moonshine Mark when the Tennessee Alcoholic Beverage Commission (“TABC”)
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`published its agenda for its meeting on April 23, 2019, and indicated that Defendant had sought
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`approval to open its retail distillery in Sevierville.
`
`40.
`
`King Distilling has applied to the TABC for approval of a license to operate its
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`9
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`location under the Smoky Mountain Moonshine Mark at the 1970 Winfield Dunn Pkwy., Sevierville,
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`TN 37876 location, and such approval was conditionally granted by the TABC on April 23, 2019.
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`41.
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`Despite Ole Smoky’s warnings, King Distilling has proceeded and continues to take
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`steps to open its retail location in Sevierville under the Smoky Mountain Moonshine Mark with an
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`awareness of Ole Smoky’s rights in and to the Ole Smoky Moonshine Marks and without the consent
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`or authorization of Ole Smoky.
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`42.
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`If King Distilling opens its location in Sevierville under the Smoky Mountain
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`Moonshine Mark, Ole Smoky will be damaged by consumer confusion, brand erosion, loss of its
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`profits, loss of goodwill, and other commercial and reputational harms.
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`COUNT I: FEDERAL TRADEMARK INFRINGEMENT
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`43.
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`Ole Smoky hereby re-alleges and incorporates by reference the allegations of all
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`proceeding paragraphs of this Complaint.
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`44.
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`Defendant King Distilling’s current and future use of the Smoky Mountain
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`Moonshine Mark is and will be a violation of 15 U.S.C. § 1114(1)(a).
`
`45.
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`The Ole Smoky Moonshine Marks are valid and subsisting marks owned by Plaintiff.
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`46. Without the consent of Plaintiff, Defendant has used and intends to use in commerce
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`a mark that is a colorable imitation of the Ole Smoky Moonshine Marks in connection with the sale,
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`offering for sale, distribution, profitable use, or advertising of goods and services provided by
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`Defendant by the use of the mark SMOKY MOUNTAIN MOONSHINE.
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`47. Without the consent of Plaintiff, Defendant has used and intends to use the mark
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`SMOKY MOUNTAIN MOONSHINE in a manner that is likely to cause confusion, mistake, or
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`deceive, in that the mark SMOKY MOUNTAIN MOONSHINE is to be used with goods and
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`services that are identical to those offered by Plaintiff and will therefore infringe on Plaintiff’s Ole
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`Smoky Moonshine Marks.
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`48.
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`Defendant’s acts were and are being committed with the knowledge that the use of
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`the mark SMOKY MOUNTAIN MOONSHINE is likely to cause confusion with Plaintiff’s Ole
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`Smoky Moonshine Marks.
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`49.
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`Plaintiff Ole Smoky has been and will continue to be damaged by Defendant’s use of
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`the Smoky Mountain Moonshine Mark.
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`COUNT II: FEDERAL UNFAIR COMPETITION
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`50.
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`Ole Smoky hereby re-alleges and incorporates by reference the allegations of all
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`proceeding paragraphs of this Complaint.
`
`51.
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`The SMOKY MOUNTAIN MOONSHINE Mark is confusingly similar to Plaintiff’s
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`previously used Ole Smoky Moonshine Marks and are used for identical and highly related goods
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`and/or services for which Plaintiff Ole Smoky has prior use of its Ole Smoky Moonshine Marks; and
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`use by Defendant in commerce of the SMOKY MOUNTAIN MOONSHINE mark for Defendant’s
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`goods and services as alleged herein is likely to cause confusion, mistake, and/or deception in
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`violation of 15 U.S.C. § 1125(a).
`
`52.
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`Defendant’s use of the mark SMOKY MOUNTAIN MOONSHINE for Defendant’s
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`goods and services falsely represents or suggests to the consumer and trade in general that the
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`products and services sold, offered for sale, or advertised by Defendant are provided, distributed, or
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`sold with the permission or authorization of Plaintiff or the source of goods and services provided,
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`distributed, or sold under Plaintiff’s Ole Smoky Moonshine Marks, and/or that Defendant’s goods
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`and services have been provided, manufactured, packaged, or distributed in compliance with the
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`quality standards maintained by Plaintiff for goods and services offered and sold under Plaintiff’s
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`Ole Smoky Moonshine Marks, in further violation of 15 U.S.C. § 1125(a).
`
`53.
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`The unauthorized use by Defendant of the Smoky Mountain Moonshine Mark as
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`alleged above constitutes false designation of origin in violation of 15 U.S.C. § 1125(a).
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`COUNT III: FEDERAL DILUTION
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`54.
`
`Ole Smoky hereby re-alleges and incorporates by reference the allegations of all
`
`proceeding paragraphs of this Complaint.
`
`55.
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`Plaintiff’s registered Ole Smoky Moonshine Marks are distinctive, famous and well-
`
`known by the general consuming public as designating the source of Plaintiff’s goods.
`
`56.
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`Defendant’s use of the Smoky Mountain Moonshine Mark will cause dilution of the
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`distinctive qualities of Plaintiff’s rights in its Ole Smoky Moonshine Marks if Defendant begins
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`selling goods and operating a retail location under the Smoky Mountain Moonshine Mark.
`
`57.
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`Plaintiff’s Ole Smoky Moonshine Marks are distinctive and famous within the
`
`meaning of 15 U.S.C. § 1125(c), and Defendant’s use of the Smoky Mountain Moonshine Mark is
`
`after Plaintiff’s marks became distinctive and famous.
`
`58.
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`Defendant willfully intends to trade on Plaintiff’s reputation and goodwill or to cause
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`dilution of Plaintiff’s Ole Smoky Moonshine Marks by its use of the Smoky Mountain Moonshine
`
`Mark in connection with related goods and services.
`
`59.
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`Plaintiff Ole Smoky will be damaged by loss of profits, loss of goodwill associated
`
`with its Ole Smoky Moonshine marks, loss of distinctiveness in and to the Ole Smoky Moonshine
`
`Marks, and other harm and damages caused by Defendant’s use of the Smoky Mountain Moonshine
`
`Mark.
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`COUNT IV: COMMON LAW TRADEMARK INFRINGEMENT
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`60.
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`Ole Smoky hereby re-alleges and incorporates by reference the allegations of all
`
`proceeding paragraphs of this Complaint.
`
`61.
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`Defendant’s use of the Smoky Mountain Moonshine Mark is an act of common law
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`trademark infringement in that Defendant has used and plans to use in commerce a mark that is a
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`colorable imitation of Plaintiff’s Ole Smoky Moonshine Marks in connection with the sale, offering
`
`for sale, distribution, and advertising of goods and services similar to those provided by Plaintiff
`
`under its Ole Smoky Moonshine Marks.
`
`62.
`
`Defendant plans to use the Smoky Mountain Moonshine Mark in such a manner as to
`
`cause confusion or mistake, or to deceive consumers because Defendant’s use of the Smoky
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`Mountain Moonshine will be in close geographic proximity to areas in which Plaintiff sells goods,
`
`operates retail locations, and advertises under its Ole Smoky Moonshine Marks.
`
`63.
`
`The Ole Smoky Moonshine Marks are strong and distinctive with respect to goods
`
`and services sold by Plaintiff under its marks.
`
`64.
`
`Defendant has used and intends to use the Smoky Mountain Moonshine Mark in
`
`connection with various goods including distilled spirits, clothing, and merchandise, which are
`
`identical to goods and services provided by Plaintiff under its Ole Smoky Moonshine Marks.
`
`65.
`
`Defendant’s acts have been and are being committed with the knowledge and intent
`
`to cause consumer confusion as to any association between goods sold by Defendant and those sold
`
`by Plaintiff under its Ole Smoky Moonshine Marks.
`
`66.
`
`Plaintiff has been and will be damaged by Defendant’s actions by loss of
`
`distinctiveness and goodwill in the Ole Smoky Moonshine Marks and loss of profits suffered by
`
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`Plaintiff.
`
`COUNT V: DILUTION UNDER THE TENNESSEE TRADEMARK ACT
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`67.
`
`Ole Smoky hereby re-alleges and incorporates by reference the allegations of all
`
`proceeding paragraphs of this Complaint.
`
`68.
`
`Defendant’s actions in connection with the Smoky Mountain Moonshine Mark will
`
`dilute the distinctive quality of Plaintiff’s Ole Smoky Moonshine Marks, which are distinctive and
`
`famous by way of Plaintiff’s substantial use and advertising of goods under the Ole Smoky
`
`Moonshine Marks as alleged herein.
`
`69.
`
`Plaintiff’s Ole Smoky Moonshine Marks are distinctive and famous within the
`
`meaning of T.C.A. § 47-25-513, and Defendant’s use of the Smoky Mountain Moonshine Mark is
`
`after Plaintiff’s marks became distinctive and famous.
`
`70.
`
`Defendant’s use of the Smoky Mountain Moonshine Mark have caused and will
`
`cause dilution of the distinctive qualities of Plaintiff’s rights in its Ole Smoky Moonshine Marks and
`
`their ability to identify and distinguish the source of Plaintiff’s goods and services provided under the
`
`Ole Smoky Moonshine Marks from the sources of the same or similar goods or services offered by
`
`others in the state of Tennessee.
`
`71.
`
`Plaintiff has been and will be damaged by Defendant’s actions in that Plaintiff will
`
`suffer damages, injury, and irreparable harm.
`
`72.
`
`Defendants acts have been and are being committed willfully and knowingly.
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`COUNT V: UNFAIR OR DECEPTIVE ACTS UNDER THE TENNESSEE CONSUMER PROTECTION ACT
`
`73.
`
`Ole Smoky hereby re-alleges and incorporates by reference the allegations of all
`
`proceeding paragraphs of this Complaint.
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`74.
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`Defendant’s actions alleged herein in connection with the Smoky Mountain
`
`Moonshine Mark will cause a likelihood of confusion or misunderstanding as to the source,
`
`sponsorship, approval or certification of Defendant’s goods as they related to goods sold by Plaintiff
`
`under its Ole Smoky Moonshine Marks.
`
`75.
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`Defendant’s actions are in violation of the Tennessee Consumer Protection Act
`
`(T.C.A. § 47-18-101, et seq.). Specifically, Defendant’s actions constitute unfair or deceptive acts
`
`prohibited by the Tennessee Consumer Protection Act at T.C.A. § 47-18-104(b) under at least
`
`subsections (1), (2) and (3).
`
`76.
`
`Plaintiff has been and will be damaged by Defendant’s actions in that Plaintiff will
`
`suffer damages, injury, and irreparable harm.
`
`77.
`
`Defendant’s unfair or deceptive acts have been and are being committed willfully and
`
`in knowing violation of the Tennessee Consumer Protection Act.
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`WHEREFORE, Ole Smoky Distillery, LLC prays for judgment against King Distilling as
`
`follows and asks this Court to:
`
`a.
`
`Enter a Declaratory Judgment holding that King Distilling’s efforts to use the Smoky
`
`Mountain Moonshine Mark in connection with the goods and services described herein would likely
`
`cause confusion, infringe, dilute, injure and otherwise impair the distinctiveness, reputation, and
`
`goodwill of Plaintiff’s Ole Smoky Moonshine Marks.
`
`b.
`
`Enter a preliminary and permanent injunction prohibiting King Distilling from
`
`opening its planned Sevierville, TN location or any other location or use of the Smoky Mountain
`
`Moonshine Mark.
`
`c.
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`Hold Defendant’s conduct as being willful and/or exceptional as defined in the
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`Lanham Act at 15 U.S.C. § 1117(a).
`
`d.
`
`Award Ole Smoky actual or statutory damages in an amount to be determined and
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`including any costs, attorney fees, lost profits, and other damages suffered by Ole Smoky as a result
`
`of Defendant’s planned and actual use of the Smoky Mountain Moonshine Mark.
`
`e.
`
`Award enhanced damages, including trebling of damage