Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
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`ESTTA1156286
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`Filing date:
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`08/30/2021
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`Proceeding
`Party
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`Correspondence
`Address
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91268568
`Plaintiff
`E. Rémy Martin & Co.
`JEANNE HAMBURG
`NORRIS MCLAUGHLIN, P.A.
`7 TIMES SQUARE, 21ST FLOOR
`NEW YORK, NY 10036-6524
`UNITED STATES
`Primary Email: jhamburg@norris-law.com
`Secondary Email(s): tmdept@norris-law.com, csevilla@norris-law.com,
`dsiegel@norris-law.com, bslonda@norris-law.com
`212-808-0700
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`Submission
`Filer's Name
`Filer's email
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`Signature
`Date
`Attachments
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`Motion to Suspend for Civil Action
`David H. Siegel
`dsiegel@norris-law.com, jhamburg@norris-law.com, csevilla@norris-law.com,
`tmdept@norris-law.com
`/David Siegel/
`08/30/2021
`Motion to Suspend.PDF(107763 bytes )
`Doc. 1 Complaint.pdf(663488 bytes )
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`ESTTA Tracking number:
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`ESTTA1156286
`
`Filing date:
`
`08/30/2021
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91268568
`Plaintiff
`E. Rémy Martin & Co.
`JEANNE HAMBURG
`NORRIS MCLAUGHLIN, P.A.
`7 TIMES SQUARE, 21ST FLOOR
`NEW YORK, NY 10036-6524
`UNITED STATES
`Primary Email: jhamburg@norris-law.com
`Secondary Email(s): tmdept@norris-law.com, csevilla@norris-law.com,
`dsiegel@norris-law.com, bslonda@norris-law.com
`212-808-0700
`
`Submission
`Filer's Name
`Filer's email
`
`Signature
`Date
`Attachments
`
`Motion to Suspend for Civil Action
`David H. Siegel
`dsiegel@norris-law.com, jhamburg@norris-law.com, csevilla@norris-law.com,
`tmdept@norris-law.com
`/David Siegel/
`08/30/2021
`Motion to Suspend.PDF(107763 bytes )
`Doc. 1 Complaint.pdf(663488 bytes )
`
`
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re: U.S. Trademark Application Serial No. 88/788224 for
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`Published in the Official Gazette on December 15, 2020
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`E. RÉMY MARTIN & CO.,
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`SIRE SPIRITS LLC,
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`Opposer,
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`vs.
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`Applicant.
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`Opposition No. 91268568
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`MOTION TO SUSPEND PENDING DISPOSITION OF CIVIL ACTION
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`Opposer E. RÉMY MARTIN & CO. (“Opposer”) filed a complaint in the Federal
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`District Court for the Southern District of New York (the “Complaint”) on August 13,
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`2021. The action, entitled E.Remy Martin & Co. v. Sire Spirits LLC, et al. was assigned
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`Index No. 1:21-cv-06838 and is presently pending (the “Civil Action”). Applicant Sire
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`Spirits LLC (“Applicant”) is named as a defendant in the Civil Action and was served
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`with a summons and Complaint on August 26, 2021. A copy of the Complaint, stamped
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`by the District Court, is submitted herewith.
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`Opposer respectfully requests that this proceeding be suspended pending
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`disposition of the Civil Action.
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`Dated: August 30, 2021
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`Respectfully submitted,
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`/David Siegel/
`Jeanne Hamburg
`Bruce S. Londa
`David H. Siegel
`Attorneys for Opposer
`NORRIS, MCLAUGHLIN, P.A.
`7 Times Square, 21st Floor
`New York, NY 10036
`Tel. 917.369.8894
`Fax. 212.808.0844
`Email: dsiegel@norris-law.com
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`2
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re: U.S. Trademark Application Serial No. 88/788224 for
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`
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`Published in the Official Gazette on December 15, 2020
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`E. RÉMY MARTIN & CO.,
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`SIRE SPIRITS LLC,
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`Opposer,
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`vs.
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`Applicant.
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`Opposition No. 91268568
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`CERTIFICATE OF SERVICE
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`I, David Siegel, hereby certify that a true and complete copy of the foregoing
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`document was served on the attorney of record for Applicant SIRE SPIRITS LLC by
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`transmitting said copy on August 30, 2021 via email to Kourtney A. Mulcahy at
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`kourtney.mulcahy@akerman.com and Brian Bianco at Brian.bianco@akerman.com with,
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`copies to ip@akerman.com and latoya.ellerson@akerman.com.
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`/David Siegel/
`David H. Siegel
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`3
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 1 of 39
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`E. RÉMY MARTIN & CO.,
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` Plaintiff,
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` vs.
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`SIRE SPIRITS LLC, VETROELITE INC., and
`VETROELITE S.P.A.,
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` Defendants.
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`___CV____________
`21 06838
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`COMPLAINT AND JURY DEMAND
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`Plaintiff E. RÉMY MARTIN & CO. (“Plaintiff”) files this Complaint against Defendants
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`SIRE SPIRITS LLC (“Sire”), VETROELITE INC. (“VETRO”), and VETROELITE S.P.A.
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`(“VSPA”) (collectively “Defendants”), alleging as follows:
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`NATURE OF THIS ACTION
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`1.
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`Plaintiff brings this action as a result of Defendants’ willful infringement of
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`United States Design Patent No. D638,649 (hereinafter the “D649 Patent”), attached as Exhibit
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`A, in violation of the United States Patent Act.
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`2.
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`Plaintiff also brings this action to enforce its rights in its famous extra old (“XO”)
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`cognac bottle under Section 31(1) of the Lanham Act, 15 U.S.C. § 1114(1), Section 43(a) of the
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`Lanham Act, 15 U.S.C. § 1125(a), Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and
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`for substantial and related claims under the statutory and common laws of the State of New
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`York, all arising from Defendants’ unauthorized use of Plaintiff’s RÉMY BOTTLE mark.
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`Plaintiff’s bottle has a distinctive toroidal design with recessed center which, as evidenced by
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`
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 2 of 39
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`multiple U.S. trademark registrations covering the design, has come to be associated exclusively
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`with Plaintiff. Through over three decades of use, millions of dollars in promotional expenditure
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`and sales, unsolicited media attention and widely distributed photographs of multiple celebrities
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`with its bottle, Plaintiff’s bottle has not only acquired distinctiveness, but also fame.
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`3.
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`Defendants have willfully and blatantly designed their bottle to unfairly capitalize
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`on the goodwill and reputation that Plaintiff’s bottle has achieved and to unabashedly profit from
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`its bad faith infringement. Accordingly, Plaintiff seeks injunctive relief and monetary damages.
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`PARTIES
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`4.
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`Plaintiff is a Société par actions simplifée organized under the laws of France,
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`with an address of 20 rue de la Société, Vinicole, F-16100, Cognac, France.
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`5.
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`Upon information and belief, Defendant Sire Spirits, LLC is a Delaware limited
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`liability company with an established place of business at 399 Park Avenue, Suite 3600, New
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`York, NY 10022.
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`6.
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`Defendant VETRO is a New York Corporation with an established place of
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`business at 115 W 30th St., RM 402, New York, NY 10001 USA.
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`7.
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`Defendant VSPA is an Italian company with a place of business at Via I0 Maggio,
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`4, 31024 Ormelle (Treviso) Italy. Upon information and belief, Defendant VETRO is a United
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`States subsidiary of Defendant VSPA and/or an alter ego of Defendant VSPA. Both VETRO
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`and VSPA are controlled by Mr. Daniele Feletto. Mr. Feletto is the CEO of VETRO (as
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`provided on the NYS Department of State Division of Corporations Entity Information) and he is
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`also
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`the Presidential and Commercial Manager of VSPA. See https://www.european-
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`business.com/portraits/vetroelite-spa/wrapping-the-world-in-glass. Mr. Feletto’s address listed
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`on the NYS Department of State Division of Corporations is the same address as VETRO.
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`2
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 3 of 39
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`Therefore, VSPA avails itself of this Judicial District by and through Mr. Felletto and VETRO as
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`its commonly owned and controlled United States subsidiary. On information and belief, VSPA
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`ships product into the United States for consignment, purchase, and/or resale by VETRO.
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`JURISDICTION AND VENUE
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`8.
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`This is an action in which Plaintiff seeks injunctive relief and damages arising
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`from the Defendants’ infringement of the Patent Act, 35 U.S.C. § 100 et seq., the Lanham Act,
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`15 U.S.C. §§ 1051 et seq., and common law. Defendants’ illegal acts have irreparably harmed
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`the goodwill and reputation of Plaintiff and have caused Plaintiff significant damage.
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`9.
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`This Court has jurisdiction over the subject matter of this action pursuant to 15
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`U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a), as this action involves federal questions
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`regarding the Defendants’ violations of federal law, including the Patent Act and the Lanham
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`Act.
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`10.
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`This Court has both general and specific jurisdiction over Sire, VETRO, and
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`VSPA because each of Sire, VETRO, VSPA has committed acts within this District giving rise
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`to this action and has established minimum contacts with this forum such that the exercise of
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`jurisdiction over each of the named Defendants would not offend traditional notions of fair play
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`and substantial justice.
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`11.
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`Defendant Sire has committed and continues to commit acts of patent
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`infringement and trademark infringement in this District, by, among other things, manufacturing,
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`using, offering for sale, and selling infringing XO cognac bottles which copy patented and
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`registered trade dress features of Plaintiff’s proprietary cognac bottles and trade on Plaintiff’s
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`goodwill and fame.
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`3
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 4 of 39
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`12.
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`Defendant VSPA has committed and continues to commit acts of patent
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`infringement and contributory trademark infringement in this District by and through its New
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`York corporate subsidiary, VETRO, by, upon information and belief, among other things,
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`manufacturing, using, offering for sale, and selling infringing XO cognac bottles which copy
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`patented and trade dress features of Plaintiff’s proprietary cognac bottles and trade on Plaintiff’s
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`goodwill and fame. VSPA and/or VETRO engage in such infringing conduct through or in
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`conjunction with Defendant Sire in this judicial district.
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`13.
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`Venue is proper as to the Lanham Act and common law claims in this district
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`pursuant to 28 U.S.C. § 1391(b) because a substantial part of the events or omissions giving rise
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`to this action occurred in this district.
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`14.
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`Venue is proper as to the Patent Act claim in this district pursuant to 28 U.S.C. §
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`1400(b) because Defendant Sire maintains a regular and established place of business in this
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`district and committed acts of infringement in this District.
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`15.
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`Venue is proper as to the Patent Act claim in this district pursuant to 28 U.S.C. §
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`1400(b) because Defendant VETRO maintains a regular and established place of business in this
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`district and committed acts of infringement in this District.
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`16.
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`Venue is proper as to the Patent Act claim in this district pursuant to 28 U.S.C. §
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`1391(c)(3) because Defendant VSPA is located in Italy. In re HTC Corp., 889 F.3d 1349, 1360
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`(Fed. Cir. 2018) (“a defendant not resident in the United States may be sued in any judicial
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`district”). Furthermore, the controlling force behind Defendant VSPA, Mr. Feletto, has stated on
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`the NYS Department of State Division of Corporations Entity Information that he can be found
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`at 115 W 30th St., RM 402, New York, NY 10001 USA, which is located in this Judicial
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`District.
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`4
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 5 of 39
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`FACTUAL BACKGROUND
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`History of the RÉMY XO BOTTLE and Associated Patents and Trademarks
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`17.
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`The Plaintiff’s XO cognac is one of the most famous, prestigious, and prominent
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`of the cognac brands produced in Cognac, France. In 1981, Cellar Master André Giraud set out
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`to create an XO cognac (one aged at least ten years) that would be among the very best Cognac
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`Fine Champagne. RÉMY MARTIN XO COGNAC was the result, coming exclusively from the
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`highest-quality vineyards of Cognac, the Grande Champagne, and Petite Champagne. Such
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`origins offer exceptional aging potential and put the product in the class of Cognac Fine
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`Champagne.
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`18.
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`From the inception of its sales, Plaintiff’s XO cognac has been sold in a unique,
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`toroidal shaped bottle (the “RÉMY BOTTLE”). A timeline dating from 1985 showing the bottle
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`shapes introduced by Plaintiff in the United States is set forth below—all have the unique
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`toroidal shape.
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`1985
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`1985
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`1993
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`2001
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`2004
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`2006
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`2015
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`19.
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`A closer look at the current RÉMY BOTTLE is below:
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`5
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 6 of 39
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`20.
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`Since the commencement of sales of Plaintiff’s XO cognac in the RÉMY
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`BOTTLE, Plaintiff has vigorously protected the famous RÉMY BOTTLE.
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`21.
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`Specifically, Plaintiff is the owner of multiple U.S. trademark registrations for the
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`RÉMY BOTTLE.
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`22.
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`Plaintiff’s oldest registration for a mark in issue in this litigation is the valid,
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`incontestable trademark registration, U.S. Registration No. 1,385,396, which issued on March 4,
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`1986 for the RÉMY BOTTLE in the following form:
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`23.
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`A true and correct copy of the registration certificate for U.S. Registration No.
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`1,385,396 is attached hereto as Exhibit B.
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`6
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 7 of 39
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`24.
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`Plaintiff is also the owner of valid, incontestable trademark registrations for the
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`following marks:
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`Mark
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`U.S. Registration No.
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`Date of Issuance
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`2,068,531
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`June 10, 1997
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`3,436,246
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`May 27, 2008
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`5,337,465
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`November 21, 2017
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`25.
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`True and correct copies of the registration certificate for U.S. Registration Nos.
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`2,068,531, 3,436,246, and 5,337,465 are attached hereto as Exhibits C, D, and E, respectively.
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`7
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 8 of 39
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`26.
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`The trademark registrations for the RÉMY BOTTLE shown above are in full
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`force and effect.
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`The Market Dominance of the RÉMY BOTTLE
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`27.
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`Plaintiff promotes its famous RÉMY BOTTLE prominently in connection with
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`the sales of its XO cognac.
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`28.
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`Plaintiff’s RÉMY BOTTLE has achieved recognition nationally as a result of the
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`dominant position of Plaintiff’s XO cognac in the marketplace. Specifically, Plaintiff’s XO
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`cognac sold in the RÉMY BOTTLE occupies second place in market share in the XO cognac
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`market, with one quarter of the total sales in the US market.
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`29.
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`For the past five years alone, the Plaintiff’s XO cognac sold in the RÉMY
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`BOTTLE has resulted in sales of nearly 73 million dollars.
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`30.
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`Plaintiff’s closest competitor in the XO cognac market is Hennesy XO, which has
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`its own distinctive bottle shape.
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`31.
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`In the relevant market, bottle shapes are used to distinguish products from each
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`other and to cultivate consumer recognition and identification of the bottle shape with a
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`particular producer.
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`32.
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`According to a report by the National Alcohol Beverage Control Association, the
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`total category volume breakdown of the XO cognac market in the United States is as follows:
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`XO Cognac Brands
`Hennessy XO:
`Rémy Martin XO:
`Courvoisier XO:
`Martell XO:
`Other:
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`Market Share
`65%
`25%
`6%
`2%
`2%
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`33.
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`According to an Annual Brands Report by Drinks International, Plaintiff’s XO
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`cognac sold in the RÉMY BOTTLE is currently the second best-selling cognac worldwide, and
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`8
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 9 of 39
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`the top-trending cognac worldwide. The cover, table of contents, and relevant page of the Annual
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`Brands Report is appended hereto as Exhibit F.
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`34.
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`As a result of the long and continued use of the RÉMY BOTTLE, and as
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`evidenced by its dominant market position, Plaintiff is one of the premier manufacturers of XO
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`cognac and its RÉMY BOTTLE has come to represent high quality, integrity, authenticity, and
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`goodwill not only in the United States but around the world and is associated exclusively with
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`Plaintiff.
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`The Fame of the RÉMY BOTTLE
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`35.
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`The RÉMY BOTTLE is famous in the United States, and indeed, throughout the
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`world, as a result of the extensive advertising, promotion, and sales over the past thirty-five
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`years.
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`36.
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`Plaintiff has advertised its XO cognac in the RÉMY BOTTLE through, among
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`other things, outdoor signage, including billboards and digital displays, promotions and
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`advertising on television, streaming platforms and in print; digital marketing on numerous
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`channels,
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`including
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`search
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`and
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`social media platforms;
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`and
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`its own website
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`(www.remymartin.com); and social media channels. Examples of these advertisements are
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`appended hereto as Exhibit G.
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`37.
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`Plaintiff prominently features the RÉMY BOTTLE on its Facebook page
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`(@RémyMartinUSA) where it has over 2.6 million followers.
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`38.
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`In the past five years alone, Plaintiff has spent over 15 million dollars promoting
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`the XO cognac sold in the RÉMY BOTTLE.
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`9
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 10 of 39
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`39.
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`Such promotion has resulted in nearly 900 million impressions (the number of
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`times a consumer encounters the advertisement that appears in print, on billboard or digital
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`displays, or on a consumer’s television, computer, tablet, phone, or other device).
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`40.
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`As further evidence of Plaintiff’s fame and superior brand recognition as a result
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`of its RÉMY BOTTLE, Plaintiff regularly receives unsolicited editorial coverage in various
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`media sources across the United States. Examples of such coverage are appended hereto as
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`Exhibit H.
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`41.
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`The volume and frequency of the appearance of the RÉMY BOTTLE in a wide
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`array of media publications demonstrate the worldwide recognition of the iconic RÉMY
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`BOTTLE. Exhibits G and H include press clippings showing the variety of publications and
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`media channels featuring the RÉMY BOTTLE, including Esquire, Forbes, Town and Country,
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`The Wall Street Journal, The New York Times, and CNBC.com.
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`42.
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`The XO cognac sold in the RÉMY BOTTLE has received a number of awards. In
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`2010, it won a Gold medal at the 2010 Spirits Business Cognac Masters and Gold medals in
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`2014 and 2020 at the San Francisco World Spirit Competition. In 2010, 2011, 2015, and 2017,
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`the XO cognac sold in the RÉMY BOTTLE won Silver Awards at the International Wine &
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`Spirit Competition. In the past five years it has garnered five silver medals and one gold medal
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`at the International Wine & Spirits Contest. In 2020, the XO cognac sold in the RÉMY
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`BOTTLE received a gold medal at the San Francisco World Spirit Competition, a silver medal at
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`the International Wine & Spirit Competition, and a silver medal at the International Spirit
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`Challenge.
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`43.
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`Plaintiff has formed partnerships with many brands and celebrities, including
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`Jermaine Dupri, who, in 2018, was inducted into the Songwriters Hall of Fame and who has co-
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`10
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 11 of 39
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`written multiple number one rap and pop singles and produced multiple platinum albums;
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`Danielle Chang, an author, cooking show host, and promoter of Asian American food and
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`culture; Boi-1da, a prolific and award-winning songwriter and record producer who has
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`collaborated with Drake, Rihanna, and Nicki Minaj; and Jackie Cruz, an actress, singer, and
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`model who starred in the top television series Orange is the New Black. These high-profile
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`relationships have brought additional attention to, and contributed to the fame of, the RÉMY
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`BOTTLE.
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`44.
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`Celebrities have been featured with the RÉMY BOTTLE in unsolicited media.
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`For example, the internationally renowned model Bella Hadid and her boyfriend, the Grammy
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`Award winning musical artist, The Weeknd, have been captured together by paparazzi with the
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`RÉMY BOTTLE. Other celebrities who have garnered national attention and fame for the
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`RÉMY BOTTLE include four-time NBA Champion and one of the greatest basket players of all
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`time Lebron James; two-time NBA Champion Chris Bosch; Grammy Award winning and
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`Primetime Emmy Award winning stand-up comedian, actor and producer Kevin Hart; race car
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`driver Lewis Hamilton, who also raps under the pseudonym XNDA; the actress Bai Ling, known
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`for her work on film and television, including the top television series Entourage and Lost; and
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`rapper and producer Boi-1da who has produced albums for Drake, Rihanna, Eminem, Jay-Z, and
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`Nicki Manaj, among others. Unsolicited photographs of these celebrities with the RÉMY
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`BOTTLE are appended hereto as Exhibit I.
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`45.
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`The RÉMY BOTTLE has also been featured in the music video for the song
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`Solita performed by musical artists Ozuna, Bad Bunny Wisin, and Almighty. This music video
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`has received over 565 million views on YouTube since it was posted in January 2018. A
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`screenshot of the music video prominently featuring the RÉMY BOTTLE is shown below:
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`11
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`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 12 of 39
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`See https://www.youtube.com/watch?v=j-sz8M8gc6U.
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`46.
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`Further evidencing the fame of the brand and by association its distinctive bottle,
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`Rémy Martin XO is also featured in the lyrics of the song Cognac released in 2018 by blues
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`legend Buddy Guy and featuring Keith Richards and Jeff Beck.
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`“Come on Keith, help yourself
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`Rémy Martin XO
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`I'm only playin' what I know
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`Come on in here, Beck
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`Stretch you neck and drink this XO with me
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`Let me tell you 'bout this woman: when she'd get tight
`
`Give a double shot of Rémy Martin XO
`
`Bet you'll watch it rocket rise
`
`Talkin' 'bout Cognac
`
`XO Cognac that is
`
`And it goes right to your head
`
`Yes is do
`
`How well do I know”
`
`12
`
`
`
`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 13 of 39
`
`47.
`
`As a result of Plaintiff’s expenditure of millions of dollars to promote its XO
`
`cognac in the RÉMY BOTTLE and the success it has enjoyed as evidenced by the millions of
`
`dollars in sales of the product in the United States, the RÉMY BOTTLE is distinctive, has
`
`become well known, and, indeed, famous, to the trade and members of the purchasing public,
`
`and has established substantial goodwill such that the public associates and identifies the XO
`
`cognac sold in the RÉMY BOTTLE with a single source of origin.
`
`Revolutionary Rémy Design
`
`48.
`
`On July 23, 2010, Sébastien Servaire invented a one-of-a-kind bottle design for
`
`Centaure de Diamant (the “DIAMANT BOTTLE”) cognac. Plaintiff filed for patent protection
`
`via the European Union Intellectual Property Office and registered this design as EM
`
`001735457-0001 (the “EU Design”).
`
`49.
`
`According to Plaintiff, the Centaure de Diamant was created by Cellar Master
`
`Pierrette Trichet to contain the most elegant eaux-de-vie from Rémy Martin’s precious reserves,
`
`making it “the jewel of the Fine Champagne.” Servaire’s bottle served as the unique container
`
`for this unique cognac. The USPTO agreed that the DIAMANT BOTTLE was unique and
`
`issued U.S. Design Patent No. 638,649 to Plaintiff on May 31, 2011 (the “D649 Patent”):
`
`13
`
`
`
`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 14 of 39
`
`50.
`
`The DIAMANT BOTTLE is notable for its circular array of raised flat and angled
`
`quadrilateral and triangular facets arranged about a toroidal (wheel-like) body which converge
`
`towards one another to meet at a recessed, flat, centrally located circular surface. The neck of
`
`the DIAMANT BOTTLE is a short cylinder that extends from the top of the toroidal body while
`
`a flat ovular bottom is located below that toroidal body.
`
`51.
`
`The DIAMANT BOTTLE was offered for sale in the United States in and around
`
`2013, and can be purchased
`
`through online distributors, such as,
`
`for example,
`
`OnShoreCellars.com (https://onshorecellars.com/products/remy-martin-centaure-de-diamant, last
`
`visited
`
`August
`
`10,
`
`2021),
`
`Dream
`
`Works
`
`Duty
`
`Free
`
`(https://www.dreamworksdutyfree.com/product/remy-martin-centaure-de-diamant-70cl/,
`
`last
`
`visited August 10, 2021), and Wine Style (https://winestyleonline.com/products/Remy-Martin-
`
`Centaure-de-Diamant-gift-box.html, last visited August 10, 2021).
`
`52.
`
`The DIAMANT BOTTLE is associated with extremely high-quality cognac
`
`products and has garnered Plaintiff numerous awards, including a Tasting Gold Award, Best in
`
`14
`
`
`
`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 15 of 39
`
`Class, at the 2011 International Wine and Spirit Competition as well as a gold medal at the 2013
`
`International Wine and Spirit Competition.
`
`Defendants’ Wrongful Conduct
`
`53.
`
`On December 17, 2019, Curtis J. Jackson III (“Jackson”) filed a design patent
`
`application entitled “Beverage Bottle,” an illustration of which is provided below:
`
`See Exhibit J at 3 (copy of U.S. Design Patent Application No. 29/717,437 to Curtis J. Jackson
`
`III) (the “Branson Design Application”).
`
`54.
`
`55.
`
`Upon information and belief, Jackson is a principal of Defendant Sire.
`
`Jackson asserted in the Branson Design Application that he “invented” the above
`
`design and that it was “new” and “original.” Id. at 1.
`
`56.
`
`Between December 2019 and February 2020, Defendant Sire instructed
`
`Defendants VETRO and VSPA to manufacture a cognac bottle in accordance with the drawing
`
`shown in the Branson Design Application and one or more of these Defendants either
`
`individually or in combination transported, distributed, advertised, marketed, offered for sale,
`
`and/or sold cognac in their own bottle under the “Branson” brand name, as shown below:
`
`15
`
`
`
`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 16 of 39
`
`The above-pictured product, as well as any reference to “Branson” as a brand or bottle design, is
`
`hereafter referred to as the “INFRINGING BRANSON BOTTLE.”
`
`57.
`
`On or about February 6, 2020, Defendant Sire applied to the U.S. Trademark
`
`Office to register a trademark covering the product design of the INFRINGING BRANSON
`
`BOTTLE.
`
`58.
`
`The U.S. trademark application for the design of the INFRINGING BRANSON
`
`BOTTLE was assigned Serial Number 88/788,224 (the “Sire Trademark Application”).
`
`59.
`
`During prosecution of the Sire Trademark Application, Defendant Sire agreed that
`
`the following language properly described the INFRINGING BRANSON BOTTLE:
`
`The mark consists of a three-dimensional product packaging design comprised of a clear
`
`bottle that has an overall circular, wheel-like shape, with most of its surface area
`
`containing raised flat and angled quadrilateral and triangular facets. However, the
`
`center of this wheel-like shape is a recessed, flat circle, having no facets and containing
`
`within it a gold circle that, in turn, contains a gold, stylized letter “B”. Also, the bottom
`
`of the clear bottle design is flattened into an oval shape, and from the center and top of
`
`the clear bottle design arises a short, cylindrical neck. The matter shown in dotted lines
`
`16
`
`
`
`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 17 of 39
`
`is not claimed as a feature of the mark, but serves only to show the position of the mark
`
`with respect to the bottle as a whole. Likewise, the amber and brown liquid shown inside
`
`the bottle is not claimed as a feature of the mark and serves only to show the placement
`
`of the mark on the goods.
`
`Exhibit K at 2 (Sept. 8, 2020 Response to Office Action on behalf of Defendant Sire) (emphasis
`
`added).
`
`60.
`
`In that same September 8, 2020 Response to Office Action, Defendant Sire
`
`represented that the INFRINGING BRANSON BOTTLE “was custom designed by Curtis
`
`Jackson.” Id. at 1-2. Defendant Sire also wrote, “[t]he bottles are manufactured by a high-quality
`
`glass designer in Italy, Vetroelite.” Id. at 2.
`
`61.
`
`On
`
`information and belief, Defendant Sire made
`
`the aforementioned
`
`representations with knowledge or with willful blindness of RÉMY’s iconic toroidal-shaped
`
`cognac bottle and brand.
`
`62.
`
`On
`
`information and belief, Defendant Sire made
`
`the aforementioned
`
`representations with knowledge or with willful blindness of the D649 Patent.
`
`63.
`
`On
`
`information and belief, Defendant Sire made
`
`the aforementioned
`
`representations with knowledge or with willful blindness of the trademark registrations covering
`
`the RÉMY BOTTLE.
`
`64.
`
`Defendant VSPA is the assignee of at least 18 United States Design Patents and
`
`numerous other applications filed worldwide, including in the European Union Intellectual
`
`Property Office. On information and belief, Defendants VSPA and VETRO knew or
`
`deliberately disregarded the risk that the INFRINGING BRANSON BOTTLE was a copy of the
`
`DIAMANT BOTTLE, which was patent protected in the United States with the D649 Patent and
`
`17
`
`
`
`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 18 of 39
`
`was also a registered EU Design, which through reasonable diligence would have informed
`
`Defendants VSPA and VETRO of the D649 Patent.
`
`65.
`
`Defendants VETRO and VSPA are in the business of the design and manufacture
`
`of high-end glass bottles and containers, including for liqueurs and spirits. Based on the nature
`
`of their business and the worldwide renown and unique fame of the RÉMY BOTTLE,
`
`Defendants VETRO and VSPA knew or had reason to know of the protectable and registered
`
`trade dress of the RÉMY BOTTLE.
`
`66.
`
`On information and belief, Defendants VETRO and VSPA manufactured, used,
`
`and/or transported the INFRINGING BRANSON BOTTLE into the United States with
`
`knowledge or with willful blindness of the D649 Patent.
`
`67.
`
`On information and belief, Defendants VETRO and VSPA knew or had reason to
`
`know that the INFRINGING BRANSON BOTTLE directly infringed on the RÉMY BOTTLE
`
`and, by manufacturing, selling, and/or transporting the INFRINGING BRANSON BOTTLE into
`
`the United States, intentionally induced third-party sellers and/or distributors to perpetuate the
`
`infringing conduct by placing an instrument of consumer deception in the hands of U.S.
`
`68.
`
`On information and belief, despite having knowledge or constructive knowledge
`
`of Defendant Sire’s infringing use and sale of the INFRINGING BRANSON BOTTLE,
`
`Defendants VETRO and VSPA continued to provide manufacturing services to Defendant Sire
`
`for the production of the INFRINGING BRANSON BOTTLE and continued to supply the
`
`INFRINGING BRANSON BOTTLE to third-party sellers and/or distributors in the U.S.
`
`69.
`
`On information and belief, Defendants VETRO and VSPA have taken no action
`
`to discourage Defendant Sire or third-party distributors and sellers from offering for sale,
`
`advertising, promoting, distributing, or selling the INFRINGING BRANSON BOTTLE.
`
`18
`
`
`
`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 19 of 39
`
`70.
`
` Since at least the beginning of 2020, one or more of the Defendants have
`
`transported, distributed, advertised, marketed, offered for sale, and/or sold products infringing on
`
`the trademark registrations in the RÉMY BOTTLE and infringing the D649 Patent.
`
`71.
`
`In a blatant attempt to trade off the hard-earned goodwill and reputation of the
`
`RÉMY BOTTLE, Defendants’ INFRINGING BRANSON BOTTLE is being used and is used to
`
`create a likelihood of consumer confusion. Consumers will inevitably be confused in view of the
`
`stark similarities between the bottles, as is apparent when comparing the INFRINGING
`
`BRANSON BOTTLE to the iconic RÉMY BOTTLE, as shown below:
`
`RÉMY BOTTLE
`
`INFRINGING BRANSON BOTTLE
`
`72.
`
`Consumers have remarked on these similarities on social media, further
`
`demonstrating the harm to Plaintiff. For example, Instagram users have acknowledged the close
`
`resemblance of Plaintiff’s iconic cognac bottles to the INFRINGING BRANSON BOTTLE,
`
`demonstrating how Defendants’ wrongful actions have diluted the exclusive association of the
`
`RÉMY BOTTLE with Plaintiff. One such user wrote the following in response to a post by
`
`Jackson: “How you gonna use the @boscovs symbols and throw it on a fake remy-xo bottle.”
`
`(emphasis added).
`
`19
`
`
`
`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 20 of 39
`
`.
`
`See https://www.instagram.com/p/CAUUPO8nujd/ (emphasis added).
`
`73.
`
`Further, third-party media has also recognized the striking similarity between the
`
`RÉMY BOTTLE and the INFRINGING BRANSON BOTTLE. In referring to Jackson and
`
`Defendant Sire, one website observes “there’s a strong possibility 50 can capitalize off the
`
`popularity of Cognac brands such as Rémy Martin…” See https://www.hotnewhiphop.com/50-
`
`cent-inks-deal-with-branson-cognac-news.48917.html.
`
`74.
`
`On information and belief, Defendants’ INFRINGING BRANSON BOTTLE was
`
`offered based on Defendants’ recognition of the limited offering of the DIAMANT BOTTLE in
`
`the United States. Exploiting a consumer base cultivated by Plaintiff, Defendants used this
`
`opportunity to infiltrate Plaintiff’s marketspace with their own cheaper version of the
`
`DIAMANT BOTTLE.
`
`75.
`
`On information and belief, Defendants disregarded Plaintiff’s rights in the D649
`
`Patent and forged ahead with the marketing, sale, and distribution of the INFRINGING
`
`BRANSON BOTTLE.
`
`20
`
`
`
`Case 1:21-cv-06838 Document 1 Filed 08/13/21 Page 21 of 39
`
`76.
`
`The D649 Patent, the Branson Design Application, and the INFRINGING
`
`BRANSON BOTTLE are so substantially similar that they are nearly indistinguishable, as
`
`shown below in a side-by-side comparison:
`
`D649 Patent
`
`INFRINGING BRANSON BOTTLE Branson Design Application
`
`77.
`
`Defendants even describe the INFRINGING BRANSON BOTTLE with language
`
`that captures the claim of the D649 Patent, namely, calling it a bottle with an “overall circular,
`
`wheel-like shape, wit
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