ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1323961
`11/22/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`91288374
`
`Filing Party
`
`Other Party
`
`Defendant
`Toddy, LLC
`
`Plaintiff
`Brumate, Inc.
`
`Pending Motion
`
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`Dkt. 001 - Complaint.pdf(4706980 bytes )
`Dkt. 012 - Answer and Counterclaims.PDF(288545 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, Toddy,
`LLC hereby requests suspension of this proceeding pending a final determination of the civil action. Trade-
`mark Rule 2.117.
`Toddy, LLC has secured the express consent of all other parties to this proceeding for the suspension re-
`quested 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,
`/Saul Cohen/
`Saul Cohen
`saul.cohen@kelly-ip.com, kelu.sullivan@kelly-ip.com, lit-docketing@kelly-ip.com
`11/22/2023
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 1 of 22
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`
`
`
`
`
`
`Civil Action No.
`
`TODDY, LLC,
`
`Plaintiff,
`
`v.
`
`BRUMATE, INC.,
`
`Defendant.
`
`COMPLAINT AND JURY DEMAND
`
`Plaintiff Toddy, LLC (Plaintiff and their predecessors-in-interest are collectively referred
`
`to as “Toddy” or “Plaintiff”), by their undersigned attorneys, files this Complaint against
`
`Defendant BruMate, Inc. (“Brumate” or “Defendant”) for trademark infringement, false
`
`designation of origin, unfair competition, and deceptive trade practices under the Lanham Act,
`
`the Colorado Consumer Protection Act, and common law. Plaintiff alleges as follows, upon
`
`actual knowledge with respect to itself and its own acts, and upon information and belief as to all
`
`other matters:
`
`I.
`
`THE PARTIES
`
`1.
`
`Plaintiff is a limited liability company organized and existing under the laws of
`
`the State of Colorado with its principal place of business located at 3706 Aldrin Drive, Loveland,
`
`Colorado 80538.
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 2 of 22
`
`2.
`
`Upon information and belief, Defendant BruMate, Inc. is a corporation organized
`
`and existing under the laws of the State of Delaware with a principal place of business at 3601
`
`Walnut St., Fifth Floor, Denver, Colorado 80205. Defendant also has listed its address as 2061
`
`York Street, Denver, Colorado 80205 in documents filed with the Colorado Secretary of State’s
`
`office.
`
`II.
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has subject matter jurisdiction over this matter pursuant to 15 U.S.C.
`
`§ 1121 (the Lanham Act) and 28 U.S.C. §§ 1331 and 1338(a) and (b) (federal question). This
`
`Court has supplemental jurisdiction over Plaintiff’s state law claims pursuant to 28 U.S.C.
`
`§ 1367 because those claims are so related to its federal claims that they form part of the same
`
`case or controversy and derive from a common nucleus of operative fact.
`
`4.
`
`This Court has personal jurisdiction over Defendant, and venue is proper in this
`
`District pursuant to 28 U.S.C. § 1391(b)(2), because Defendant has its principal place of business
`
`in Denver, Colorado. Furthermore, Defendant’s unfair competition and deceptive practices are
`
`directed at consumers in this District and cause harm to Plaintiff in this District. In addition, on
`
`information and belief, Defendant’s activities about which Plaintiff complains, including its
`
`development and use of an infringing mark and its promotion and sale of products bearing that
`
`infringing mark, occurred in substantial part in this District.
`
`III. BACKGROUND
`
`Plaintiff’s Business and the TODDY Mark
`
`5.
`
`Plaintiff is the industry leader in the manufacture and distribution of equipment
`
`for the cold brewing of coffee and tea. During the cold brewing process, time replaces heat, as
`
`2
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 3 of 22
`
`coffee grounds or tea are steeped in cold water and then filtered through a special filtering
`
`system. The bitter compounds that other brewing methods release are not released in the cold
`
`brewing process. The result is a smooth, low-acid concentrate ideal for iced or hot coffee or tea.
`
`Over the last several years, the popularity of cold brewed coffee has skyrocketed; it is now sold
`
`and promoted by popular coffeehouses and restaurants such as Starbucks, Blue Bottle Coffee,
`
`Coffee Bean & Tea Leaf, La Colombe, Dunkin’ Donuts, and many more.
`
`6.
`
`Plaintiff’s cold brew process was developed in the early 1960s by Todd Simpson,
`
`a chemical engineering graduate of Cornell University, and marketed under the trademark
`
`TODDY (the “TODDY Mark”). As early as 1980, Simpson used the TODDY Mark in
`
`connection with the marketing and sale of coffee and tea, as well as equipment used to brew
`
`coffee and tea. Plaintiff Toddy, LLC purchased the TODDY brand and assets in 2010.
`
`7.
`
`Today, Plaintiff sells home and commercial brewers, filters, accessories, premium
`
`coffee and tea, and merchandise, including drinking vessels, under the TODDY Mark throughout
`
`the country. Plaintiff’s products are sold through brick-and-mortar retailers, online retailers, and
`
`coffeehouses. In addition, Plaintiff’s commercial cold brew systems (“TODDY Cold Brew
`
`Systems”) and filters are the choice of well-known international, national, and regional
`
`coffeehouse chains and thousands of specialty coffeehouses around the country. Plaintiff has
`
`sold more than one million TODDY Cold Brew Systems at retail. Plaintiff’s products have been
`
`featured in numerous publications, including the New York Times, U.S. News and World
`
`Report, and Time Magazine.
`
`8.
`
`Since at least as early as 1980, Plaintiff has used the TODDY Mark continuously
`
`in commerce in connection with coffee and tea products and related equipment, accessories, and
`
`3
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 4 of 22
`
`merchandise. Representative examples of Plaintiff’s products, including coffee and tea brewers,
`
`specialty coffee, and drinking vessels, are shown below:
`
`9.
`
`In addition to its decades-old and strong common-law rights in its TODDY Mark,
`
`Plaintiff owns the following federal trademark registrations, among others:
`
`
`
`4
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 5 of 22
`
`Mark
`
`Reg. No. /Date
`
`Classes and Goods and Services
`
`TODDY
`
`5609354
`
`INT. CL. 16 Paper coffee filters
`
`
`
`Nov. 20, 2018
`
`INT. CL. 21 Non-electric coffee and tea makers and
`
`parts and accessories therefor, sold as a unit; Filters
`
`not of paper being part of non-electric coffee and tea
`
`makers
`
`TODDY
`
`2124767
`
`INT. CL. 30 Coffee; tea
`
`Dec. 30, 1997
`
`TODDY
`
`1925306
`
`INT. CL. 21 food processing machinery, namely, non-
`
`
`
`
`
`Oct. 10, 1995
`
`electric coffee makers for household and commercial
`
`use
`
`
`
`5399530
`
`INT. CL. 11 Coffee filters not of paper being part of
`
`Feb. 13, 2018
`
`electric coffee makers.
`
`INT. CL. 16 Paper coffee filters; paper filters for
`
`coffee makers
`
`INT. CL. 21 Non-electric coffee makers and non-
`
`paper coffee makers filters being part of non-electric
`
`coffee makers for household and commercial use
`
`INT. CL. 30 Coffee
`
`Copies of these registration certificates are attached as Exhibit A.
`
`10.
`
`The federal registrations listed above are prima facie evidence of Plaintiff’s
`
`ownership of and the validity of those registered marks. Further, Registration Nos. 2124767 and
`
`1925306 are incontestable, and thus constitute conclusive evidence of Plaintiff’s exclusive right
`
`to use the TODDY Mark for the products specified in those registrations pursuant to 15 U.S.C.
`
`§§ 1065 and 1115(b).
`
`11.
`
`Plaintiff has expended considerable amounts of money advertising and promoting
`
`its products under the TODDY Mark, and has developed immense goodwill associated with the
`
`TODDY Mark by, among other things: advertising in printed publications and on the radio;
`
`5
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 6 of 22
`
`conducting social media campaigns; promoting YouTube videos; prominently featuring the
`
`TODDY Mark on its products, including but not limited to its promotional items, t-shirts, hats,
`
`accessories, and drinking vessels; attending trade shows; and using the TODDY Mark on its
`
`website and elsewhere.
`
`12.
`
`Plaintiff has used the TODDY Mark on drinking vessels since at least 2007.
`
`Representative examples of Toddy’s drinking vessels (including insulated cups) bearing the
`
`TODDY Mark are shown below:
`
`
`
`13.
`
`Based on the success and popularity of the TODDY Cold Brew System and
`
`Plaintiff’s widespread and continuous use of the TODDY Mark as a source identifier for
`
`decades, and on the public and industry acknowledgement of the same, the TODDY Mark is and
`
`has long been widely recognized as a source identifier for high-quality goods.
`
`14.
`
`The TODDY Mark is an arbitrary and inherently distinctive trademark. The
`
`TODDY Mark also is commercially strong as a result of, among other things, Plaintiff’s
`
`extensive use of the TODDY Mark for decades, and it has become uniquely associated with
`
`Plaintiff.
`
`6
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 7 of 22
`
`Defendant’s Wrongful Acts
`
`15.
`
`Defendant uses and has used an infringing TODDY mark in unauthorized ways
`
`that falsely suggest and are likely to create the mistaken belief or impression that Defendant’s
`
`products come from Plaintiff; are authorized, approved, or licensed by Plaintiff; and/or that
`
`Defendant is part of or otherwise affiliated with Plaintiff.
`
`16.
`
`Defendant has displayed, advertised, promoted, distributed, manufactured, offered
`
`for sale, and/or sold products bearing the mark TODDY. Specifically, Defendant markets and
`
`sells insulated drinking vessels that it identifies on its packaging and advertising as “TODDY” or
`
`“Toddy” (“Brumate Mugs”). As noted above, Plaintiff also sells insulated drinking vessels under
`
`its TODDY Mark.
`
`17.
`
`On information and belief, BruMate, Inc. was founded by Dylan Jacob in Denver,
`
`Colorado in 2016. Plaintiff’s use of the TODDY Mark, including in connection with the sale of
`
`drinking vessels, thus long predates Defendant’s use of the infringing TODDY mark.
`
`18.
`
`Defendant uses the word TODDY in a stylized trademark manner—and in many
`
`cases in larger size than the BRUMATE house mark—as shown below:
`
`
`
`7
`
`

`

`Page 8 of 22
`Filed 06/08/22 USDC Colorado
`Case 1:22-cv-01441-SKC Document 1
`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 8 of 22
`
`BRUMATE
`
`
`
`DOUBLE-THREADED
`
`_
`
`
` a
`
`i
`
`if
`
`|
`
`
`
`BEVGUARD(cid:8482) TECH
`
`
`
`
`
`
`
`
`
`(BRUMATE)
`#ORINKBETTER
`
`TODDY
`
`:
`
`___.
`(cid:8212)_
`BRUMATE}
`DRINKBETTER
`
`Toor x.
`
`SHOP
`
`CREATEGIFTSET
`
`OUR STORY
`
`BRU MATE
`
`o
`
`ACCOUNT
`
`Q
`
`Ov)
`
`Aw
`
`SHOP THE TODDY
`The BriMate Toddy is the world's first 100% leak-
`proof, insulated mug with a handle designed for your
`favorite hot drinks at home or on-the-go. Includes new
`BevLock(cid:8482) Technology with a fully leak proof locking lid
`so you can take your beverage wherever, whenever. The
`Toddy is your versatile, go-to mug, from toddies to
`coffee and everything in between. Works with cold
`beverages, too!
`
`@
`
`2
`
`wo
`
`@
`
`(cid:8220))
`
`@
`
`ADD TO CART - $ 29.99
`
`LIFE TIME
`=
`SHIPS IN 1-2
`=
`a) BUSINESS DAYS 0 WARRANTY
`
`@
`
`SHOP
`
`CREATEGIFT SET
`
`(cid:8212) OUR STORY
`
`BRUMATE
`
`2
`
`ACCOUNT
`
`= «QQ
`
`Vv)
`
`faXeo)
`
`
`
`TODDY ON THE MUV
`
`
`
` 8
`
`
`
`
`
`
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 9 of 22
`
`19.
`
`Defendant offers its Brumate Mugs for sale through retail stores, including Bed,
`
`Bath & Beyond, Scheels, and Best Buy, and online retailers such as Amazon.
`
`20.
`
`A search for the word “toddy” on Amazon places Plaintiff’s and Defendant's
`
`coffee-related products next to each other, as shown in the images below. Adding to the
`
`
`
`9
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 10 of 22
`
`likelihood of confusion, one sponsored search result for a Brumate Mug shown below describes
`
`the product without using the word “Brumate” at all.
`
`
`
`10
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 11 of 22
`
`21.
`
`Consumers of coffee and tea are thus likely to encounter both Plaintiff’s and
`
`
`
`Defendant’s coffee- and tea-related products.
`
`22.
`
`On May 18, 2021, counsel for Plaintiff contacted Defendant to request that
`
`Defendant cease and desist from using the infringing TODDY mark. See Exhibit B. Defendant
`
`responded by alleging that “Brumate is merely using the term TODDY descriptively to refer to
`
`its insulated mug for serving hot toddies and other warm cocktails”—presumably in an effort to
`
`differentiate its products from Plaintiff’s coffee- and tea-related products. See Exhibit C.
`
`Defendant’s suggestion that it uses TODDY descriptively rather than in a trademark manner is
`
`belied by Defendant’s actual use of the term.
`
`11
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 12 of 22
`
`23.
`
`Brumate Mugs are not marketed exclusively as vessels for alcoholic beverages.
`
`To the contrary, the headline for the product on Defendant’s website describes Brumate Mugs as
`
`“Insulated Coffee Mug[s],” as shown below, not vessels for “hot toddies and other warm
`
`cocktails”:1
`
`
`
`24.
`
`Defendant’s website also touts that the Brumate Mugs are “versatile, fully
`
`leakproof, triple-insulated stainless steel mug[s] with a handle that works with both hot and cold
`
`beverages. . . . Perfect for morning coffee, late night cocktails, and every drink in between.”2
`
`25.
`
`Further contradicting Defendant’s contention that its use of the word TODDY is a
`
`merely descriptive term referring to “its insulated mug for serving hot toddies and other warm
`
`cocktails,” Defendant’s website conspicuously excludes the Brumate Mugs from its collection of
`
`“Spirits & Barware.”3 Instead, the Brumate Mugs appear on the page for the collection of
`
`“Leakproof Coffee Tumblers.”4 Compare the images from Defendant’s website below:
`
`
`1 https://brumate.com/collections/toddy (last accessed June 8, 2022).
`
`2 https://brumate.com/products/toddy-xl-32oz-onyx-leopard (last accessed June 8, 2022).
`
`3 https://brumate.com/collections/spirits (last accessed June 8, 2022).
`
`4 https://brumate.com/collections/coffee (last accessed June 8, 2022).
`
`12
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 13 of 22
`
`
`
`
`
`26.
`
` Even if Defendant were to market the Brumate Mugs solely for cocktails (and it
`
`does not), a “hot toddy” is a type of beverage, not a type of drinking vessel, so the term is not
`
`merely descriptive of an insulated mug.5 Defendant, moreover, does not use the word TODDY as
`
`
`5 See, e.g., Paul Clarke, What’s Your Favorite Approach to the Hot Toddy?, Serious Eats
`(updated Aug. 9, 2018), https://www.seriouseats.com/how-to-make-a-hot-toddy-winter-cocktails
`(“At its most basic, the toddy is almost the simplest of all spirituous concoctions: liquor, sugar,
`hot water—done.”).
`
`13
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 14 of 22
`
`a descriptive adjective for a type of drinking vessel—it simply calls its product “Toddy” or “the
`
`Toddy.” Furthermore, the word TODDY is not actually descriptive of the Brumate Mugs. The
`
`terms “toddy glass” or “toddy mug” refer to clear glass vessels used to serve hot alcoholic
`
`beverages, not insulated metal coffee mugs.6
`
`27.
`
`After receiving Plaintiff’s cease-and-desist letter, Defendant increased its
`
`trademark infringement instead of ceasing use of the infringing TODDY mark.
`
`28.
`
`Given the identical marks and the identical or closely related nature of the goods
`
`offered by Plaintiff and Defendant under the same mark, consumers are likely to mistakenly
`
`believe that Defendant’s products come from, are sponsored or licensed by, or are otherwise
`
`affiliated or connected with Plaintiff and/or its TODDY Mark. Plaintiff is known for its coffee
`
`and tea-related products including home and commercial brewers, filters, accessories, premium
`
`coffee and tea, and merchandise, including drinking vessels, all of which Plaintiff sold before
`
`Defendant’s first use of the infringing TODDY mark; consumers are thus likely to associate
`
`Defendant’s drinking vessels with Plaintiff and/or its TODDY Mark. Furthermore, Plaintiff’s
`
`success in the field of coffee-related products in particular is likely to enhance the likelihood of
`
`confusion given that Defendant advertises the Brumate Mugs as “Insulated Coffee Mug[s].”
`
`Defendant’s claim, moreover, that the Brumate Mugs work for “cold beverages” is further likely
`
`to cause confusion given that Plaintiff is known for its cold brewing products. And Defendant’s
`
`
`6 See Simon Difford, Cocktail glassware, Difford’s Guide, https://www.diffords
`guide.com/g/1150/how-to-make-cocktails/cocktail-glassware (last accessed June 8, 2022); see
`also, e.g., https://shop.sagamorespirit.com/products/hot-toddy-glass (last accessed June 8, 2022);
`https://www.cocktailcourier.com/product/hot-toddy-mug-set-of-4/ (last accessed June 8, 2022).
`
`14
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 15 of 22
`
`sale of drinking vessels in connection with the infringing TODDY mark will exacerbate the
`
`confusion given that Plaintiff also sells drinking vessels in connection with its TODDY Mark.
`
`Injury to Plaintiff and the Public
`
`29.
`
`Defendant’s actions with respect to its use of the infringing TODDY mark have
`
`damaged and irreparably injured and, if permitted to continue, will further damage and
`
`irreparably injure Plaintiff, the TODDY Mark, and Plaintiff’s reputation and goodwill associated
`
`with the TODDY Mark. Defendant’s actions also damage the public’s interest in being free from
`
`confusion as to the source, sponsorship, and/or affiliation of Plaintiff’s and Defendant’s
`
`products.
`
`30.
`
`Defendant’s use of the infringing TODDY mark is likely to cause confusion,
`
`mistake, or deception as to the source or origin of Defendant and/or its products with Plaintiff
`
`and/or Plaintiff’s products.
`
`31.
`
`Defendant knew or should have known of Plaintiff’s prior rights in the TODDY
`
`Mark before adopting and using the mark in connection with its own products, and thus
`
`Defendant has acted willfully with respect to Plaintiff’s prior trademark rights.
`
`32.
`
`Plaintiff has no adequate remedy at law.
`
`IV. CLAIMS FOR RELIEF
`
`COUNT 1
`Trademark Infringement
`Under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)
`
`33.
`
`Plaintiff re-alleges and incorporates by reference each and every allegation set
`
`forth above.
`
`15
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 16 of 22
`
`34.
`
`Defendant used and continues to use in commerce reproductions and colorable
`
`imitations of the TODDY Mark in connection with the offering, sale, distribution, and
`
`advertising of Defendant’s products, which are likely to cause confusion, mistake, or deception
`
`as to the origin, sponsorship, or approval of Defendant’s products, services, and commercial
`
`activities above in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114.
`
`35.
`
`Defendant’s actions described above have at all times relevant to this action been
`
`willful and/or knowing.
`
`36.
`
`As a direct and proximate result of the actions of Defendant as alleged above,
`
`Plaintiff has been and will continue to be damaged and irreparably harmed.
`
`37.
`
`Plaintiff has no adequate remedy at law.
`
`COUNT 2
`False Designation of Origin and Unfair Competition
`Under Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)
`
`38.
`
`Plaintiff re-alleges and incorporates by reference each and every allegation set
`
`forth above
`
`39.
`
`Defendant’s actions described above are likely to cause confusion, mistake, or
`
`otherwise deceive the public as to the origin, sponsorship, or approval of Defendant’s products
`
`and commercial activities, and thus constitute false designation of origin and unfair competition
`
`in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).
`
`40.
`
`Defendant’s actions described above have at all times relevant to this action been
`
`willful and/or knowing.
`
`41.
`
`As a direct and proximate result of the actions of Defendant as alleged above,
`
`Plaintiff has been and will continue to be damaged and irreparably harmed.
`
`16
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 17 of 22
`
`42.
`
`Plaintiff has no adequate remedy at law.
`
`COUNT 3
`Common Law Unfair Competition
`
`43.
`
`Plaintiff re-alleges and incorporates by reference each and every allegation set
`
`forth above.
`
`44.
`
`Defendant’s acts alleged herein constitute unfair competition in violation of
`
`Plaintiff’s rights under Colorado common law.
`
`45.
`
`Defendant has made unauthorized and infringing use of Plaintiff’s trademarks and
`
`trade name in promoting, marketing and selling their products.
`
`46.
`
`Through prior and continuous use of the TODDY Mark, the public mind
`
`identifies the user of that mark with Plaintiff and Plaintiff’s products.
`
`47.
`
`Defendant has used the name TODDY and/or a simulation of the name in
`
`connection with the sale of products similar to those sold by Plaintiff. The public is likely to be
`
`deceived by this use.
`
`48.
`
`As a direct and proximate result of the actions of Defendant as alleged above,
`
`Plaintiff has been and will continue to be damaged and irreparably harmed.
`
`49.
`
`Plaintiff has no adequate remedy at law.
`
`COUNT 4
`Deceptive Trade Practices
`Under the Colorado Consumer Protection Act, Colo. Rev. Stat. § 6-1-105
`
`50.
`
`Plaintiff re-alleges and incorporates by reference each and every allegation set
`
`forth above.
`
`51.
`
`Defendant’s use of the infringing TODDY mark constitutes deceptive trade
`
`practices in violation of the Colorado Consumer Protection Act, Colo. Rev. Stat. § 6-1-105,
`
`17
`
`

`

`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 18 of 22
`
`because by such use Defendant (1) passes off its goods as those of another; (2) makes a false
`
`representation as to the source, sponsorship, approval and/or certification of its goods; and (3)
`
`makes a false representation as to affiliation, connection and/or association with or certification
`
`by Plaintiff.
`
`52.
`
`Defendant’s conduct occurred in the course of Defendant’s business and has been
`
`and continues to be knowing, willful, deliberate and in bad faith, with intent to deceive and to
`
`trade on the goodwill associated with Plaintiff’s TODDY Mark.
`
`53.
`
`Defendant’s deceptive trade practices have had and will continue to have a
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`significant negative impact on the public, which is likely be deceived as to the origin,
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`sponsorship, or approval of Defendant’s products and commercial activities.
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`54.
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`By its conduct, Defendant has harmed and deceived the public and inflicted
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`damage and irreparable injury upon Plaintiff’s legally protected interest in the TODDY Mark
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`and its goodwill, for which it has no adequate remedy at law, and Defendant will continue to do
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`so unless restrained and enjoined by the Court from further infringing the TODDY Mark and
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`confusing the public.
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`V.
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`PRAYER FOR RELIEF
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`Plaintiff respectfully requests that this Court enter judgment in its favor on each and
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`every claim for relief set forth above, and award it relief including, but not limited to, the
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`following:
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`a. An Order declaring that Defendant’s use of the infringing TODDY mark infringes
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`Plaintiff’s TODDY Mark and constitutes trademark infringement, false designation of
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`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 19 of 22
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`origin, unfair competition, and deceptive trade practices under federal, state, and/or
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`common law, as detailed above;
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`b. An Order enjoining Defendant and its respective officers, directors, agents, servants,
`
`and employees, and persons acting in concert with them:
`
`i. From using, promoting, selling, marketing, or registering the infringing
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`TODDY mark or any trademark, service mark, logo, trade name, or other
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`identifier that is confusingly similar to the TODDY Mark;
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`ii. From passing off any products or services as those of Plaintiff or
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`otherwise implying an association of Defendant’s products with those of
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`Plaintiff, causing a likelihood of confusion or misunderstanding as to the
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`source or sponsorship or affiliation of their business, products or services
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`with Plaintiff;
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`iii. From instructing, assisting, aiding, or abetting any other person or
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`business entity in engaging or in performing any of the activities referred
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`to in subparagraphs i and ii above;
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`c. An Order compelling Defendant to provide an accounting of all gains, profits,
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`benefits, and advantages derived as a result of the infringement of the TODDY Mark
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`and unfair competition to the full extent provided for by Section 35 of the Lanham
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`Act, 15 U.S.C. § 1117;
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`d. An Order directing Defendant to immediately and permanently remove the infringing
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`TODDY mark from all products, websites (including but not limited to Defendant’s
`
`https://www.brumate.com/ website), third-party websites (including but not limited to
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`19
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`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 20 of 22
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`Defendant’s social media pages on Facebook, Twitter, LinkedIn, and any other social
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`media platforms), advertising, promotional materials, television commercials, videos,
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`signage, posters, displays, brochures, catalogs, newsletters, manuals, forms,
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`stationery, promotional merchandise, print materials, and any other materials and
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`things that bear or display the infringing TODDY mark, or any other designs, logos,
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`names, or marks that are confusingly similar to Plaintiff’s TODDY Mark;
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`e. An Order directing Defendant to immediately cancel all placements of any
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`advertisements, promotions, and listings in any media or format bearing or displaying
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`the infringing TODDY mark, or any other designs, logos, names, or marks that are
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`confusingly similar to Plaintiff’s TODDY Mark;
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`f. An Order requiring Defendant to pay Plaintiff the cost for corrective advertising
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`and/or to engage in corrective advertising in a manner directed by the Court;
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`g. An Order directing Defendant to file with this Court and serve on Plaintiff's attorneys,
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`within thirty (30) days after the date of entry of any injunction, a report in writing and
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`under oath setting forth in detail the manner and form in which it has complied with
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`the injunction;
`
`h. An Order requiring Defendant to account for and pay to Plaintiff any and all profits
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`arising from the foregoing acts of infringement, false designation of origin, and unfair
`
`competition, and increasing such profits for payment to Plaintiff in accordance with
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`15 U.S.C. § 1117 and other applicable statutes and laws;
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`20
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`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 21 of 22
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`i. An Order requiring Defendant to pay Plaintiff trebled compensatory damages in an
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`amount as yet undetermined caused by the foregoing acts of false designation of
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`origin and unfair competition;
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`j. An Order requiring Defendant to account for and pay to Plaintiff any and all profits
`
`arising from the foregoing deceptive trade acts under the Colorado Consumer
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`Protection Act;
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`k. An Order requiring Defendant to pay Plaintiff trebled compensatory damages in an
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`amount as yet undetermined caused by the foregoing deceptive trade acts under the
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`Colorado Consumer Protection Act;
`
`l. An Order requiring Defendant to pay Plaintiff’s costs and attorney fees in this action
`
`pursuant to 15 U.S.C. § 1117, Colo. Rev. Stat. § 6-1-113, and other applicable
`
`statutes and laws; and
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`m. Other relief as the Court may deem appropriate.
`
`VI.
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`JURY DEMAND
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`Plaintiff respectfully demands a trial by jury on all issues so triable.
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`21
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`Case 1:22-cv-01441-SKC Document 1 Filed 06/08/22 USDC Colorado Page 22 of 22
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`Dated: June 8, 2022
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`
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`
`
` /s/ Carolyn J. Fairless
`Carolyn J. Fairless
`Melissa L. Romero
`WHEELER TRIGG O’DONNELL LLP
`370 Seventeenth Street, Suite 4500
`Denver, CO 80202-5647
`Telephone: (303) 244-1800
`fairless@wtotrial.com
`romero@wtotrial.com
`
`David M. Kelly (admission to be sought)
`Kelu Sullivan (admission to be sought)
`Saul Cohen (admission to be sought)
`KELLY IP, LLP
`1300 19th Street, N.W., Suite 420
`Washington, D.C. 20036
`Telephone: (202) 808-3570
`david.kelly@kelly-ip.com
`kelu.sullivan@kelly-ip.com
`saul.cohen@kelly-ip.com
`
`Attorneys for Plaintiff
`
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`Page 1 of 7
`Filed 06/08/22 USDC Colorado
`Case 1:22-cv-01441-SKC Document 1-1
`Case 1:22-cv-01441-SKC Document 1-1 Filed 06/08/22 USDC Colorado Page 1 of 7
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`EXHIBIT A
`EXHIBIT A
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`Case 1:22-cv-01441-SKC Document 1-1 Filed 06/08/22 USDC Colorado Page 2 of 7
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`Reg. No. 5,609,354
`
`Registered Nov. 20, 2018
`
`Toddy, LLC  (COLORADO LIMITED LIABILITY COMPANY)
`5185 E 37th St.
`Loveland, COLORADO 80538
`
`Int. Cl.: 16, 21
`
`Trademark
`
`Principal Register
`
`CLASS 16: Paper coffee filters
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`FIRST USE 00-00-1985; IN COMMERCE 00-00-1985
`
`CLASS 21: Non-electric coffee and tea makers and parts and accessories therefor, sold as a
`unit; Filters not of paper being part of non-electric coffee and tea makers
`
`FIRST USE 00-00-1966; IN COMMERCE 00-00-1966
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`OWNER OF U.S. REG. NO. 1925306
`
`SER. NO. 86-821,793, FILED 11-16-2015
`
`

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`Case 1:22-cv-01441-SKC Document 1-1 Filed 06/08/22 USDC Colorado Page 3 of 7
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`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`Requirements in the First Ten  Years*
`What and When to File:
`
`First Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`
`years after the registration date.
`
` See 15 U.S.C. §§1058, 1141k.
`
` If the declaration is accepted, the
`
`registration will continue in force for the remainder of the ten-year period, calculated from the registration
`
`date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
`
`Second Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) and an Application
`
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
` and  an  Application for Renewal
`You must file a Declaration of Use (or Excusable Nonuse)
`between every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with
`the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS:  The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
`(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
`The time periods for filing are based on the U.S. registration date (not the international registration date).  The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
`nationally issued registrations.  See 15 U.S.C. §§1058, 1141k.  However, owners of international registrations
`do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
`international registration at the International Bureau of the  World Intellectual Property Organization, under
`Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
`date of the international registration.