Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1060242
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`Filing date:
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`06/05/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91255551
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`Party
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`Correspondence
`Address
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`Defendant
`C F Burger Creamery
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`JULIE A GREENBERG
`FISHMAN STEWART PLLC
`800 TOWER DRIVE SUITE 610
`TROY, MI 48098
`UNITED STATES
`tmdocketing@fishstewip.com, jgreenberg@fishstewip.com, mather-
`ton@fishstewip.com
`248-594-0600
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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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`Attachments
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`Motion to Suspend for Civil Action
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`Julie A. Greenberg
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`jgreenberg@fishstewip.com, mstewart@fishstewip.com, Bman-
`dell@fishstewip.com, MAtherton@fishstewip.com, mfeahther@fishstewip.com
`
`/Julie A. Greenberg/
`
`06/05/2020
`
`Motion to Suspend Vol 1.pdf(2216002 bytes )
`Motion to Suspend Vol 2.pdf(2795204 bytes )
`Motion to Suspend Vol 3.pdf(5125108 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`DAVID FLORENCE
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`
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`Opposer,
`
`
`v.
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`
`)
`)
`)
`)
`)
`)
`)
`C. F. BURGER CREAMERY,
`)
`
`
`)
`
`Applicant.
`__________________________________________/
`
`
`Opposition No. 91255551
`Application Serial No. 88550770
`Mark: TWIN PINES FARM DAIRY
`
`APPLICANT’S MOTION TO SUSPEND FOR CIVIL ACTION
`
`Applicant, C.F. Burger Creamery, by and through its undersigned counsel, hereby moves
`
`pursuant to Trademark Rule of Practice 2.117(a) (37 C.F.R. § 2.117(a)) and TBMP § 510.02(a)
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`that the Board suspend Opposition No. 91255551, pending final disposition of a recently-filed
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`civil action between the same parties (C.F. Burger Creamery v. David Florence, Civil Action
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`No. 2:20-cv-02936-EAS-EPD (U.S. Dist. Ct., S.D. Ohio)), as the civil action raises identical
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`issues of fact and law as in the opposition. As grounds for this motion, Applicant states as
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`follows:
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`
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`BACKGROUND
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`On July 30, 2019, Applicant filed Application Serial No. 88550770 for the mark TWIN
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`PINES FARM DAIRY, which currently recites: “Dairy products, namely, cream, half and half,
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`table cream, light cream, whipping cream, non-alcoholic egg nog” in International Class 29.
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`This application was published for opposition on December 31, 2019. On January 29, 2020,
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`Opposer requested a 30-day extension of time to oppose, which was granted. Subsequently,
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`Opposer requested a 60-day extension of time to oppose, which was likewise granted.
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`

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`On April 29, 2020, Opposer filed a Notice of Opposition, wherein Opposer appears to
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`assert allegations relating to likelihood of confusion and priority of trademark rights.1
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`The instant Opposition appears to have been fueled by the recent development of
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`Applicant charging Opposer with trademark infringement for commencing sales of dairy
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`products under Applicant’s TWIN PINES mark. Despite several written requests to cease plans
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`to sell under the mark, Opposer has refused to comply, causing Applicant to file the attached
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`federal complaint. See Exhibit A (hereafter, the “Complaint”).
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`The lawsuit seeks an injunction and damages associated with Opposer’s use of the mark
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`TWIN PINES DAIRY in connection with dairy products. This motion seeks to suspend the
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`instant Opposition while the federal lawsuit proceeds, under TBMP § 510.02(a).
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`ARGUMENT
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`It is standard procedure for the Board to suspend administrative proceedings such as this,
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`pending the outcome of a civil action between the same parties involving related issues. See e.g.,
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`6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:47 (4th ed. 2013)
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`(citing New Orleans La. Saints L.L.C. & NFL Prop. L.L.C. v. Who Dat, Inc., 99 U.S.P.Q.2d 1550
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`(TTAB 2011) (opposition proceedings suspended because in pending civil litigation applicant
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`alleged infringement of the same mark by the parties who are opposers).
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`The instant Opposition proceedings should be suspended pending the outcome of
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`Applicant’s civil action against Opposer as Opposer and Applicant are the only parties to the
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`both proceedings, and the opposition has at its core the same issues of law as here.
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`Specifically, the Complaint recites a priority of rights and likelihood of confusion (i.e.,
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`trademark infringement). Opposer claimed the same ground – likelihood of confusion – in the
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`1 The pleadings appear to claim priority in the TWIN PINES mark, although they are
`unintelligible.
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`2
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`

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`instant proceeding. Inherent in each proceeding is an analysis of Applicant’s priority of
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`trademark rights over Opposer.
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`Therefore, the federal civil action will likely be dispositive of the issues in this
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`Opposition proceeding, and will, at the least, have a bearing on the issues. Where the District
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`Court’s decision will be dispositive of the issues before the Board, a “motion to suspend
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`proceedings is well taken.” See Gen. Motors Corp. v. Cadillac Club Fashions Inc., 22
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`U.S.P.Q.2d 1933 (TTAB 1992), abrogation on other grounds recognized by Gaylord Entm’t. Co.
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`v. Calvin Gilmore Prods., Inc., 59 U.S.P.Q.2d 1369 (TTAB 2000).
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`While suspension of this proceeding is generally within the discretion of the Board, it is
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`respectfully asserted that the pending federal court case merits suspension. TBMP § 510.02(a)
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`(cases cited). Specifically, the TBMP states that: “Unless there are unusual circumstances, the
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`Board will suspend proceedings in the case before it if the final determination of the other
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`proceeding may have a bearing on the issues before the Board.” See TBMP § 510.02(a)
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`(emphasis added). 2
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`In this case, the parties to this Opposition are identical to those of the federal court
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`proceeding. The issues will likely be identical. In addition, suspension would avoid the
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`undesirable result of the parties litigating the same issue in two forums, with potentially
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`inconsistent results and would minimize waste of both the parties’ and the Board’s resources.
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`For these reasons, Applicant requests that this matter be suspended pending the outcome of the
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`federal court litigation.
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`2 Referencing B&B Hardware, Inc. v. Hargis Indus., Inc., 35 U.S. 1293 (2015), 113 USPQ2d
`2045, TBMP 510.02(a) points out that, although the Supreme Court in B&B Hardware held that
`issue preclusion can be based on a decision by the Board in a case in which the ordinary
`elements of issue preclusion are met, the Board’s policy to suspend in favor of a civil action has
`not changed. As here, a civil action may involve other matters outside Board jurisdiction and
`may consider broader issues beyond right to registration and, therefore, judicial economy is
`usually served by suspension.
`
`
`
`3
`
`

`

`WHEREFORE, Applicant respectfully requests that this Opposition proceeding be
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`suspended until termination of the above-referenced civil action, including all appeals and
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`remands.
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`
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`
`
`
` Respectfully submitted,
`
`Date: June 5, 2020
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`By: /Julie A. Greenberg/
`
`Julie A. Greenberg
` Michael B. Stewart
` Barbara L. Mandell
` Melissa R. Atherton
`
`Fishman Stewart PLLC
`
`800 Tower Drive., Suite 610
`
`Troy, MI 48098
`
`(248) 594-0600
`
`Attorneys for Applicant
`
`CERTIFICATE OF SERVICE
`
` I
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` hereby certify that I served the foregoing Applicant’s Motion to Suspend for Civil Action
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`upon Opposer by causing a true and correct copy thereof to be sent via e-mail to
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`frauditors@aol.com.
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`
`
`Date: June 5, 2020
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`
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`/Marilyn Feather/
`Marilyn Feather
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`4
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`

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`EXHIBIT A
`EXHIBIT A
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`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 1 of 30 PAGEID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF OHIO
`EASTERN DIVISION
`
`CASE NO.
`
`JUDGE
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`C.F. BURGER CREAMERY CO.
`)
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`A Michigan company,
`
`)
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`
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`
`)
`
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`Plaintiff,
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`
`)
`
`
`
`
`
`
`)
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`v.
`
`
`
`
`)
`
`
`
`
`
`
`)
`
`DAVID L. FLORENCE,
`
`)
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`An individual,
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`
`)
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`
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`
`)
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`Defendant.
`
`
`____________________________________
`
`
`VERIFIED COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR
`TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
`
`Plaintiff C.F. Burger Creamer Co. (“Plaintiff”) asserts the following claims against David
`
`L. Florence, an individual doing business as Twin Pines Dairy (“Defendant”).
`
`
`
`1.
`
`NATURE OF THE ACTION
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`This is a civil action for damages and injunctive relief alleging acts of common
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`law and registered trademark infringement and unfair competition under the Federal Lanham
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`Act, 15 U.S.C. §1125(a) and 15 U.S.C. § 1114, and for unfair competition and passing off under
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`Ohio common law and for violations of the Ohio Deceptive Trade Practices Act, O.R.C. §4165,
`
`et seq.
`
`
`
`THE PARTIES
`
`2.
`
`Plaintiff is a Michigan corporation, with a principal place of business at 8101
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`Greenfield, Detroit, Michigan, 48228.
`
`
`
`1
`
`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 2 of 30 PAGEID #: 2
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`3.
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`Defendant is an individual. On information and belief, Defendant has an Ohio
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`trade name registration dated September 9, 2019, for “TWIN PINES DAIRY.” The address
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`associated with this registration, Document Number 201925204120, is 77 West Brand Road,
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`Little Hocking, Ohio, 45742.
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`JURISDICTION AND VENUE
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`4.
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`This Court has original jurisdiction over the subject matter of this action pursuant
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`to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1332 and 1338(a) and (b). On information and
`
`belief, the parties are citizens of different states and the amount in controversy exceeds the
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`jurisdictional limit of this Court. Thus, jurisdiction over the state law claims is also appropriate
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`under 28 U.S.C. § 1367(a) and principles of supplemental jurisdiction. The state law claims are
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`so related to Plaintiff’s federal trademark infringement claims as to be part of the same case or
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`controversy under Article III of the United States Constitution.
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`5.
`
`This Court has personal jurisdiction over Defendant because it resides in the State
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`of Ohio, does business in this District and has committed the acts complained of in this District.
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`6.
`
`
`
`7.
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`Venue in this judicial District is proper pursuant to 28 U.S.C. §§ 1391(b) and (c).
`
`PLAINTIFF’S ACTIVITIES AND PROPRIETARY RIGHTS
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`Plaintiff sells a wide variety of dairy products made from natural milk and cream,
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`such as Half & Half, Sour Cream, Heavy Whipping Cream, Egg Nogs, and Coffee Cream, and
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`dairy-alternative beverages, to consumers throughout a number of states, including throughout
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`Ohio, under, among other brands, the well-known brand TWIN PINES FARM DAIRY (“TWIN
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`PINES”).
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`
`
`2
`
`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 3 of 30 PAGEID #: 3
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`8.
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`The TWIN PINES brand has its roots in Michigan dating back to at least 1929,
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`and became famous for selling home delivery fresh dairy products in an iconic milk truck
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`pictured here:
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`9.
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`In the 1950s, TWIN PINES produced the most milk of any locally owned dairy
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`in Michigan, with 85% of its total volume of milk sold in classic glass bottles (pictured below)
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`delivered directly to homes in Detroit, its suburbs, and neighboring cities. Detroit had a
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`population of over 1.8 million people during the 1950s.
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`
`
`
`
`3
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`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 4 of 30 PAGEID #: 4
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`
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`10.
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`Houses throughout Michigan sported TWIN PINES milk boxes, such as the one
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`pictured here, for delivery by the neighborhood “milk men.”
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`
`
`
`
`4
`
`
`
`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 5 of 30 PAGEID #: 5
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`11.
`
`TWIN PINES adopted and promoted as its mascot “Milky the Clown” who
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`became a beloved local legend, with a televised children’s variety show, “Milky’s Party Time,”
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`airing on weekends from 1950 to 1967. During Milky the Clown’s magic show, the children of
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`the audience would shout the magic word “TWIN PINES!” Children could also win a prize from
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`the “TWIN PINES Toy House.” The television show was a local phenomenon, with a two year
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`waiting list for tickets, and featured, along with Milky the Clown, actors dressed as TWIN
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`PINES milkmen, all the while promoting the TWIN PINES brand and TWIN PINES telephone
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`number “Texas-four-one-oh-oh,” which was repeated throughout the show, urging kids to
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`persuade their parents to get “worry free home delivery.” Milky the Clown and the TWIN PINES
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`Milkman are pictured here:
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`
`
`
`
`5
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`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 6 of 30 PAGEID #: 6
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`12.
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`Over the years, Plaintiff has produced, distributed, licensed, and marketed many
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`other products that further established “TWIN PINES” as a well-known mark. Products included,
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`but were not limited to, refrigerated milk-trucks and tankers, milk crates, glass bottled milk
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`beverages, paper carton milk beverages, heavy whipping cream, half and half, egg nog, cottage
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`cheese, potato chips, sour cream, “magic dip” (dairy based dip), playing cards, sparkling
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`beverages, juices, ice cream, recipe books, rulers, buttons, clocks, hats, laundry compound,
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`drinking glasses, calendars, miniature toy replicas of its milk-trucks, shirts, employee uniforms,
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`enriched bread, children’s television entertainment, handheld games, and weight-loss solutions.
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`See Exhibit 6 for various visual examples of TWIN PINES products, which even today
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`expressly shows Milky the Clown and his famous quote that “THERE’S MAGIC IN TWIN
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`PINES MILK.”
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`13.
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`TWIN PINES-branded products have expanded well beyond Michigan, including
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`throughout Ohio and West Virginia. TWIN PINES-branded products are sold in large and small
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`groceries, in large metropolitan cities and small rural towns, and in over 100 different Walmart
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`locations and many Piggly Wiggly stores.
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`14.
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`By way of illustration only, TWIN PINES goods are sold in over 400 locations in
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`Ohio and nearby West Virginia, as shown here:
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`
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`6
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`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 7 of 30 PAGEID #: 7
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`15.
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`In recognition of the strength of its brand, on March 17, 2020, the USPTO granted
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`
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`Plaintiff a federal trademark registration for
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` See Exhibit 1.
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`16.
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`Plaintiff also owns a Michigan trademark registration for “TWIN PINES,” which
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`issued on May 7, 1980, based on first use of January 1929. See Exhibit 2.
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`17.
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`The Michigan Registration, was assigned to Plaintiff by a written assignment of
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`all rights to the TWIN PINES mark and goodwill of the business related thereto by written
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`
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`7
`
`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 8 of 30 PAGEID #: 8
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`assignment to Plaintiff, dated Oct. 30, 1985, which assignment was duly recorded with the State
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`of Michigan. See Exhibit 3.
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`18.
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`The Michigan Registration is valid and subsisting, having been most recently
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`renewed on November 1, 2019, and is in force until Nov. 1, 2029. See Exhibit 4 (LARA
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`printout and Certificate).
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`19.
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`Plaintiff also has a Certificate of Assumed Name for “TWIN PINES,” which it
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`filed on May 1, 1986, with the Michigan Department of Commerce. This Certificate of Assumed
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`name provides that the true name of the corporation is, “C.F. Burger Creamery Co.” and the
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`assumed name under which business is transacted, is “TWIN PINES.” Plaintiff has maintained
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`this Certificate of Assumed Name through the present. See Exhibit 5.
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`20.
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`As a result of Plaintiff’s extensive investment in, and sales and promotion of the
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`TWIN PINES Mark and its associated fresh dairy goods, the TWIN PINES Mark constitutes an
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`extremely valuable asset, and Plaintiff actively polices the Mark for infringing activities that
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`threaten to cause extensive and irreparable damage to Plaintiff.
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`
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`DEFENDANT’S INFRINGING ACTIVITIES
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`21.
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`In mid-2019, Plaintiff became aware that Defendant’s principal, David Florence,
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`was constructing a dairy business in Ohio under the virtually identical trademark, “TWIN PINES
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`DAIRY.”
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`22.
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`Plaintiff also learned that Defendant owns and operates a website in connection
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`with his dairy business, www.thetwinpinesdairy.com, and a Facebook page for TWIN PINES
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`DAIRY Defendant’s first post to his website announced his plans to sell “Twin Pines Dairy
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`milk:”
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`
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`8
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`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 9 of 30 PAGEID #: 9
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`23.
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`On the same day as the website announcement, August 15, 2018, Defendant
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`included on his Facebook page a picture of a milk truck, which is clearly meant to invoke
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`Plaintiff’s own iconic milk trucks of the 1940s era:
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`9
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`

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`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 10 of 30 PAGEID #: 10
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`24.
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`Defendant would not complete the construction of his manufacturing facility or
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`sell any products until over a year later when he had his grand opening on October 5, 2019. The
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`
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`announcement:
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`
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`25.
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`Between his initial announcement in August 2018 and his launch in October
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`2019, Defendant tracked and promoted his progress towards completing his milk farm and plans
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`to sell milk in “old-fashioned” glass bottles. A few local Ohio newspapers picked up the story,
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`highlighting Defendant’s planned return to “old school” milk sales, suggesting Defendant’s
`10
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`

`

`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 11 of 30 PAGEID #: 11
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`products have a nostalgic value like Plaintiff’s well-known TWIN PINES products, despite
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`Defendant’s grand opening only occurring on October 5, 2019. See exemplary articles found
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`here:
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`a.
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`https://www.mariettatimes.com/news/local-news/2019/10/farm-to-fridge-
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`local-dairy-launches-old-school-sales/
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`b.
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`https://www.mariettatimes.com/news/2018/12/going-old-school/
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`26.
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`Actual confusion between Defendant’s TWIN PINES prospective dairy business
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`and Plaintiff’s TWIN PINES long beloved established dairy business began almost immediately
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`– and before any sales by Defendant even began. On January 25, 2019 (more than 9 months
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`before Defendant’s grand opening) a Facebook user posted a photo of Plaintiff’s own vintage
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`ruler on Defendant’s Facebook page with the caption “Little bit of Twin Pines history,”
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`erroneously connecting Defendant to Plaintiff.
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`
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`11
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`

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`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 12 of 30 PAGEID #: 12
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`
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`27.
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`On January 30, 2019, actual confusion occurred again when a Facebook user
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`commented on Defendant’s milk truck profile picture saying, “WHO remember this truck,”
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`obviously referring to Plaintiff (Defendant had not yet opened his business) The post is
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`highlighted in yellow here:
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`
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`28.
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`Immediately upon being presented with such evidence of infringement and
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`consumer confusion, Plaintiff’s counsel contacted Defendant by letter, advising Defendant of
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`Plaintiff’s long-established trademark rights and valuable goodwill in its TWIN PINES Mark.
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`Plaintiff hoped its prompt and proactive action would mitigate any potential losses Defendant
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`might incur, especially considering that Plaintiff’s correspondence occurred in advance of
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`12
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`

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`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 13 of 30 PAGEID #: 13
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`Defendant’s grand opening. A copy of Plaintiff’s cease and desist letter sent August 30, 2019 to
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`Defendant is reproduced below:
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`13
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`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 14 of 30 PAGEID #: 14
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`
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`29.
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`Defendant failed to acknowledge, much less respond, to Plaintiff’s August 30,
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`2019, letter and instead proceeded to open his business under the infringing mark and name,
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`“Twin Pines Dairy.” Follow up letters from Plaintiff’s counsel were likewise ignored.
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`30.
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`On information and belief from information garnered from Defendant’s website
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`and Facebook page, since his October 5, 2019 grand opening, in addition to selling directly from
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`his dairy farm in Little Hocking, Ohio, Defendant has been selling TWIN PINES milk to the
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`following locations:
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`a.
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`b.
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`c.
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`d.
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`e.
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`f.
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`Palmer Square Market, 8000 OH-676, Waterford, OH 45786
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`James Country Store, 34 New England Ridge Rd, Washington, WV 26181
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`Mother Earth Foods, 1638 19th St, Parkersburg, WV 26101
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`Hickory Grove, 5525 OH-339, Vincent, OH 45784
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`U-Bolt-Thru, 406 32nd St, Vienna, WV 26105
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`Route 7 Feed and Supply, 42011 OH-7, Tuppers Plains, OH 45783
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`
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`14
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`

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`Case: 2:20-cv-02936-EAS-EPD Doc #: 1 Filed: 06/05/20 Page: 15 of 30 PAGEID #: 15
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`Bob's Market & Greenhouses, 2514 Washington Blvd, Belpre, OH 45714
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`50-A Carry Out, 15918 OH-550, Fleming, OH 45729
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`Cutler Station, 9731 OH-555, Cutler, OH 45724
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`g.
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`h.
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`i.
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`
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`LIKELIHOOD OF CONFUSION
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`31.
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`Defendant is selling virtually identical goods under a virtually identical mark as
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`Plaintiff.
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`32.
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`33.
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`Both Plaintiff and Defendant sell dairy products.
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`Both Plaintiff and Defendant sell such dairy products under the name and mark
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`“TWIN PINES,” Defendant using the same or similar model of milk delivery trucks used by
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`Plaintiff in the milk delivery days most commonly associated with the 1950s and ‘60s.
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`34.
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`Plaintiff prominently operated in the 1940s – 1960s using dairy trucks of the
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`same era to transport his goods. The trucks, which bore the TWIN PINES Mark, became a
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`symbol of the company and its high quality, old-fashioned style, home-delivery dairy products.
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`35.
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`Defendant uses a 1940s era dairy truck of the same style as Plaintiff’s as a
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`marketing tool to invoke the same old fashioned style dairy beverage trade off of Plaintiff’s good
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`will, and to create an association with Plaintiff, and has caused customers to perceive an
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`association exists.
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`36.
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`Defendant is selling products that invoke an “old-fashioned” quality image
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`among consumers to further invoke Plaintiff’s image..
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`37.
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`Plaintiff sells TWIN PINES products in over 400 locations in Ohio and West
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`Virginia. Defendant’s sales have begun squarely within Plaintiff’s selling area in Ohio and West
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`Virginia, . See depiction on map below:
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`Blue Pins: Plaintiff TWIN PINES product retailers in 2018 and 2019.
`Red Pins: Defendant TWIN PINES retailers since October 2019 grand
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`Orange Pin: Florence Twin Pines Farm and sales location.
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`38.
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`Plaintiff’s retailers are no further than 17 miles from any of Defendant’s retailers.
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`Blue pins are Plaintiff retailers; red pins are Defendant retailers:
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`17
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`39.
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`Defendant seller “Mother Earth Foods” is within 0.5 miles from Plaintiff seller
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`Piggly Wiggly in Vienna, West Virginia.
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`18
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`40.
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`Defendant seller “U-Bolt-Thru” is within 0.5 miles from Plaintiff seller Piggly
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`Wiggly in Vienna, West Virginia.
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`41.
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`Defendant has and continues to use Plaintiff’s “TWIN PINES” trademark in such
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`a fashion as to intentionally create a false impression among the consuming public that his
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`products originate from Plaintiff or are sponsored, approved by, managed and/or otherwise
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`affiliated with Plaintiff, and to, thereby, misrepresent the origin and quality of goods it sells.
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`42.
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`Defendant’s awareness of actual confusion on his Facebook page and Defendant’s
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`refusal to respond to Plaintiff’s outreach imply willfulness by Defendant of the infringement and
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`his deliberate taking of Plaintiff’s established goodwill and customer base.
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`19
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`43.
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`Defendant’s foregoing acts were and are likely and intended to cause confusion
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`and mistake among the public, customers, prospective customers, creditors, suppliers and others
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`and to deceive them as to, among other things, (i) the affiliation, connection and association of
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`Defendant with Plaintiff, (ii) the origin, sponsorship, or approval of Defendant’s goods by
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`Plaintiff and (iii) the nature, characteristics and quality of Defendant’s goods, all of which was
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`and is for the purpose of enhancing the commercial value of, or selling or soliciting sales of,
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`Defendant’s products. In addition to creating the likelihood of confusion, Defendant has caused
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`actual confusion, which has been identified by Plaintiff. There is likely much more.
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`44.
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`Inasmuch as the subject goods—milk and fresh dairy products—are highly
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`perishable and subject to spoilage and food poisoning, including from unsafe manufacturing
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`activities, Plaintiff is unable to exert any quality control over its TWIN PINES Mark, and is
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`unable to protect or its own valuable reputation or the public from potential harm caused by
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`erroneous association of Plaintiff’s TWIN PINES and Defendant’s TWIN PINES dairy products,
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`and a possible food poisoning event. Nor does the picture below inspire confidence. It is from
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`Defendant’s Facebook page at
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`https://www.facebook.com/photo?fbid=2516238285306716&set=a.1683836991880187 and
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`shows Defendant’s product displayed in a small refrigerator that has clearly not been cleaned and
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`there is mold or the like present on the bottom surface of the refrigerator. To the extent that the
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`image shows Defendant’s use of “TWIN PINES” moreover, Plaintiff notes the prominent use of
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`20
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`Plaintiff’s iconic milk truck on the label as well.
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`45.
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`By reason of the foregoing, Plaintiff has suffered and will continue to suffer loss
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`of control, and damage to its business, reputation and goodwill – the heart of its trademark rights,
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`and has suffered and will continue to suffer dilution of the distinctive quality of Plaintiff’s TWIN
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`PINES trademark and has lost and will continue to lose income and profits that Plaintiff would
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`have earned but for Defendant’s foregoing acts.
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`46.
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`Plaintiff’s remedy at law is inadequate to compensate Plaintiff fully for its
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`injuries. Defendant continues to engage in and, in fact, expand the foregoing infringing activities
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`and, unless enjoined, will continue to do so, all to Plaintiff’s irreparable damage. It would be
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`21
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`extremely difficult or impossible to estimate the amount of compensation that would afford
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`Plaintiff complete monetary relief.
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`FIRST CLAIM FOR RELIEF
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`Federal Trademark Infringement
`Violation of 15 U.S.C. § 1114
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`47.
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`Plaintiff incorporates by reference the allegations of Paragraphs 1 – 46 of this
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`Complaint.
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`48.
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`Plaintiff owns U.S. Trademark Registration No. 6,012,508 for its TWIN PINES
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`FARM DAIRY logo:
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`49.
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`Defendant has used in commerce, without license or permission from Plaintiff,
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`the following material elements of Plaintiff’s U.S. registration: TWIN PINES DAIRY. For
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`consumers, any difference between TWIN PINES FARM DAIRY and TWIN PINES DAIRY
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`would be de minimis, especially when taking into account Defendant’s use of Plaintiff’s old
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`fashioned milk truck in his marketing. See paragraph 23, supra.
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`50.
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`Defendant has infringed Plaintiff’s Mark and created a false designation of origin
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`by using the TWIN PINES Mark in connection with his business.
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`51.
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`On information and belief, the unauthorized use by Defendant of the TWIN
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`PINES Mark was with the intent to unfairly compete against Plaintiff, to trade upon Plaintiff’s
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`reputation and goodwill by causing confusion and mistakes among consumers and to deceive
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`consumers into believing that Defendant’s products are associated with and/or sponsored by or
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`approved by Plaintiff, when they are not.
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`52.
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`Defendant’s use of the TWIN PINES Mark, identical to the material portion of
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`Plaintiffs’ registered mark, for Defendant’s own competing and related goods and services, is
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`likely to cause the public to mistakenly believe that Defendant’s goods originate from, are
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`endorsed by, or are in some way affiliated with Plaintiff and thus constitute trademark
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`infringement in violation of 15 U.S.C. § 1114.
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`53.
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`Defendant had actual knowledge of Plaintiff’s ownership and prior use of the
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`TWIN PINES Mark and, without consent, has willfully violated 15 U.S.C. § 1114.
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`SECOND CLAIM FOR RELIEF
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`Federal Common Law Trademark Infringement
`Violation of 15 U.S.C. § 1125(a)
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`54.
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`Plaintiff incorporates by reference the allegations of Paragraphs 1 – 53 of this
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`Complaint.
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`55.
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`Plaintiff has common law rights in Ohio to its TWIN PINES Mark in connection
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`with its sale of dairy products to Ohio consumers.
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`56.
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`Defendant has used in commerce, without license or permission from Plaintiff,
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`the TWIN PINES Mark for goods overlapping with those of Plaintiff: dairy products.
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`57.
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`Defendant has infringed Plaintiff’s mark and created a false designation of origin
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`by using the TWIN PINES Mark in connection with his business.
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`58.
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`On information and belief, the unauthorized use by Defendant of the TWIN
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`PINES Mark was with the intent to unfairly compete against Plaintiff, to trade upon Plaintiff’s
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`reputation and goodwill by causing confusion and mistakes among consumers and to deceive
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`consumers into believing that Defendant’s products are associated with and/or sponsored by or
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`approved by Plaintiff, when they are not.
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`23
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`59.
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`Defendant’s use of the TWIN PINES Mark, which is identical to Plaintiffs’
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`common law trademark for TWIN PINES for Defendant’s own competing and related goods, is
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`likely to cause the public to mistakenly believe that Defendant’s goods originate from, are
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`endorsed by, or are in some way affiliated with Plaintiff and thus constitute trademark
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`infringement in violation of 15 U.S.C. § 1125(a).
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`60.
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`Defendant had actual knowledge of Plaintiff’s ownership and prior use of the
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`TWIN PINES Mark and, without consent, has willfully violated 15 U.S.C. § 1125(a).
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`THIRD CLAIM FOR RELIEF
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`Ohio Common Law Unfair Competition and Passing Off
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`Plaintiff incorporates by reference the allegations of Paragraphs 1 – 60 of this
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`61.
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`Complaint.
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`62.
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`Upon information and belief, Defendant has engaged in business in Ohio under
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`the TWIN PINES Mark, with full knowledge of Plaintiff’s common law rights and prior use of
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`Plaintiff’s TWIN PINES Mark. In doing so, Defendant has passed off his products as those of
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`Plaintiff by creating the impression among the public that the products offered by Defendant are
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`licensed or sponsored by Plaintiff, when in fact they are not.
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`63.
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`Defendant has misappropriated Plaintiff’s valuable goodwill and public
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`recognition of Plaintiff’s TWIN PINES Mark, which Plaintiff has developed over decades and
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`Defendant has unlawfully benefited and been unjustly enriched by such activities. The use by
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`Defendant of Plaintiff’s Mark, combined with the ensuing confusion constitutes unfair
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`competition under the common law of the State of Ohio. This use has in many ways injured the
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`business reputation of Plaintiff and diluted the distinctive quality of Plaintiff’s TWIN PINES
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`24
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`Mark and will cause irreparable harm, damage and injury to Plaintiff unless restrained and
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`enjoined by this Court.
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`FOURTH CLAIM FOR RELIEF
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`Violations of Ohio Statutory Law
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`Plaintiffs incorporate by reference the allegations of Paragraphs 1 – 63 of this
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`64.
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`Complaint.
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`65.
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`This is a claim based on Defendant’s violations of the Ohio Deceptive Trade
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`Practices Act, O.R.C. §4165, et seq.
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`66.
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`Defendant’s use of the TWIN PINES designation in connection with dairy
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`products tends falsely to represent or designate that the products of Defendant are licensed by,
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`sponsored by, and/or otherwise affiliated with Plaintiff, when in fact Defendant has no
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`connection with or authorization from Plaintiff. This constitutes unfair competition and false
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`designation of origin in violation of the Ohio Deceptive Trade Practices Act, O.R.C. § 4165, et
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`seq., which violation has damaged and is likely to continue to damage Plaintiff.
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`67.
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`Defendant’s acts were undertaken willfully