ESTTA Tracking number:
`
`Filing date:
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`ESTTA1366528
`06/21/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91289576
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Plaintiff
`Tasty Greens LLC
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`JACQUELINE L. PATT
`MARKERY LAW LLC
`P.O. BOX 84150
`GAITHERSBURG, MD 20883-4150
`UNITED STATES
`Primary email: docket@markerylaw.com
`Secondary email(s): jackiepatt@markerylaw.com, katrinahull@markerylaw.com,
`taratoth@markerylaw.com, info@markerylaw.com
`202-888-7885
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`Motion to Suspend for Civil Action
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`Katrina G. Hull
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`docket@markerylaw.com, katrinahull@markerylaw.com, jack-
`iepatt@markerylaw.com, taratoth@markerylaw.com
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`/katrinaghull/
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`06/21/2024
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`Attachments
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`Motion for Suspension with Complaint Attached.pdf(4657443 bytes )
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`

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`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Tasty Greens LLC,
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`Opposer,
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` v.
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`B-Epic Worldwide LLC,
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`Applicant.
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`Opposition No. 91289576
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`Serial No. 97/750,399
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`Mark: GR8 GREENS & Circle Design
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`MOTION FOR SUSPENSION
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`Tasty Greens LLC (“Opposer”), by and through undersigned counsel, hereby moves to
`suspend this Opposition under TBMP § 510.02(a) based on the civil action filed on June 21,
`2024, in the U.S. District Court for the District of Utah, Central Division, by the Opposer
`against B-Epic Worldwide LLC (“Applicant”). A copy of the trademark infringement Complaint
`is attached to this Motion.
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`The Complaint is likely to have a bearing on this Opposition proceeding because it
`involves the same question of whether Applicant’s GR8 GREENS & Circle Design mark for
`dietary and nutritional supplements is likely to cause confusion with Opposer’s 8GREENS and
`8G & Circle Design marks for dietary and nutritional supplements.
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`Opposer respectfully requests suspension of the Opposition for the civil litigation.
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`Respectfully submitted,
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`Date: June 21, 2024
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`By:
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`1
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`
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`/Katrina G. Hull/
`Katrina G. Hull
`Jacqueline L. Patt
`Markery Law, LLC
`P.O. Box 84150
`Gaithersburg, MD 20883
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`Attorneys for Opposer
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`CERTIFICATE OF SERVICE
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`The undersigned, attorney for Opposer, hereby certifies that she served, by email a
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`copy of the foregoing Motion to Suspend upon the attorney of record for the Applicant this
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`21st day of June, 2024:
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`Joshua G. Gigger
`STOEL RIVES LLP
`201 SOUTH MAIN STREET, SUITE 205
`SALT LAKE CITY, UT 84111
`UNITED STATES
`tm-slc@stoel.com, josh.gigger@stoel.com
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`/Katrina G. Hull/
`Katrina G. Hull
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`2
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`TASTY GREENS LLC,
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`
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`v.
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`B-EPIC WORLDWIDE LLC,
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`
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`
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`Plaintiff,
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`Defendant.
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.3 Page 1 of 18
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`
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`Jonathan H. Love (UT #14249)
`PARSONS BEHLE & LATIMER
`201 South Main Street, Suite 1800
`Salt Lake City, UT 84111
`Tel.: (801) 532-1234
`Fax: (801) 536-6111
`JLove@parsonsbehle.com
`ecf@parsonsbehle.com
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`Attorneys for Plaintiff Tasty Greens LLC
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
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`COMPLAINT
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`(JURY DEMAND)
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`Case No. 1:24-cv-00108-JCB
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`Judge Jared C. Bennett
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`Plaintiff, Tasty Greens LLC, by its undersigned attorneys, complains against Defendant,
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`B-Epic Worldwide LLC, as follows:
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`STATUTORY BASIS OF ACTION
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`1. This action is for: (1) trademark infringement under section 32 of the Lanham Act (15
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`U.S.C. § 1114(1)); (2) trademark infringement, false designation of origin and unfair competition
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`under section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)); and (3) common law trademark
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`infringement and unfair competition under Utah law.
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`4891-5245-2810
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`

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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.4 Page 2 of 18
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`
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`THE PARTIES
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`2.
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` Plaintiff Tasty Greens LLC (hereafter “Plaintiff” or “Tasty Greens”) is a Delaware
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`limited liability company, with an address at 1230 6th Avenue, New York, NY, 10020, selling
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`dietary and nutritional supplements.
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`3. On information and belief, Defendant B-Epic Worldwide LLC (hereafter “Defendant”
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`or “B-Epic”) is a Utah limited liability company, located at 3075 North Fairfield Road, Layton,
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`Utah, 84041, selling dietary and nutritional supplements.
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`JURISDICTION AND VENUE
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`4.
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`Subject matter jurisdiction is expressly conferred on this Court under 15 U.S.C.
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`§ 1121 and 28 U.S.C. §§ 1331 and 1338(a).
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`5. This Court has supplemental jurisdiction over the state law claim pursuant to 28
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`U.S.C. §1367 because the claim is so related to the claims in this action with the Court’s original
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`jurisdiction that they form part of the same case or controversy under Article III of the United
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`States Constitution.
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`6.
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`Personal jurisdiction over Defendant is vested in this Court since Defendant is a Utah
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`company and has committed one or more of the acts complained herein within this State and
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`District.
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`7. Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b) because Defendant
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`resides in this District.
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`THE 8GREENS BRAND MARKS
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`8. Tasty Greens is the owner of the commercially successful 8GREENS brand of dietary
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`and nutritional supplements made from green leafy vegetables and herbs, and the 8GREENS
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`supplements are frequently encountered by consumers at some of the nation’s largest retailers.
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`4891-5245-2810
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`2
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.5 Page 3 of 18
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`9. Tasty Greens’ founder, Dawn Russell, was a former Ralph Lauren and Donna Karan
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`model when she was diagnosed with an aggressive cancer. Ms. Russell travelled the world to find
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`alternative remedies to improve her health. She found that eating huge amounts of certain
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`vegetables had the biggest impact on how she felt. After her recovery, Ms. Russell wanted to bring
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`what she learned to everyone in an affordable dietary supplement that tastes good but does not
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`have sugar. It took five years, but she developed the effervescent 8GREENS tablets. All products
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`sold under the 8GREENS marks contain a proprietary blend of plant-based ingredients.
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`10.
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`8GREENS supplements were first sold in U.S. commerce in December 2015, and Tasty
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`Greens has continuously sold dietary supplements under the 8GREENS mark in the United States
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`since December 2015. Since at least as early as February 15, 2016, Tasty Greens has also
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`continuously sold its supplements under an 8G & Circle Design mark.
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`11. Tasty Greens’ 8GREENS supplements, which include a tablet and powders that
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`dissolve in water to create a nutritional beverage, have experienced tremendous sales growth over
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`the last nine years.
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`12. All advertising and product packaging for the 8GREENS products prominently
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`features the 8GREENS mark, and the 8GREENS and 8G & Circle Design mark (collectively the
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`“8GREENS Brand Marks”) are frequently used together and in close proximity to one another,
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`including the following examples:
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`4891-5245-2810
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`3
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.6 Page 4 of 18
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`4891-5245-2810
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`4
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.7 Page 5 of 18
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`13. Tasty Greens first sold its 8GREENS effervescent tablets through Nordstrom
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`department stores in 2015. It quickly expanded into other trade channels under the 8GREENS
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`Brand Marks, including Neiman Marcus in August 2016, QVC in May 2017, and Amazon.com
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`in January 2018. Tasty Greens’ supplements are currently available in the United States in more
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`than 11,000 online and brick and mortar retail stores, including Target, QVC, Whole Foods,
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`Sprouts, Walgreens, King Soopers, Meijer, Kroger, Free People, and Urban Outfitters, as well as
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`from Tasty Greens’ website, www.8greens.com. Tasty Greens has thousands of positive
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`customer reviews on the retail websites.
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`14. Tasty Greens sells its 8GREENS effervescent tablets in a variety of packaging, that
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`ranges from a 10-tablet container for $16.00, or $1.60 per day, to a variety pack with a 30-day
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`supply of tablets for $42. Tasty Greens’ product line offered under the 8GREENS Brand Marks
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`also includes powder, chewables, gummies, lollipops, a water bottle, and a cookbook.
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`4891-5245-2810
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`5
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.8 Page 6 of 18
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`15. Tasty Greens 8GREENS supplements have been featured on numerous television
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`shows and in popular publications, as well as endorsed by celebrities and advertised online, with
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`the 8GREENS brand receiving more than 2.5 billion digital impressions.
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`16. Tasty Greens’ 8GREENS products have received significant unsolicited media
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`attention, awards, and celebrity endorsements and promotions. Tasty Greens 8GREENS products
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`have been featured in dozens of print and online articles, including People, InStyle, Town &
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`Country, Harpers Bazaar, Real Simple, Elle, Vogue, Kasil Jean, Crazy Blonde Life, Glossy,
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`OUR100, InStyle, Yahoo!Finance, Pitchbook, JustBobbi, Marie Claire, Cosmopolitan,
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`Prevention, Women’s Health, The Hallmark Channel, Forbes, Beauty Independent, Departures,
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`The Naughty Mommy, Beauty and Well-Being, US Weekly, The Purist, The Newsette, New York
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`Magazine, New York Post, PopSugar, The Cut, Thrive Global, Molly Simms, Boca Raton
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`Observer FoodAndWine.com, NYMag.com, KimKardashianWest.com, LATimes.com,
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`HuffingtonPost.com, BravoTV.com, Observer.com, and others. Ms. Russell has also appeared on
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`numerous television programs to promote the 8GREENS products including Good Morning
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`America, Extra, New York Live, Harry Connick Jr QVC, The Ellen Show, The Today Show, The
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`Drew Barrymore Show, Good Morning America, Access Hollywood, and Extra.
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`17. Multiple celebrities have endorsed the 8GREENS products by offering testimonials
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`that appear on Tasty Greens’ website, including actors Keri Russell, Harry Connick Jr., and
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`Mario Lopez, super models Helena Christensen and Kara Young, and make-up artist and
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`entrepreneur Bobbi Brown, and musician Alex James. Celebrity posts on social media have also
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`brought attention to the 8GREENS brand, such as a March 2021 Instagram post, with more than
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`25,000 likes, by Mindy Kaling (6.5 million followers) that pictures 8GREENS tablets, and an
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`4891-5245-2810
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`6
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.9 Page 7 of 18
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`October 2020 video post, with more than 441,000 views, by Drew Barrymore (17.3 million
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`followers) with an “@8greens” tag featuring 8GREENS products.
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`18. The 8Greens products have also received national recognition and awards, including
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`making Oprah’s Favorite Things 2022 List and receiving a 2023 New Beauty Award as a Best
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`Superfood Supplement.
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`19. As a result of Tasty Greens substantial sales and promotions of the 8GREENS brand
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`for supplements, the 8GREENS mark has acquired distinctiveness or secondary meaning among
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`U.S. consumers.
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`NATURE OF THE CLAIMS
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`20. Despite the renown of the 8GREENS brand, B-Epic recently launched a nearly
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`identical product, namely, a nutritional and dietary supplement that dissolves in water to create a
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`nutritional beverage, under the nearly identical GR8 GREENS and GR8 GREENS & Circle Design
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`marks.
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`21. Tasty Greens is filing this Complaint to stop the harm to its 8GREENS Brand Marks
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`and prevent consumer confusion between the 8GREENS and GR8 GREENS marks for virtually
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`identical goods.
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`TASTY GREENS TRADEMARK RIGHTS & REGISTRATIONS
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`22.
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` Tasty Greens markets and sells nutritional and dietary supplements under the
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`8GREENS and 8G & Circle Design
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` marks.
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`23. Tasty Greens is the owner of U.S. Registration No. 5,661,353, filed October 18, 2017,
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`and issued January 22, 2019, for the mark 8GREENS for “Dietary supplement in tablet form
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`4891-5245-2810
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`7
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.10 Page 8 of 18
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`
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`containing vitamins and herbs from green leafy vegetables and herbs to make vitamin enhanced
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`beverages” in International Class 5.
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`24. Tasty Greens is the owner of U.S. Registration No. 5,938,596, filed October 18, 2017,
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`and issued December 17, 2019, for the mark 8GREENS for “Nutritional supplements in the form
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`of gummies containing ingredients from green leafy vegetables and herbs; gummy vitamins
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`containing ingredients from green leafy vegetables and herbs” in International Class 5.
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`25. Tasty Greens is the owner of U.S. Registration No. 7,026,291, filed April 17, 2020,
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`and issued April 11, 2023, for the mark 8GREENS for “Nutritional supplements in the form of
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`powders and chewables; Nutritional supplements in the form of powders and chewables
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`containing ingredients from green leafy vegetables and herbs; Powdered nutritional supplement
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`drink mix; Nutritional supplements; Nutritional supplements in the form of tablets and gummies;
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`Nutritional supplements in the form of tablets and gummies containing ingredients from green
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`leafy vegetables and herb” in International Class 5 and “Concentrates and powders containing
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`ingredients from green leafy vegetables and herbs for making beverages in the nature of sports
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`drinks and soft drinks; Effervescent tablets containing ingredients from green leafy vegetables
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`and herbs for making beverages in the nature of sports drinks and soft drinks” in International
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`Class 32.
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`26. Tasty Greens is the owner of U.S. Registration No. 6,904,132, filed May 20, 2021,
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`and issued November 22, 2022, for the mark 8GREENS for “Candy; Lollipops” in International
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`Class 30.
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`27. Tasty Greens is the owner of U.S. Registration No. 4,973,965, filed October 7, 2014,
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`and issued June 7, 2016, for the mark 8G & Circle Design,
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`, for “Dissolving or
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`4891-5245-2810
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`8
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.11 Page 9 of 18
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`
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`effervescent tablets primarily containing vitamins and herbs used to make vitamin enhanced
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`beverages” in International Class 5.
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`28. Tasty Greens is the owner of U.S. Registration No. 5,938,810, filed March 23, 2018,
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`and issued December 17, 2019, for the mark 8G & Circle Design,
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`, for “Gummy
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`vitamins; Nutritional supplements in the form of gummies” in International Class 5.
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`29. Tasty Greens is the owner of U.S. Registration No. 7,026,293, filed April 17, 2020,
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`and issued April 11, 2023, for the mark 8G & Circle Design,
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`, for “Nutritional
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`supplements in the form of powders and chewables; Nutritional supplements in the form of
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`powders and chewables containing ingredients from green leafy vegetables and herbs; Powdered
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`nutritional supplement drink mix; Nutritional supplements; Nutritional supplements in the form
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`of tablets and gummies; Nutritional supplements in the form of tablets and gummies containing
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`ingredients from green leafy vegetables and herbs” in International Class 5 and “Concentrates
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`and powders containing ingredients from green leafy vegetables and herbs for making beverages
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`in the nature of sports drinks and soft drinks; Effervescent tablets containing ingredients from
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`green leafy vegetables and herbs for making beverages in the nature of sports drinks and soft
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`drinks” in International Class 32.
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`30. Tasty Greens is the owner of U.S. Registration No. 7,031,916, filed May 20, 2021,
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`and issued April 18, 2023, for the mark 8G & Circle Design.
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`, for “Candy; Lollipops” in
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`International Class 30.
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`4891-5245-2810
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`9
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.12 Page 10 of 18
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`31.
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`Status documents from the U.S. Patent and Trademark Office (“USPTO”) evidencing
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`the eight registrations identified in Paragraphs 23 through 30 are attached as Exhibit A. Such
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`federal registrations are collectively referred to in this Complaint as the “Tasty Greens Federal
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`Registrations.”
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`32. The Tasty Greens Federal Registrations are in full force and effect on the USPTO’s
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`Principal Register.
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`33. U.S. Reg. No. 4,973,965 has become incontestable and constitutes conclusive
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`evidence of the validity of the mark, Tasty Greens’ ownership thereof, and of Tasty Greens’
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`exclusive right to use the registered mark in connection with the goods identified in the
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`registration (15 U.S.C. § 1115(b)).
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`34. U.S. Reg. Nos. 5,661,353, 5,938,596, 7,026,29, 6,904,132, 5,938,810, 7,026,293, and
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`7,031,916 constitute prima facie evidence of the validity of the marks, Tasty Greens’ ownership
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`thereof, and of Tasty Greens’ exclusive right to use the registered marks in connection with the
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`goods identified in the registrations (15 U.S.C. § 1115(a)).
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`35. Tasty Greens also owns common law rights in 8GREENS mark that extend beyond
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`the scope of the Tasty Greens Federal Registrations, and such common law rights are evidenced
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`by the printouts from Tasty Greens’ website that provide examples of Tasty Greens’ current uses
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`of the 8GREENS and 8G & Circle Design marks. See Exhibit B. The Tasty Greens Federal
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`Registrations and all common law rights in the 8GREENS and 8G & Circle Design marks are
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`referred to collectively as the “Tasty Greens Marks.”
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`36. Tasty Greens has used the mark 8GREENS in commerce in connection with dietary
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`and nutritional supplements continuously since at least as early as December 31, 2015.
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`4891-5245-2810
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`10
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.13 Page 11 of 18
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`37. Tasty Greens has used the 8G & Circle Design mark in commerce in connection with
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`dietary and nutritional supplements since at least as early as February 15, 2016.
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`38. The dietary and nutrition supplements sold under the Tasty Greens Marks include
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`tablets that dissolve in water as well as powders that are mixed with water to create a nutritional
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`beverage.
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`39. All the dietary and nutritional supplements sold under the Tasty Greens Marks are
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`made from green leafy vegetables and herbs.
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`40. Tasty Greens has expended a great deal of time, effort and money in the promotion
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`and advertisement of its dietary and nutritional supplements offered under the Tasty Greens
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`Marks.
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`41. Tasty Greens dietary and nutritional supplements offered under the Tasty Greens
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`Marks are sold through many channels of distribution, including Tasty Greens’ retail website,
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`many of the nation’s largest brick and mortar retailers, and multiple online retailers, including
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`Amazon.com.
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`42. Tasty Greens dietary and nutritional supplements offered under the Tasty Greens
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`Marks have received unsolicited media attention over the years as well as attention and
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`endorsements from celebrities and from social media influencers.
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`43. As a result of Tasty Greens’ substantial and extensive promotion of its dietary and
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`nutritional supplements, Tasty Greens has acquired valuable goodwill in the Tasty Greens Marks
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`and the Tasty Greens Marks indicate that Tasty Greens is the source of goods bearing the Tasty
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`Greens Marks.
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`4891-5245-2810
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`11
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.14 Page 12 of 18
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`B-EPIC’S TRADEMARK INFRINGEMENT
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`44. Notwithstanding Tasty Greens’ prior, continuous, and extensive use of the Tasty
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`Greens Marks, B-Epic recently began selling dietary and nutritional supplements in the form of a
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`drink mix added to water under the GR8 GREENS mark and under a GR8 GREENS & Circle
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`Design mark,
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` , as shown below and in the printouts from B-Epic’s
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`website and from Amazon.com in Exhibit C. The GR8 GREENS and GR8GREENS & Circle
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`Design marks are collectively referred to as the “B-Epic Marks.”
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`45. B-Epic and/or its licensees sells its GR8 GREENS powdered dietary supplement in 15
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`single serving packets for $35.00, or $2.33 per day.
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`46.
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`It is inconceivable that B-Epic was unaware of Tasty Greens and its well-known
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`8GREENS Brand Marks when B-Epic began selling GR8 GREENS supplements. Both Google
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`and Amazon searches for “GR8 Greens” reveal multiple references to Tasty Greens’ 8GREENS
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`4891-5245-2810
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`12
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.15 Page 13 of 18
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`product alongside B-Epic’s GR8 GREENS products, as shown in the printouts of searches in
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`Exhibit D.
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`47. Upon information and belief, B-Epic was aware of Tasty Greens’ 8GREENS mark
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`before it used or filed an application to register the GR8 GREENS mark.
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`48. B-Epic also owns U.S. Application Serial No. 97/750,399 for the mark GR8
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`GREENS & Circle Design
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`, which B-Epic filed on January 11, 2023,
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`and which alleges first use in U.S. commerce on August 1, 2022, for “Dietary and Nutritional
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`supplement made from organic greens in the form a drink mix that is added to water to help with
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`weight management and to detox the body” in International Class 5.
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`49. The goods for which B-Epic is using its B-Epic Marks are the same as or closely
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`related to Tasty Greens goods sold under the Tasty Greens Marks in that both parties’ goods are
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`mixed with water to create a nutritional beverage made from plant-based ingredients.
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`50. Tasty Greens and B-Epic both sell nutritional and dietary supplements on
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`Amazon.com.
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`51. The terms “8” and “GREENS” in B-Epic Marks are identical to the terms “8” and
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`“GREENS” used in the Tasty Greens Marks.
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`52. The B-Epic Marks incorporate Tasty Greens’ 8GREENS mark in its entirety.
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`53. The Circle Design incorporated into B-Epic’s mark GR8 GREENS & Circle Design
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`is highly similar to the Circle Design incorporated into Tasty Greens’ 8G & Circle Design mark,
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`as shown in the following comparison of the parties’ marks in use:
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`4891-5245-2810
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`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.16 Page 14 of 18
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`54.
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`In both Tasty Greens’ 8G & Circle Design mark and B-Epic’s GR8 GREENS &
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`Circle Design mark, the letter “G” and the numeral “8” appear inside the Circle Design portion
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`of the marks.
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`55. B-Epic’s actions described above have caused irreparable damage and injury to Tasty
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`Greens and, if permitted to continue, will further damage and injure Tasty Greens, and its Tasty
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`Greens Marks.
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`COUNT I
`FEDERAL TRADEMARK INFRINGEMENT
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`56. Tasty Greens incorporates the allegations of the foregoing paragraphs 1-55 of this
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`Complaint as if fully set forth herein.
`
`57. B-Epic’s use of the B-Epic Marks is likely to cause confusion, mistake, or deception
`
`as to the source, origin, affiliation, connection, or association of B-Epic’s goods with Tasty
`
`Greens, or as to the approval of B-Epic’s goods by Tasty Greens, and thus constitutes
`
`infringement of the Tasty Greens Federal Registrations in violation of Section 32 of the Lanham
`
`Act, 15 U.S.C. § 1114.
`
`58. B-Epic’s infringement of the Tasty Greens Federal Registrations has taken place with
`
`full knowledge of the Tasty Greens Federal Registrations, and therefore, has been intentional,
`
`deliberate, and willful.
`
`59. As a direct and proximate result of the actions of B-Epic alleged above, Tasty Greens
`
`has been damaged and will continue to be damaged.
`
`4891-5245-2810
`
`14
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`

`

`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.17 Page 15 of 18
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`
`
`COUNT II
`FEDERAL TRADEMARK INFRINGEMENT, FALSE DESIGNATION & UNFAIR
`COMPETITION
`
`60. Tasty Greens incorporates the allegations of the foregoing paragraphs 1-59 of this
`
`Complaint as if fully set forth herein.
`
`61. B-Epic’s use of the B-Epic Marks is likely to cause confusion, mistake, or deception
`
`as to the source, origin, affiliation, connection, or association of B-Epic’s goods with Tasty Greens,
`
`or as to the approval of B-Epic’s goods by Tasty Greens, and thus constitutes trademark
`
`infringement, false designation of origin, and unfair competition with respect to Tasty Greens
`
`Marks in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).
`
`62. B-Epic’s infringement of the Tasty Greens Marks has taken place with full
`
`knowledge of the Tasty Greens Marks, and therefore, has been intentional, deliberate, and
`
`willful.
`
`63. As a direct and proximate result of the actions of B-Epic alleged above, Tasty Greens
`
`has been damaged and will continue to be damaged.
`
`COUNT III
`COMMON LAW TRADEMARK INFRINGEMENT & UNFAIR COMPETITION
`
`64. Tasty Greens incorporates the allegations of Paragraph 1-63 of this Complaint as if set
`
`
`
`forth fully herein.
`
`65. The acts of B-Epic complained of herein constitute common law trademark
`
`infringement and unfair competition under the laws of the State of Utah.
`
`66. B-Epic’s actions have taken place with full knowledge of the Tasty Greens Marks and,
`
`therefore, have been intentional, deliberate, and willful.
`
`67. As a direct and proximate result of the actions of B-Epic alleged above, Tasty Greens
`
`has been damaged and will continue to be damaged.
`
`4891-5245-2810
`
`15
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`

`

`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.18 Page 16 of 18
`
`
`
`
`
`JURY DEMAND
`
`Plaintiff, Tasty Greens, demands a trial by jury on all matters and issues triable by jury.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff, Tasty Greens, demands judgment in its favor on each and every
`
`claim for relief set forth above and an award for relief including, but not limited to, the following:
`
`1.
`
`An injunction permanently enjoining Defendant and its employees, agents,
`
`partners, officers, directors, owners, shareholders, principals, subsidiaries, related
`
`companies, affiliates, joint ventures, distributors, dealers, and all persons in active
`
`concert or participation with any of them:
`
`From using the B-Epic Marks, any other mark combining “8” and
`“GREENS”, the Tasty Greens Federal Registrations, the Tasty Greens
`Marks or any other trademark owned by Plaintiff, including any variation
`or any other colorable imitation thereof, that is likely to cause confusion
`with the Tasty Greens Marks or any other trademark owned by Plaintiff;
`
`From distributing, promoting, and selling any goods or services under the
`B-Epic Marks, any other mark combining “8” and “GREENS”, the Tasty
`Greens Federal Registrations, the Tasty Greens Marks or any other
`trademark owned by Plaintiff, including any variation or any other colorable
`imitation thereof, that is likely to cause confusion with the Tasty Greens
`Marks or any other trademark owned by Plaintiff;
`
`From representing by any means whatsoever, directly or indirectly, that
`Defendant, any goods or services offered by Defendant, or any activities
`undertaken by Defendant, are sponsored or licensed by Plaintiff or
`otherwise associated or connected in any way with Plaintiff; and
`
`a.
`
`
`b.
`
`
`c.
`
`d.
`
`From passing off any of Defendant’s goods or services as originating with,
`associated with or sponsored by Plaintiff.
`
`
`An Order requiring Defendant to deliver up to Plaintiff for destruction all goods,
`
`
`
`2.
`
`advertisements, literature and other written or printed material which bear the B-
`
`Epic Marks, any other mark combining “8” and “GREENS”, the Tasty Greens
`
`4891-5245-2810
`
`16
`
`

`

`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.19 Page 17 of 18
`
`
`
`Federal Registrations, the Tasty Greens Marks or any other trademark owned by
`
`Plaintiff.
`
`3.
`
`An Order requiring Defendant to cease use of any online marketing and advertising,
`
`incorporating the B-Epic Marks, any other mark combining “8” and “GREENS”,
`
`the Tasty Greens Federal Registrations, the Tasty Greens Marks or any other
`
`trademark owned by Plaintiff.
`
`4.
`
`An Order directing Defendant to file with this Court and serve on Plaintiff’s
`
`attorneys, thirty (30) days after the date of entry of any injunction, a report in
`
`writing and under oath setting forth in detail the manner and form in which it has
`
`complied with the injunction.
`
`5.
`
`An Order requiring Defendant to account for and pay to Plaintiff any and all profits
`
`arising from the foregoing acts of infringement, false designation of origin, and
`
`unfair competition, and trebling such profits in accordance with 15 U.S.C. § 1117
`
`and other applicable statutes and laws.
`
`6.
`
`An Order requiring Defendant to pay to Plaintiff compensatory damages in an
`
`amount as yet undetermined caused by the foregoing acts of infringement, false
`
`designation of origin, and unfair competition, and trebling such compensatory
`
`damages in accordance with 15 U.S.C. § 1117 and other applicable statutes and
`
`laws.
`
`7.
`
`An Order requiring Defendant to pay to Plaintiff punitive damages in an amount as
`
`yet undetermined caused by the foregoing acts of Defendant.
`
`8.
`
`An Order requiring Defendant to abandon U.S. Application Serial No. 97/750,399
`
`with prejudice.
`
`4891-5245-2810
`
`17
`
`

`

`Case 1:24-cv-00108-JCB Document 2 Filed 06/21/24 PageID.20 Page 18 of 18
`
`9.
`
`An Order requiring Defendant to pay Plaintiff’s costs and attorney fees in this
`
`action pursuant to 15 U.S.C. § 1117 and other applicable statutes and laws.
`
`10.
`
`Other relief as this Court deems just and equitable.
`
`DATED this 21st day of June 2024.
`
`PARSONS BEHLE & LATIMER
`
`
`/s/ Jonathan H. Love
`Jonathan H. Love
`Attorneys for Plaintiff Tasty Greens LLC
`
`
`
`
`
`
`
`4891-5245-2810
`
`18
`
`

`

`Case 1:24-cv-00108-JCB Document 2-1 Filed 06/21/24 PageID.21 Page 1 of 2
`CIVIL COVER SHEET
`JS 44 (Rev. 10/20)
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`I. (a) PLAINTIFFS
`DEFENDANTS
`TASTY GREENS LLC
`B-EPIC WORLDWIDE LLC
`(b) County of Residence of First Listed Plaintiff
`New York County, NY
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`NOTE:
`
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`Attorneys (If Known)
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Jonathan H. Love, Parsons Behle & Latimer, 201 S. Main
`St. Ste 1800, Salt Lake City, UT 84111, 801-532-1234
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`and One Box for Defendant)
`(For Diversity Cases Only)
`1 U.S. Government
`3 Federal Question
`PTF
`DEF
`PTF
`DEF
`(U.S. Government Not a Party)
`Plaintiff
`1
`1
`4
`
`Citizen of This State
`
`Incorporated or Principal Place
`of Business In This State
`
`4
`
`2 U.S. Government
`Defendant
`
`4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`Citizen or Subject of a
`Foreign Country
`
`FORFEITURE/PENALTY
`625 Drug Related Seizure
`of Property 21 USC 881
`690 Other
`
`LABOR
`710 Fair Labor Standards
`Act
`720 Labor/Management
`Relations
`740 Railway Labor Act
`751 Family and Medical
`Leave Act
`790 Other Labor Litigation
`791 Employee Retirement
`Income Security Act
`
`IMMIGRATION
`462 Naturalization Application
`465 Other Immigration
`Actions
`
`2
`
`3
`
`2
`
`3
`
`Incorporated and Principal Place
`of Business In Another State
`
`Foreign Nation
`
`5
`
`6
`
`5
`
`6
`
`Click here for: Nature of Suit Code Descriptions.
`BANKRUPTCY
`OTHER STATUTES
`422 Appeal 28 USC 158
`375 False Claims Act
`423 Withdrawal
`376 Qui Tam (31 USC
`28 USC 157
`3729(a))
`400 State Reapportionment
`410 Antitrust
`430 Banks and Banking
`450 Commerce
`460 Deportation
`470 Racketeer Influenced and
`Corrupt Organizations
`480 Consumer Credit
`(15 USC 1681 or 1692)
`485 Telephone Consumer
`Protection Act
`490 Cable/Sat TV
`850 Securities/Commodities/
`Exchange
`890 Other Statutory Actions
`891 Agricultural Acts
`893 Environmental Matters
`895 Freedom of Information
`Act
`896 Arbitration
`899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`950 Constitutionality of
`State Statutes
`
`PROPERTY RIGHTS
`820 Copyrights
`830 Patent
`835 Patent - Abbreviated
`New Drug Application
`840 Trademark
`880 Defend Trade Secrets
`Act of 2016
`
`SOCIAL SECURITY
`861 HIA (1395ff)
`862 Black Lung (923)
`863 DIWC/DIWW (405(g))
`864 SSID Title XVI
`865 RSI (405(g))
`
`FEDERAL TAX SUITS
`870 Taxes (U.S. Plaintiff
`or Defendant)
`871 IRS—Third Party
`26 USC 7609
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
`110 Insurance
`PERSONAL INJURY
`PERSONAL INJURY
`120 Marine
`310 Airplane
`365 Personal Injury -
`130 Miller Act
`315 Airplane Product
`Product Liability
`140 Negotiable Instrument
`Liability
`367 Health Care/
`150 Re