Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1181033
`12/27/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`91273225
`
`Filing Party
`
`Other Party
`
`Plaintiff
`Imprint Beer Co. LLC
`
`Defendant
`TK BRANDS, LLC
`
`Pending Motion
`
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`Imprint v. TK Complaint.PDF(2559218 bytes )
`Imprint v. TK Answer and Counterclaims.PDF(1031353 bytes )
`
`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Imprint
`Beer Co. LLC hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`Imprint Beer Co. LLC has secured the express consent of all other parties to this proceeding for the suspen-
`sion requested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/David H. Siegel/
`David H. Siegel
`dsiegel@norris-law.com, dmdefilippis@norris-law.com, tmdept@norris-law.com, bstoll@norris-law.com
`12/27/2021
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 1 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 1 of 16
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`
`
`IMPRINT BEER CO. LLC,
`
`CV
`
`—
`
`DEMAND FORJURY TRIAL
`
`
`
`Plaintiff,
`
`VS.
`
`TK BRANDS, LLC d/b/a TROOBADOand
`HOMES BREWERYLLCd/b/a TROOBADO;
`
`Defendants.
`
`COMPLAINT
`
`Plaintiff IMPRINT BEER CO. LLC (“Imprint”or “Plaintiff’) files this Complaint against
`
`Defendants TK BRANDS, LLC d/b/a TROOBADO(“TK”) and HOMES BREWERYLLCd/b/a
`
`TROOBADO(“Homes”and together with TK, “Troobado”or “Defendants”), alleging as follows:
`
`NATURE OF THIS ACTION
`
`l.
`
`Plaintiff brings this action as a result of Defendants’ infringement of Plaintiffs
`
`rights in its trademark SCHMOOJEE (the “SCHMOOJEE Mark”), under Section 32(1) of the
`
`Lanham Act, 15 U.S.C. § 1114(1), unfair competition under Section 43(a) of the Lanham Act, 15
`
`U.S.C. § 1125(a), trademark infringement under Section 1123 ofthe Pennsylvania Trademark Act,
`
`54 Pa. Cons. Stat. Ann. § 1123, and unfair competition under the common law of the
`
`Commonwealth of Pennsylvania. Plaintiff seeks injunctive relief and damagesarising from the
`
`Defendants’ infringement under the Lanham Act, 15 U.S.C. §§ 1051 et seg. and Pennsylvania
`
`statutory and commonlaw.
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 2 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 2 of 16
`
`2.
`
`Plaintiff has used the SCHMOOJEE Markin connection withits line of fruited sour
`
`beers since 2018, whichit sells directly to consumersand distributes to retailers in Pennsylvania
`
`and distributes throughout the United States.
`
`3.
`
`Defendants have been, under the name SMOOJ(the “Infringing Mark”), marketing,
`
`promoting, and selling a heavily fruited hard seltzer product(the “Infringing Seltzer’). Defendants
`
`recently expandedtheir distribution ofthe Infringing Seltzer to Pennsylvania.
`
`4.
`
`Defendants’ use ofthe Infringing Mark has already caused actual confusion among
`
`consumersasto the sourceoforigin of the Infringing Seltzer, resulting in damagesto Plaintiff.
`
`5.
`
`Unless enjoinedby this Court, Defendants’ ongoing and expandedactionsarelikely
`
`to cause irreparable injury to Plaintiff by causing further confusion among Pennsylvania and
`
`nationwide consumers as to whether the Infringing Seltzer originates from,
`
`is authorized or
`
`endorsed by, or is otherwise associated with Plaintiff.
`
`PARTIES
`
`6.
`
`Plaintiff is a Limited Liability Company organized under the laws of the
`
`Commonwealth of Pennsylvania, with an address at 1500 Industry Road, Suite O, Hatfield,
`
`Pennsylvania 19440.
`
`7.
`
`Upon information andbelief, TK is a Limited Liability Company organized under
`
`the laws of Michigan, with an addressat 112 Jackson Plaza, Ann Arbor, Michigan 48103.
`
`8.
`
`Upon information and belief, Homes is a Limited Liability Company organized
`
`underthe laws of Michigan, with an address at 2321 Jackson Plaza, Ann Arbor, Michigan 48103.
`
`9.
`
`Upon information and belief, TK and Homesare jointly owned or otherwise
`
`affiliated.
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 3 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 3 of 16
`
`JURISDICTION AND VENUE
`
`10.
`
`This Court has jurisdiction over the subject matter of this action pursuant to 15
`
`US.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a), as this action involves federal questions arising
`
`from Defendants’ violations of the Lanham Act.
`
`11.
`
`This Court has specific jurisdiction over Defendants because each of them has
`
`committed acts within this District giving rise to this action and has established minimum contacts
`
`with this forum such that the exercise of jurisdiction over each of the named Defendants would
`
`not offend traditional notions of fair play and substantial justice.
`
`12.
`
`Upon information and belief, Defendant TK has committed and continues to
`
`commit acts of trademark infringement in this District by, among other things, distributing its
`
`Infringing Seltzer in connection with the Infringing Markin this District.
`
`13.
`
`Upon information and belief, Defendant Homes has committed and continues to
`
`commit acts of trademark infringement in this District by, among other things, distributing its
`
`Infringing Seltzer in connection with the Infringing Markin this District.
`
`14,
`
`Venue is proper as to the Lanham Act and commonlaw claimsin this district
`
`pursuant to 28 U.S.C. § 1391(b) because a substantial part of the events or omissionsgiving rise
`
`to this action occurred in this district.
`
`FACTUAL BACKGROUND
`
`Plaintiff's Use and Registration of the SCHMOOJEE Mark
`
`15.
`
`Plaintiff brews, markets, promotes, and sells a line of fruited sour beers in
`
`connection with the SCHMOOJEEMark,andhas continuously done sosinceat least as early as
`
`2018.
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 4 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 4 of 16
`
`16.
`
`‘Plaintiff sells
`
`its SCHMOOJEE branded beers directly to the public in
`
`Pennsylvania, to bars and restaurants in Pennsylvania and New Jersey, and throughout the United
`
`States, including direct shipments to Washington, New York, Maryland, Nevada, and Florida.
`
`17.
`
`Plaintiff sells, under the brand SHADE,its own line of fruited hard seltzers, with
`
`which Defendants’ Infringing Seltzer directly competes.
`
`18.
`
`Plaintiff owns U.S. Trademark Registration No. 5,803,964 for SCHMOOJEEfor
`
`Beerin International Class 32,a true and correct copy of which is attached as EXHIBITA.
`
`19.
`
`Asaresult of Plaintiff's continuous use of the SCHMOOJEE Mark for three years,
`
`beer consumers and professionals have come to associate the SCHMOOJEE Mark exclusively
`
`with Plaintiff andits line of fruited sour beers.
`
`20.
`
`‘The high quality of beers sold by Plaintiff in connection with the SCHMOOJEE
`
`Mark andthe high quality of Plaintiff's beers in general have led to high regard for Plaintiff and
`
`its SCHMOOJEE-branded products. The reputation of Plaintiff’s SCHMOOJEEbeers extends
`
`worldwide, including to Europe, Japan, and China. Examplesofthird-party recognition for the
`
`SCHMOOJEE Markandassociation with Plaintiff are attached as EXHIBIT B.
`
`Defendants’ Use of the Infringing Mark and Trademark Applications
`
`21.|Upon information and belief, Defendant TK (then organized under the name
`
`Troobado, LLC) and/or Defendant Homesbegan using the Infringing Mark in connection with the
`
`promotion, marketing, andsale ofits Infringing Seltzer at some time in 2020, well after Plaintiffs
`
`first use and registration of the SCHMOOJEE Mark.
`
`22.
`
`The Infringing Mark is similar to the SCHMOOJEE Mark,in that the initial letter
`
`“S”and internal portion “MOOJ”are present in both marks, and they are nearly identical when
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 5 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 5 of 16
`
`pronounced,differing only in the terminal long “E” sound present in the SCHMOOJEE Mark and
`
`not in the Infringing Mark.
`
`23.
`
`Defendants’ own stylization and use ofthe Infringing Mark highlights the similarity
`
`between the Infringing Mark and SCHMOOJEE Mark. As shown in the stylized logo
`
`oy
`
`and in Exhibits E, F, and G, Defendants extensively use the letters OOJ as a
`
`synecdoche for the Infringing Mark in promotion of the Infringing Seltzer,
`
`including on
`
`promotional merchandise. This focuses consumers’ attention on the “OOJ” portion of the
`
`Infringing Mark, whichis the central and dominantportion of both the Infringing Mark and the
`
`SCHMOOJEEMark.
`
`24.
`
`Hard seltzers such as the Infringing Seltzer are closely related to beer, as they are
`
`both brewed alcoholic beveragesthat are generally 4-6% alcohol by volume (“ABV”) and sold in
`
`single-use containers such as cans. Many of the highest-selling and best-known hard seltzer
`
`products are brewed by brewersofbeer, including craft beer, often in the same breweries asbeer.
`
`For example, Truly Hard Seltzer is brewed and distributed by Boston Beer Company, owner and
`
`distributor of the Samuel Adams and Dogfish Head beer brands. Some hard seltzers, such as
`
`Corona Seltzer and Bud Light Seltzer, are even marketed and sold as direct brand extensions of
`
`world-famous beer brands such as Corona and Bud Light, respectively. As a result, consumers
`
`expecthardseltzers to originate from the same sourcesas beers, often under the sameor similar
`
`brand namesasbeers.
`
`25.
`
`The Infringing Seltzer and Plaintiff's SCHMOOJEE beers are nearly identical
`
`products, as both are heavily fruited, brewed beverages with similar flavor profiles. When poured,
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 6 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 6 of 16
`
`an Infringing Seltzer and SCHMOOJEEbeerofsimilar flavors are visually identical, and when
`
`consumed, they are extremely similar in mouthfeel andtaste. The Infringing Seltzer, at 5% ABV
`
`(see Exhibit E), and SCHMOOJEEbeers, at 5-6% ABV, are even closely similar in alcohol
`
`content. As a result, the Infringing Seltzer and Plaintiff's SCHMOOJEE beers are even more
`
`closely related andliable to be confused than hard seltzers and beers in general.
`
`26.|Upon information and belief, on or about July 28, 2020, Defendant TK filed an
`
`application to register the Infringing Mark on the Principal Register of the U.S. Patent and
`
`Trademark Office in connection with alcoholic beverages other than beer in International Class
`
`33, which application was assigned Serial No. 90/078,759 (the “759 Application”). A true and
`
`correct copy of the ‘759 Application is attached as EXHIBITC.
`
`27.
`
`Upon information and belief, on or about July 28 2020, Defendant TK filed an
`
`application to register the Infringing Mark on the Principal Register of the U.S. Patent and
`
`Trademark Office in connection with beer in International Class 32, which application was
`
`assigned Serial No. 90/078,848(the ““848 Application” and, together with the ‘759 Application
`
`the “Infringing Applications”). A true and correct copy of the ‘848 Application is attached as
`
`EXHIBITD.
`
`28.
`
`Both of the Applications have been refused registration by the U.S. Patent and
`
`Trademark Office based on, inter alia, a likelihood of confusion with the SCHMOOJEE Mark and
`
`Plaintiff's registration of the SCHMOOJEE Mark.
`
`29.
`
`Upon information and belief, Defendant TK owns and maintains the website
`
`located at https://www.drinksmooj.com (the “Website”), through which it promotes and markets
`
`the Infringing Seltzer. Defendant TK makesextensive use of the Infringing Mark throughout the
`
`Website. A true and correct copy of the main page of the Website is attached as EXHIBIT E.
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 7 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 7 of 16
`
`30.
`
`Upon information and belief, Defendant TK owns and maintains the Instagram
`
`account drinksmooj, accessible at https://www.instagram.com/drinksmooj/
`
`(the “Instagram
`
`Account”), through which it promotes and markets the Infringing Seltzer. Defendant TK makes
`
`extensive use ofthe Infringing Mark throughoutthe Instagram Account. A true and correct copy
`
`of the main page of the Instagram Accountis attached as EXHIBITF.
`
`31.|Upon information and belief, Defendant TK owns and maintains the Twitter
`
`account @drinksmooj,
`
`accessible
`
`at https://www.twitter.com/drinksmooj/
`
`(the
`
`“Twitter
`
`Account”), through which it promotes and markets the Infringing Seltzer. Defendant TK makes
`
`extensive use of the Infringing Mark throughout the Twitter Account. A true and correct copy of
`
`the main page of the Twitter Account is attached as EXHIBIT G.
`
`Plaintiff's Prior Demand that Defendant TK Cease and Desist Trademark Infringement
`
`32.
`
`In or around November, 2020, Plaintiff first became aware of Defendants,their use
`
`of the Infringing Mark, the existenceof the Infringing Seltzer, and the Applications.
`
`33.
`
`On or about December 7, 2020, Plaintiff, through its undersigned counsel, notified
`
`Defendant TK ofPlaintiff's rights in and to the SCHMOOJEE Mark and demanded that Defendant
`
`TK cease and desist from infringing the SCHMOOJEE Mark by using the Infringing Mark in
`
`connection with alcoholic beverages(the “December 7, 2020 Letter”). A true andcorrect copy of
`
`the December 7, 2020 Letter is attached as EXHIBIT H.
`
`34.
`
`Upon information and belief, Defendant TK tooknoactionto stopits infringement
`
`of the SCHMOOJEE Mark or reduce confusion between the SCHMOOJEE Mark and the
`
`Infringing Mark.
`
`35.
`
`Upon information andbelief, following its receipt of the December 7, 2020 Letter,
`
`despite being awareofPlaintiffs rights in and to the SCHMOOJEE Mark, Defendants continued
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 8 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 8 of 16
`
`to expand their use of the Infringing Mark andtheir distribution and promotionof the Infringing
`
`Seltzer.
`
`36.
`
`Upon information and belief, throughout 2020, Defendants’ distribution of the
`
`Infringing Seltzer waslimited to the State of Michigan.
`
`37.
`
`Upon information and belief, on or about March 22, 2021, Defendants began to
`
`distribute the Infringing Seltzer in Pennsylvania with full knowledge that Plaintiff does business
`
`in Pennsylvania and Pennsylvania is Plaintiff's primary region of sales and distribution of its
`
`products, including products marketed and sold in connection with the SCHMOOJEE Mark.
`
`Defendant TK’s announcement ofits distribution in Pennsylvania is attached as EXHIBITI.
`
`38.|Upon information and belief, Defendants’ expansion into Pennsylvania is a
`
`deliberate and willful attempt to capitalize on and profit from the reputation and goodwill that
`
`Plaintiff has accrued in the SCHMOOJEE Mark.
`
`39.
`
`Plaintiff has not authorized or licensed Defendants’ use of the Infringing Mark in
`
`connection with the sale of hard seltzer, beer, or any other alcoholic beverage.
`
`40.
`
`The continued offering for sale and sale of Defendants’ Infringing Seltzer in
`
`connection with the Infringing Mark will lead to confusion as to the source of Defendants’
`
`Infringing Seltzer.
`
`41.|Defendants’ expansion oftheir use of the Infringing Mark into Pennsylvania has
`
`already resulted in confusion as to the source of the Infringing Seltzer among consumers. An
`
`example of such consumerconfusion, a photo of the Infringing Seltzer posted on Instagram and
`
`tagged with Plaintiffs Instagram account by a third party consumer, is attached as EXHIBITJ.
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 9 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 9 of 16
`
`42._Registration of the Infringing Mark in connection with any alcoholic beverageas a
`
`result of either of the Applications will lead to confusion as to the source of any products offered
`
`for sale or sold in connection with the Infringing Mark.
`
`43.
`
`Plaintiff has been damaged by the foregoing infringing and wrongful acts of
`
`Defendants, including, without limitation, suffering actual damages.
`
`44.
`
`Defendants’ wrongful conduct and infringing activities will continue unless
`
`enjoined by this Court.
`
`COUNTI
`
`Violation of Section 32(1) of the Lanham Act 15 U.S.C. § 1114(1)
`(AgainstAll Defendants)
`
`45.
`
`Plaintiff repeats and incorporates by reference each of the preceding paragraphs as
`
`if fully set forth herein.
`
`46.
`
`Plaintiff owns all common law rights in the SCHMOOJEE Mark and owns U.S.
`
`Trademark Registration No. 5,803,964 for the SCHMOOJEE Mark.
`
`47,
`
`48.
`
`49.
`
`Plaintiff's SCHMOOJEE Markis inherently distinctive.
`
`The Infringing Mark is confusingly similar to the SCHMOOJEE Mark.
`
`Defendants are offering for sale and selling under the Infringing Mark the
`
`Infringing Seltzer, which is related to and directed to the same customers, namely consumers of
`
`fruited alcoholic beverages,as Plaintiffs goods under the SCHMOOJEE Mark.Suchuseis likely
`
`to confuse consumersas to the source, sponsorshiporaffiliation of the Defendant’s goods, thus
`
`harming Plaintiff.
`
`50.
`
`Defendants’ use of the Infringing Mark to promote, offer for sale and sell the
`
`Infringing Seltzer in connection with the Infringing Marks constitutes a use in commercethatis
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 10 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 10 of 16
`
`likely to continue to cause confusion,to cause mistake, or to deceive, in violation of Section 32(1)
`
`of the Lanham Act (15 U.S.C. § 1114(1)).
`
`51.
`
`Defendants’ use of the Infringing Mark commenced wellafter Plaintiff's use of the
`
`SCHMOOJEEMark.
`
`52.
`
`Defendants’ activities were committed willfully, knowingly, and in conscious
`
`disregard of Plaintiff's prior rights in the SCHMOOJEE Mark.
`
`53.
`
`Plaintiff has no adequate remedy at law. Defendants’ conduct has caused and, if
`
`not enjoined, will continue to cause immediate and irreparable damage to Plaintiffs trademark
`
`rights, business, reputation, and goodwill in a manner that cannot be adequately calculated or
`
`compensated in money damagesalone.
`
`54.
`
`Due to Defendants’ violations of the Lanham Act, Plaintiff is entitled to injunctive
`
`relief, actual, compensatory, disgorgement of Defendants’ profits, and punitive damages in an
`
`amountto be determinedat trial, attorneys’ fees, costs, and disbursements.
`
`COUNT II
`
`Violation of Section 43(a) of the Lanham Act 15 U.S.C. § 1125(a)
`(Against All Defendants)
`
`55.
`
`Plaintiff repeats and incorporates by reference each of the preceding paragraphs as
`
`if fully set forth herein.
`
`56.
`
`Section 43(a)(1) of the Lanham Act provides:
`
`Any person who, on or in connection with any goods or services, or any container for
`goods, uses in commerce any word, term, name, symbol, or device, or any combination
`thereof, or any false designation of origin, false or misleading description offact orfalse
`or misleading representation offact, which — (A)is likely to cause confusion, or to cause
`mistake, or to deceive asto the affiliation, connection, or association of such person with
`another person, or as to the origin, sponsorship, or approval of his or her goods, services,
`or commercial activities by another person, or — (B) in commercial advertising or
`promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his
`
`10
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 11 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 11 of 16
`
`or her or another person's goodsservices, or commercialactivities, shall be liable inacivil
`action by any person whobelieves that he orsheis oris likely to be damaged by such act.
`
`15 ULS.C.A. § 1125(a).
`
`57.
`
`58.
`
`The Infringing Mark is confusingly similar to the SCHMOOJEE Mark.
`
`Defendants are offering for sale and selling under the Infringing Mark the
`
`Infringing Seltzer, which is related to and directed to the same customers, namely consumers of
`
`fruited alcoholic beverages,as Plaintiffs goods under the SCHMOOJEE Mark.Suchuseis likely
`
`to confuse consumersas to the source, sponsorshipor affiliation of the Defendant’s goods, thus
`
`harming Plaintiff.
`
`59.
`
`Defendants’ use ofthe Infringing Marks in connection with the promotion,offering
`
`for sale, and sale of the Infringing Seltzer constitutes false designations of origin, whicharelikely
`
`to cause confusion,or to cause mistake, or to deceive asto the affiliation, connection, or association
`
`ofthe Infringing Seltzer with Plaintiff, or as to the origin, sponsorship, or approvalofthe Infringing
`
`Seltzer by Plaintiff, in violation of Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)).
`
`60.
`
`Defendants’ actions have continued in spite of the Defendants’ knowledgethat the
`
`use of the Infringing Mark or any mark similar to the Infringing Mark,is in violation of Plaintiff's
`
`rights.
`
`61.
`
`Defendants’ actions were committed willfully, knowingly, and in conscious
`
`disregard of Plaintiff's legal rights.
`
`62.
`
`Plaintiff has no adequate remedy at law. Defendant’s conduct has caused, and,if
`
`not enjoined, will continue to cause immediate and irreparable damageto Plaintiff's trademark
`
`rights, business, reputation, and goodwill in a manner that cannot be adequately calculated or
`
`compensated in money damagesalone.
`
`11
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 12 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 12 of 16
`
`63.
`
`Due to Defendants’ violations of the Lanham Act, Plaintiff is entitled to injunctive
`
`relief, actual, compensatory, and punitive damages in an amount to be determined attrial,
`
`attorneys’ fees, costs, and disbursements.
`
`COUNT HI
`
`Denial or Abandonmentof U.S. Trademark
`Application Nos. 90/078,759 and 90/078,848 Based on Likelihood of Confusion
`(Against Defendant TK)
`
`64.
`
`Plaintiff repeats and incorporates by reference each of the preceding paragraphsas
`
`if fully set forth herein.
`
`65.
`
`Upon information and belief, Plaintiff's use of the SCHMOOJEE Mark predates
`
`Defendant TK’s use of the Infringing Mark by two years.
`
`66.
`
`The mark SMOOJ, which is the subject of U.S. Trademark Application Serial
`
`Numbers 90/078,759 and 90/078,848, is confusingly similar to the SCHMOOJEE Mark.
`
`67.
`
`Defendant TK is offering for sale and selling the goods recited in U.S. Trademark
`
`Application Serial Number 90/078,759 under the Infringing Mark whichare related to and directed
`
`to the same customers, namely consumersoffruited alcoholic beverages,as Plaintiff's goods under
`
`the SCHMOOJEE Mark. Such useis likely to confuse consumersasto the source, sponsorship or
`
`affiliation of the Defendant’s goods, thus harmingPlaintiff.
`
`68.
`
`U.S. Trademark Application Serial Number 90/078,848 is based on Defendant
`
`TK’s intention to use the Infringing Mark on beer in the future, which is identical to Plaintiff's
`
`goods under the SCHMOOJEE Mark. Such useis likely to confuse consumers asto the source,
`
`sponsorshiporaffiliation of the Defendant’s goods, thus harmingPlaintiff.
`
`69.
`
`The registrability of the Infringing Markis directly related to the subject matter of
`
`this action, namely Defendant TK’s use ofthe Infringing Mark.
`
`12
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 13 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 13 of 16
`
`70.
`
`The SCHMOOJEE Mark is the subject of U.S.
`
`trademark registration no.
`
`5,803,964.
`
`71.
`
`Accordingly, this Court, as authorized by 15 U.S.C. § 1119, andits other authority,
`
`should direct the U.S. Trademark Office to deny U.S. Trademark Application Serial Numbers
`
`90/078,759 and 90/078,848, or direct Defendant TK to abandon U.S. Trademark Application Serial
`
`Numbers 90/078,759 and 90/078,848, with prejudice.
`
`72.
`
`Additionally, this Court should enjoin Defendant TK,its successors, privies and
`
`assigns, and any person or entity acting on their behalf or in concert with them from filing any
`
`application with the U.S. Trademark Office for the Infringing Mark or any other mark confusingly
`
`similar to the SCHMOOJEE Mark.
`
`COUNTIV
`
`Common Law TrademarkInfringement
`and Unfair Competition Claim Under the Law of the Commonwealth of Pennsylvania
`(Against All Defendants)
`
`73.
`
`Plaintiff repeats and incorporates by reference each of the preceding paragraphs as
`
`if fully set forth herein.
`
`74.
`
`Plaintiff's SCHMOOJEE Markis a valid and legally protectable mark and is used
`
`in commerce in connection with beer.
`
`75.
`
`There is a likelihood of confusion arising from Defendants’ use ofthe Infringing
`
`Markfor hardseltzer.
`
`76.
`
`Defendants’ use of the Infringing Mark constitutes trademark infringement
`
`pursuant Section 1123 of the Pennsylvania Trademark Act, 54 Pa. Cons. Stat. Ann. § 1123 and
`
`unfair competition under the commonlaw of the Commonwealth of Pennsylvania.
`
`13
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 14 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 14 of 16
`
`77.
`
`Due to Defendants’ violations of the Pennsylvania Trademark Act, Plaintiff is
`
`entitled to injunctive relief, actual, compensatory, and punitive damages in an amount to be
`
`determinedattrial, attorneys’ fees, costs, and disbursements.
`
`PRAYER FOR RELIEF
`
`WHEREFORE,Plaintiff prays for the following relief:
`
`A.
`
`A judgmententered in favor of Plaintiff on its claims that each of Defendant TK
`
`and Defendant Homeshasinfringed Plaintiffs SCHMOOJEE Mark;
`
`B.
`
`Preliminary and permanent
`
`injunctions restraining the Defendants and their
`
`distributors, wholesalers, resellers, retailers, and affiliates from:
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`indirectly infringing Plaintiff's registered and common-law
`directly or
`trademarksincluding the SCHMOOJEE Markin any manner,including butnot
`limited to, manufacturing, distributing, advertising, selling, or offering for sale
`any products or services in connection with the marks that
`infringe the
`SCHMOOJEE Mark; and
`
`using the SCHMOOJEE Mark or the Infringing Mark or any reproduction,
`counterfeit, copy, or colorable imitation of such mark in connection with the
`advertising, display, marketing, sale, offering for sale, or other use of any
`productor service;
`
`using the SCHMOOJEE Markor the Infringing Mark or any reproduction,
`counterfeit, copy, or colorable imitation in any domain name,internetsite,
`social media account nameor handle,or internet or social media post; and
`
`using any trademark or service mark whichis a reproduction, counterfeit,
`copy, confusingly similar to or colorable imitation of the SCHMOOJEE Mark
`for its products in connection with the manufacture,distribution, advertising,
`display, marketing, sale, offering for sale, or other use of any product;
`
`C.
`
`A judgment and order that Defendants make an accounting to Plaintiff and pay over
`
`to Plaintiff the extent of Defendants’ total profits and revenues realized and derived from its
`
`infringementof Plaintiff's SCHMOOJEE Mark, and actual damagesto Plaintiff in an amountto
`
`be provenattrial;
`
`14
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 15 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 15 of 16
`
`D.
`
`An Order directing the U.S. Trademark Office to refuse, or Defendant TK to
`
`abandon, U.S. Trademark Application Serial Numbers 90/078,759 and 90/078,848, and directing
`
`Defendants, their successors, privies and assigns, and any person orentity acting on their behalf
`
`or in concert with one orboth of them,to refrain from filing any new U.S. trademark applications
`
`comprising or including the SMOOJ Mark or any other mark confusingly similar to the
`
`SCHMOOJEEMark;
`
`E,
`
`That Defendants TK and Homesbeorderedto deliverup to plaintiff for destruction
`
`all labels, stickers, signs, prints, packages, wrappers, receptacles, advertisements, and all other
`
`written or printed material in their possession, custody, or control that bears the Infringing Mark,
`
`alone or in combination with any other words, marks, or other elements.
`
`F,
`
`An Order deeming this case an exceptional case pursuant to 15 U.S.C. § 1117(a)
`
`and (b), and that Defendants TK and Homes be deemedliable for and be orderedto pay Plaintiff,
`
`in addition to the aforesaid damages, Plaintiffs costs and attorneys’ fees, and that the amount of
`
`actual damages be trebled; and
`
`G.
`
`Such other and further relief as the Court may deem just and necessary.
`
`15
`
`

`

`Case 2:21-cv-01793-CDJ Document1 Filed 04/16/21 Page 16 of 16
`Case 2:21-cv-01793-CDJ Document 1 Filed 04/16/21 Page 16 of 16
`
`JURY DEMAND
`
`Pursuantto Fed. R. Civ. P. 38(b), Plaintiff hereby demandsa trial by a jury onall issues
`
`so triable.
`
`Respectfully submitted,
`
`BY:
`
`NORRIS MCLAUGHLIN,P.A.
`
`, " >tes fe
`——
`—f-
`'
`fo
`i
`|: >
` . Berger, Esquire
`Attorney ID No.
`311285
`515 W. Hamilton Street, Suite 502
`Allentown, PA 18101
`610-391-1800
`dberger@norris-law.com
`
`Danielle M. DeFilippis
`
`dmdefillips@norris-law.com
`[To be admitted Pro Hac Vice]
`
`David H.Siegel
`dsiegel(@norris-law.com
`[To be admitted Pro Hac Vice]
`
`NORRIS MCLAUGHLIN,P.A.
`7 Times Square, 21* Floor
`New York, NY 10036
`212-808-0700
`
`ATTORNEYSFOR PLAINTIFF
`IMPRINT BEER CO. LLC
`
`16
`
`

`

`Case 2:21-cv-01793-CDJ Document 1-1 Filed 04/16/21 Page 1 of 2
`Case 2:21-cv-01793-CDJ Document 1-1 Filed 04/16/21 Page 1 of 2
`
`EXHIBIT A
`
`

`

`Case 2:21-cv-01793-CDJ Document 1-1 Filed 04/16/21 Page 2 of 2
`Case 2:21-cv-01793-CDJ Document 1-1 Filed 04/16/21 Page 2 of 2
`
`qawited States of Amer;,
`nited States Patent and Trademark Cffice
`lly
`
`Schmoojee
`
`Reg. No. 5,8033964
`
`Registered Jul. 16, 2019
`Int. Cl.: 32
`Trademark
`Principal Register
`
`Imprint Beer Co. LLC (PENNSYLVANIA LIMITED LIABILITY COMPANY), AKA
`Imprint Beer Co.
`1500 Industry Road, Suite 0
`Hatfield, PENNSYLVANIA 19440
`CLASS32: Beer
`FIRST USE 5-1-2018; IN COMMERCE5-1-2018
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONTSTYLE,SIZE OR COLOR
`
`The wording "Schmoojee" has no meaning in a foreign language.
`
`SER. NO. 88-160,376, FILED 10-18-2018
`
`
`
`Drews barr
`
`Director of the United States
`Patent and Trademark Office
`
`

`

`Case 2:21-cv-01793-CDJ Document 1-2 Filed 04/16/21 Page 1 of 11
`Case 2:21-cv-01793-CDJ Document 1-2 Filed 04/16/21 Page 1 of 11
`
`EXHIBIT B
`
`

`

`Case 2:21-cv-01793-CDJ Document 1-2 Filed 04/16/21 Page 2 of 11
`Case 2:21-cv-01793-CDJ Document 1-2 Filed 04/16/21 Page 2 of 11
`4/12/2021
`Top 10 Breweries In Pennsylvania Of 2020 According To Untappd - Breweries in PA
`Top 10 Breweries In Pennsylvania Of 2020 According To Untappd
`
`By Breweries In PA - December 2, 2020
`1. Imprint Beer Co — 4.17 ¥
`
`Are you an Untappd fanatic? Frantically checking in the latest beer purchase as soon as it touches your lips? If so, you
`probably wantto see how breweries in Pennsylvania stack up against each other through the app.
`
`We've crunched the numbers and below are the top 10 breweries according to Untappd* for the year of 2020.
`
`One of Pennsylvania’s newest, most exciting breweries is Hatfield based Imprint Beer Company. Imprint prides themselves
`on crafting “unique and creative beers, from hazy IPAsto lusciously thick stouts, mind-melding kettle sours to crazy fruited
`concoctions”
`
`Imprint has become famousfor their Schmoojee concoctions, however it doesn’t stop there. Their complete draft list ranges
`from every style of craft beer someone could think of.
`
`T2. Dancing Gnome — 4.14 *
`
`https:/Awww.breweriesinpa.com/top-1 0-breweries-in-pennsylvania-of-2020-according-to-untappd/
`
`146
`
`

`

`4/12/2021
`
`Case 2:21-cv-01793-CDJ Document 1-2 Filed 04/16/21 Page 3 of 11
`Case 2:21-cv-01793-CDJ Document 1-2 Filed 04/16/21 Page 3 of 11
`
`Top 10 Breweries In Pennsylvania Of 2020 According To Untappd - Breweries in PA
`
`As Dancing Gnomesays they “unapologetically brew hop pronounced styles and believe in the process of designing,refining,
`and perfecting our creations. With the understanding and appreciation of tradition, we take calculatedliberties to forge a
`new path for the American Ale.”
`
`While this Pittsburgh brewery is known for their hazy, juicy IPA’s you shouldn’t sleep on all of the styles coming from
`Dancing Gnome. Butgetin the lines early, because you may miss out!
`
`T2. Fermentery Form — 4.14 * Photo courtesy Fermentery Form
`
`Fermentery Form is a small artisan brewery in the West Kensington neighborhood of Philadelphia. “We produce delicate and
`flavorful beers, fermented with our own mixed cultures. A central pillar of our production is our Solera system. This pyramid
`of barrels contains beer of various ages, in an array of oak types from around the world”
`
`The hours of this brewery vary. So you have to be active t