ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1370525
`07/11/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91292170
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`New Skinny Mixes, LLC
`
`P. STEPHEN FARDY
`SWANSON, MARTIN & BELL, LLP
`330 N. WABASH AVE., SUITE 3300
`CHICAGO, IL 60611
`UNITED STATES
`Primary email: sfardy@smbtrials.com
`Secondary email(s): jreilly@smbtrials.com, mreiss@smbtrials.com
`312-321-9100
`
`Motion to Suspend for Civil Action
`
`P. Stephen Fardy
`
`sfardy@smbtrials.com, jreilly@smbtrials.com, mreiss@smbtrials.com
`
`/P. Stephen Fardy/
`
`07/11/2024
`
`Motion for Suspension or Extension of Time - FINAL.pdf(62701 bytes )
`Annex 1.pdf(1041672 bytes )
`Annex 2 pt. I.pdf(3002838 bytes )
`Annex 2 pt. II.pdf(4861903 bytes )
`Annex 3.pdf(5157626 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`In re Application of:
`
`
`New Skinny Mixes, LLC
`
`
`
`Application Serial No. 98121561
`
`
`Application Filing Date: August 8, 2023
`
`
`
`
`Mark: MERMAID
`
`
`
`
`Pending Motion: There are no motions currently
`pending and no other motion is being filed
`
`concurrent with this combined motion
`
`
`
`Proceeding No.
`91292170
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`DEFENDANT’S COMBINED MOTION FOR SUSPENSION OF PROCEEDINGS
`AND MOTION TO EXTEND TIME TO ANSWER OPPOSITION
`
`
`
`This Combined Motion for Suspension of Proceedings and Motion to Extend to
`
`Answer Opposition (“Combined Motion”) is submitted relating to Capital Nutrition
`
`(“Capital Nutrition”) Statement of Opposition entered on New Skinny Mixes, LLC’s
`
`(“Skinny Mixes”) trademark application Serial No. 98121561 (the “Application”) for
`
`the standard character mark “MERMAID” (“Defendant’s Mark”) in International
`
`Class 030 for “Syrup for flavoring food or beverages.” Capital Nutrition filed its
`
`Statement of Opposition against Defendant’s Mark on June 19, 2024. In support its
`
`Combined Motion, Skinny Mixes respectfully submits the following:
`
`I.
`
`
`
`MOTION FOR SUSPENSION OF PROCEEDINGS
`
`Pursuant to Trademark Rule 2.117(c), New Skinny Mixes, LLC (“Skinny
`
`Mixes”) wishes to notify the Board of pending actions between the parties in this
`
`matter and respectfully requests the Board suspend these proceedings pending
`
`
`
`

`

`
`
`disposition of the ongoing civil actions. The parties are presently actively engaged in
`
`civil litigation in two separate jurisdictions regarding matters directly related to this
`
`Opposition; both actions predate the filing of this Opposition. Capital Nutrition Inc.’s
`
`(“Capital Nutrition”) Statement of Opposition—attached hereto as Annex 3—
`
`references one of the cases being litigated in Canada. Plaintiff’s Annex 3 states that
`
`Skinny Mixes terminated an agreement between their two companies and that
`
`Capital Nutrition subsequently began development of its own line of syrups. The
`
`Plaintiff’s Statement of Opposition also states that it has subsequently developed its
`
`own “Mermaid” syrup and provides pictures of a bottle containing a bright blue liquid
`
`similar to Skinny Mixes’s own MERMAID syrup. The Parties’ civil action in
`
`Canada—the Initial Complaint is provided hereto as Annex 1—centers around breach
`
`of contract and trade dress infringement claims brought by Skinny Mixes against
`
`Capital Nutrition.
`
`
`
`Additionally, suit was brought by Skinny Mixes against Capital Nutrition in
`
`the Northern District of Illinois, Eastern Division, on June 17, 2024, two (2) days
`
`prior to Capital Nutrition’s present Opposition. Skinny Mixes’s claims—the Initial
`
`Complaint is provided hereto as Annex 2—include trade dress infringement,
`
`cybersquatting, false designation of origin, breach of a license agreement contract,
`
`deceptive trade practices, and unfair competition. The pending litigation between the
`
`parties directly implicates Skinny Mixes’s rights over its trade dress and Capital
`
`Nutrition’s deceptive and unfair business practices, which impliedly extend to the
`
`applied-for MERMAID mark.
`
`2
`
`

`

`
`
`
`
`Pursuant to TBMP § 510.02(a), “[w]henever it comes to the attention of the
`
`Board that a party or parties to a case pending before it are involved in a civil action
`
`that may have a bearing on the Board case, proceedings before the Board may be
`
`suspended until final determination of the civil action.” (citing 37 C.F.R. § 2.117(a);
`
`then citing General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933,
`
`1936-37 (TTAB 1992)). Section 510.02(a) goes on to state that “[a] civil action may
`
`involve other matters outside Board jurisdiction and may consider broader issues
`
`beyond right to registration and, therefore, judicial economy is usually served by
`
`suspension.” (citing Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6
`
`USPQ2d 1950, 1954 (2d Cir. 1988) (doctrine of primary jurisdiction might be
`
`applicable if a district court action involved only the issue of registrability, but would
`
`not be applicable where court action concerns infringement where the interest in
`
`prompt adjudication far outweighs the value of having the views of the USPTO)).
`
`Here, Capital Nutrition cites its own market use of a MERMAID mark as one
`
`example of Skinny Mixes’s lack of right to register its mark, however, this cited use
`
`is part of a larger pattern of wrongful conduct alleged by Skinny Mixes against
`
`Capital Nutrition and it touches upon the applied-for MERMAID mark. Pursuant to
`
`TBMP § 510, it is appropriate for the Board to suspend these Opposition proceedings
`
`during the pendency of the ongoing litigation.
`
`Skinny Mixes has not secured Capital Nutrition’s consent to the suspension of
`
`proceedings requested herein.
`
`
`
`3
`
`

`

`
`
`II. MOTION TO EXTEND TIME TO ANSWER OPPOSITION
`
`The Time to Answer is currently set to close on 07/30/2024. Should the Board
`
`
`
`determine that suspension is not presently appropriate, discussion supra, Skinny
`
`Mixes respectfully requests that such date be extended for sixty (60) days, or until
`
`09/29/2024, and that all subsequent dates be reset accordingly.
`
`
`
`
`
`Time to Answer
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff’s Pretrial Disclosures Due
`Plaintiff’s 30-day Trial Period Ends
`Defendant’s Pretrial Disclosures Due
`Defendant’s 30-day Trial Period Ends
`Plaintiff’s Rebuttal Disclosures Due
`Plaintiff’s 15-day Rebuttal Period Ends
`Plaintiff’s Opening Brief Due
`Defendant’s Brief Due
`Plaintiff’s Reply Brief Due
`Request for Oral Hearing (optional) Due
`
`09/29/2024
`10/28/2024
`10/28/2024
`11/28/2024
`03/25/2025
`04/27/2025
`06/11/2025
`07/25/2025
`08/10/2025
`09/24/2025
`10/08/2025
`11/08/2025
`01/07/2026
`02/06/2026
`02/21/2026
`03/02/2026
`
`The grounds for this request are that Parties are presently engaged in
`
`litigation against each other in both the Northern District of Illinois and in Canada,
`
`and Skinny Mixes’s counsel requires additional time to conduct its investigation and
`
`evaluate the present factual record, including collaborating with its counterparts in
`
`Canada, in preparation for its Answer.
`
`Skinny Mixes has not secured Capital Nutrition’s consent to the extension and
`
`resetting of dates requested herein.
`
`
`
`4
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and complete copy of the foregoing
`Motion to Extend has been served upon Capital Nutrition Inc., by forwarding said
`copy on July 11, 2024, via email to:
`
`Moishe Hartstein
`President
`Capital Nutrition Inc.
`5100 15th Avenue, Apt. 1O
`Brooklyn, NY 11219
`United States
`Primary email: mhart@capitalnutrition.ca
`
`
`Dated: July 11, 2024
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/s/ Jonna McGinley Reilly
`Attorney for Defendant,
`New Skinny Mixes, LLC
`P. Stephen Fardy
`Jonna McGinley Reilly
`Swanson, Martin & Bell, LLP
`330 N. Wabash, Suite 3300
`Chicago, IL 60611
`(312) 321-9100 (telephone)
`(312) 321-0990 (facsimile)
`sfardy@smbtrials.com
`jreilly@smbtrials.com
`
`5
`
`

`

`ANNEX 1
`ANNEX 1
`
`

`

`C A N A D A
`
`PROVINCE OF QUEBEC
`DISTRICT OF MONTRÉAL
`LOCALITY OF MONTRÉAL
`
`
`No: ________________________
`
`
`
`
`
`SUPERIOR COURT
`
`
`
`
`NEW SKINNY MIXES, LLC
`d/b/a JORDAN’S SKINNY MIXES,
`a legal person having a place of business at
`2849 Executive Drive, Suite 210, Clearwater,
`Florida, 33762, United States
`
`Plaintiff
`
`v.
`
`9335-5147 QUÉBEC INC.
`d/b/a CAPITAL NUTRITION
`and d/b/a HEALTH FOOD INC.,
`a legal person having a place of business at
`1-763 Querbes Avenue, Montréal, Québec,
`H2V3W8, Canada
`
`and
`
`CAPITAL NUTRITION INC.,
`a legal person having a place of business at
`1-763 Querbes Avenue, Montréal, Québec,
`H2V3W8, Canada
`
`Defendants
`
`and
`
`MOISHE HARTSTEIN (“MORRIS HART”),
`an individual residing and domiciled at 1-763
`Querbes Avenue, Montréal, Québec,
`H2V3W8, Canada
`
`Impleaded Party
`
`ORIGINATING APPLICATION FOR THE ISSUANCE OF A PROVISIONAL,
`INTERLOCUTORY AND PERMANENT INJUNCTION AND IN DAMAGES
`
`
`
`
`

`

`- 2 –
`
`IN SUPPORT OF ITS ACTION, THE PLAINTIFF RESPECTFULLY SUBMITS THE
`FOLLOWING:
`
`INTRODUCTION
`
`By its present Originating application for the issuance of a provisional, interlocutory
`and permanent injunction and in damages, Plaintiff requests the issuance by this
`Court of injunctive orders enjoining the Defendants to cease their illegal and
`unauthorized use of Plaintiff’s intellectual property – trademark rights and copyright
`– as well as the unfair competition and parasitic acts that flow from same.
`
`In effect and as more fully detailed below, Plaintiff recently learned that the
`Defendants publicly purport to pass off their own line of infringing products for
`those of the Plaintiff. Defendants sell these identical, infringing products in an
`almost identical product packaging, even going so far as copying at least two
`“fanciful” flavors invented by Plaintiff, as more fully detailed at paragraph 61 below:
`
`Plaintiff’s Skinny
`Syrups
`
`Defendants’ Slim
`Syrups
`
`
`
`Plaintiff’s
`Skinny Syrups
`
`Defendants’
`Slim Syrups
`
`
`
`
`
`
`
`
`
`
`
`To make matters worse, one of the Defendants was a licensed distributor of
`Plaintiff’s products in Canada, and Defendants have unlawfully abused that
`relationship by using their intimate knowledge of, and access to Plaintiff’s
`intellectual property, marketing materials, and products to unfairly compete with
`Plaintiff here.
`
`Plaintiff thus seeks the assistance of this Court to put an end to the irreparable
`harm it is suffering as a result of the illegal and unfair actions of the Defendants.
`
`I.
`
`1.
`
`2.
`
`3.
`
`4.
`
`
`
`

`

`II.
`
`A.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`- 3 –
`
`PARTIES
`
`Plaintiff
`
`Plaintiff New Skinny Mixes, LLC, also operating under the name Jordan’s Skinny
`Mixes, is a Florida limited liability company having a place of business located at
`2849 Executive Drive, Suite 210, Clearwater, Florida (“Skinny Mixes” or
`“Plaintiff”).
`
`Formed in 2009, Skinny Mixes is the leading manufacturer of sugar free coffee
`syrups, low-calorie cocktail mixes, and other related specialty beverages (“Skinny
`Syrups”).
`
`Skinny Syrups are sold globally, including in Canada and the United States, mainly
`through distributors operating in Skinny Mixes’ targeted markets.
`
`Skinny Syrups are Plaintiff’s core business. As an indication, Skinny Mixes
`estimates that Skinny Syrups correspond to 80% of its worldwide sales. A
`considerable portion of these sales are generated in Canada.
`
`As more fully explained below, Skinny Mixes has developed and been using a
`number of trademarks, trade dress and product designs since its formation more
`than a decade ago. Skinny Mixes invested, and continues to invest significantly in
`these valuable assets. They are at the core of its business, as the main
`differentiator of its high standards and reputation for quality.
`
`10. As a result of these investments and of its quality standards and reputation, Skinny
`Mixes has developed significant goodwill and clientele in Canada in connection
`with the sale of its specialty syrups and beverages.
`
`B.
`
`Defendants
`
`11. Defendant 9335-5147 Québec Inc., operating under the name “Capital Nutrition”
`(and also under “Health Food Inc.” or “Health Foods” as discussed further below),
`is a Quebec corporation having a place of business located at 1-763 Avenue
`Querbes, in Montreal, as appears from a copy of its Corporate Profile filed as
`Exhibit P-1 (“Québec Inc.”).
`
`12. Defendant Capital Nutrition Inc. is a Quebec corporation having the same place of
`business, at 1-763 Avenue Querbes in Montreal, as appears from a copy of its
`Corporate Profile filed as Exhibit P-2 (“Capital Nutrition Inc.”).
`
`13. As appears from their respective corporate profiles, Defendants Québec Inc. and
`Capital Nutrition Inc. are both controlled by the same sole shareholder and director,
`the Impleaded Party Moishe Hartstein, also known as “Morris Hart” (“Hart”;
`Defendants Québec Inc. and Capital Nutrition Inc. together “Hart’s Companies”).
`
`14. Hart’s Companies specialize in food distribution and wholesale trade of food
`products.
`
`
`
`

`

`- 4 –
`
`15. As more fully explained below, Québec Inc. was a distributor of Skinny Syrups in
`Canada.
`
`16. Skinny Mixes terminated Québec Inc.’s distribution mandate on or about
`August 30, 2022. Skinny Mixes then engaged in good-faith discussions with
`Québec Inc. to resolve outstanding payment issues and wind down the parties’
`business relationship.
`
`17. On or about April 25, 2023, Skinny Mixes learned that while it was engaging in
`such good-faith discussions, one of Hart’s Companies and/or Hart (this information
`only known to them) launched its own line of low-calorie, sugar free syrups (the
`“Slim Syrups”), originally through Skinny Mixes’ own website and then through a
`website found at www.slimsyrups.ca, as appears from excerpts of this website filed
`as Exhibit P-5.
`
`18.
`
`The Defendants’ intent with this new website and product line is clearly to mimic
`and profit off of Skinny Syrups’ goodwill and reputation. It is a blatant infringement
`of Skinny Mixes’ intellectual property rights, and a damaging attempt to pass off
`their products for those of Skinny Mixes. It constitutes unfair competition and
`parasitic acts aimed at diverting Skinny Mixes clients, which will lead to irreparable
`loss of clientele and goodwill unless restrained by an order of this Court.
`
`III.
`
`SKINNY MIXES’ INTELLECTUAL PROPERTY RIGHTS
`
`19. As alluded to above, Skinny Mixes has developed and been using a number of
`trademarks, trade dress and product designs since its formation in 2009.
`
`20.
`
`21.
`
`For over a decade, Skinny Mixes has used its SKINNY SYRUPS marks in
`connection with low-calorie, sugar free specialty syrups and mixes, in Canada and
`abroad.
`
`In addition to its strong common-law rights, Skinny Mixes is the owner of Canadian
`trademark application no 1958107 for the trademark JORDAN’S SKINNY SYRUPS
`in association with “Syrup for flavoring food or beverages” and of Canadian
`trademark application no 1958108 for the trademark JORDAN’S SKINNY MIXES
`in association with “Non-alcoholic flavored cocktail mixes used to make alcoholic
`beverages”. Copies of each application are filed as Exhibits P-3 and P-4.
`
`22. Skinny Mixes is also the owner of a variety of trademark registrations and
`applications in the United States, the United Kingdom and Australia for the same
`family of trademarks, including JORDAN’S SKINNY SYRUPS and JORDAN’S
`SKINNY MIXES.
`
`23. Also, for more than a decade, Skinny Mixes has used distinctive design marks,
`generally featuring:
`
`a)
`
`A main row of words composed of SKINNY SYRUPS or SKINNY MIXES in
`an elongated font, on a contrasting background;
`
`
`
`

`

`- 5 –
`
`b)
`
`c)
`
`the two words separated by a feminine silhouette with a thin waist and curvy
`hips;
`
`An additional row of words composed of “Jordan’s”, in a smaller, cursive
`font.
`
`24. By way of example:
`
`
`
`
`
`25. Skinny Mixes has spent considerable time and expense on the creation,
`development, and promotion of its SKINNY SYRUPS and SKINNY MIXES marks
`and related design marks (collectively, the “Skinny Syrups Marks”).
`
`26. Skinny Mixes has also developed significant goodwill throughout Canada with
`respect to the overall get-up and trade dress of the Skinny Syrups. Their product
`design is easily recognized by the consuming public.
`
`27.
`
`The trade dress associated with the Skinny Syrups (the “Skinny Syrups Trade
`Dress”) is a valid and enforceable trademark under the Trademarks Act, in that
`the mode of packaging the products as well as their appearance are used to
`distinguish the goods or services manufactured or sold by Skinny Mixes from those
`manufactured or sold by others.
`
`28.
`
`The Skinny Syrups Trade Dress is embodied in various elements of the Skinny
`Syrups and their packaging, in particular and without limitation:
`
`
`
`

`

`- 6 –
`
`a)
`
`b)
`
`The shape of the bottle;
`
`The label, generally constituted of:
`
`i)
`
`ii)
`
`iii)
`
`iv)
`
`v)
`
`vi)
`
`a pale background with dark writings;
`
`a thin accent band at the top;
`
`a wider band at the bottom;
`
`the syrup’s flavor in a prominent, often capitalized font in a color
`contrasting with the background;
`
`the image of a flavoured coffee, juice or other drink in the middle
`portion;
`
`additional information on sugar and calorie content in the middle
`portion.
`
`as appears from excepts of the Skinny Mixes websites (Canadian and American)
`filed as Exhibits P-6 and P-7 and, by way of example:
`
`
`
`
`
`

`

`- 7 –
`
`29.
`
`30.
`
`The Skinny Syrups Trade Dress in each of its variations are also works protected
`under the Copyright Act. They were the fruit of skill and judgement and are original
`works not copied from any prior works.
`
`Through Skinny Mixes’ years of widespread promotion and use, the Skinny Syrups
`Marks and Skinny Syrups Trade Dress have become strong, distinctive, and well-
`known for low-calorie, sugar free specialty syrups and mixes in Canada and
`abroad.
`
`31. Under s. 7(b) of the Trademarks Act and s. 1457 of the Civil Code of Québec,
`Skinny Mixes has the right to prevent any person from passing off its goods for
`those of Skinny Mixes.
`
`32. Also under s. 1457 of the Civil Code of Québec, Skinny Mixes has a right to prevent
`others from engaging in parasitic behaviour by mimicking its products in order to
`misappropriate the considerable efforts and investments it has made in Canada
`and abroad.
`
`33.
`
`Finally, under s. 3 the Copyright Act, Skinny Mixes has the exclusive right to
`produce, reproduce, distribute, and communicate to the public all or a substantial
`part of the works that constitute the Skinny Mixes Trade Dress.
`
`IV.
`
`PARTIES’ BUSINESS RELATIONSHIP
`
`34.
`
`In or about November 2018, Skinny Mixes entered into discussions with its efforts
`to expand its sales of Skinny Syrups in Canada.
`
`35. At all times relevant, Hart held himself out to Skinny Mixes as being an employee
`acting on behalf of Altra Food Distributors Inc. (“Altra”), a well-known specialty
`food distributor based in Quebec. Hart was notably writing to Skinny Mixes from
`an Altra Foods email address, as appears from the chain of emails filed as Exhibit
`P-8.
`
`36. As is customary in a distributor relationship, Skinny Mixes entered into a
`Trademark License Agreement on or about April 1, 2019 (the “Agreement”), Hart
`signing on behalf of “Health Food Inc.” A copy of the Agreement is filed as Exhibit
`P-9.
`
`37. Hart represented, and Skinny Mixes believed, that Health Food Inc. was an entity
`owned and/or controlled by Altra when Skinny Mixes entered into the Agreement.
`
`38. Skinny Mixes later learned that, upon information and belief, Health Food Inc. was
`not and never was owned, controlled by, or affiliated with Altra. Rather, Health
`Food Inc. is a name used by Quebec Inc., an entity owned and/or controlled by
`Hart.
`
`39.
`
`The Agreement enshrined the specific terms, conditions, and limitations pursuant
`to which Quebec Inc. was authorized to use the Skinny Syrups Marks.
`
`
`
`

`

`- 8 –
`
`40. By mid-2022, a variety of factors led Skinny Mixes to notify Québec Inc. that it was
`terminating the Agreement.
`
`41. Under the Agreement, Exhibit P-9, Quebec Inc. agreed that it “shall cease use of
`the Licensed Marks” after termination.
`
`42. However, Quebec Inc. failed and refused to cease using and displaying the Skinny
`Syrups Marks. Instead, Quebec Inc. continues to use and display the Skinny
`Syrups Marks, as well as the Skinny Syrups Trade Dress, to promote and sell not
`only its remaining Skinny Syrups inventory (V.B. below), but also competing
`products which it markets under the name “Slim Syrups” (V.A. below).
`
`V.
`
`A.
`
`DEFENDANTS’ WRONGFUL ACTIVITIES
`
`Slim Syrups and www.slimsyrups.ca
`
`43. Unbeknownst to Skinny Mixes, while it was engaged in good-faith discussions with
`Quebec Inc. to resolve outstanding payment issues and wind down the parties’
`business relationship after Skinny Mixes provided notice of termination of the
`Agreement, Quebec Inc. was clandestinely working in the background to unfairly
`compete with Skinny Mixes.
`
`44. Within a few months after Skinny Mixes notified Quebec Inc. of its intent to
`terminate the Agreement, Hart and/or Hart’s Companies:
`
`a)
`
`b)
`
`c)
`
`d)
`
`and
`names www.slimsyrups.ca
`domain
`the
`for
`Registered
`www.slimsyrups.com, as appears from the domain search reports filed as
`Exhibits P-10 and P-11.
`
`Created a functional webpage (the “Slim Syrups Website”) and related
`social media accounts for the launch of Slim Syrups, Hart and/or Hart’s
`Companies’ own line of low-calorie, sugar free syrups. Excerpts of the Slim
`Syrup Website are found as Exhibit P-5, and screenshots of Slim Syrups
`social media pages are filed as Exhibits P-12, P-13 and P-14.
`
`Utilized and referenced the coding and other unique elements of Skinny
`Mixes’ Canadian website (the “Skinny Syrups Canada Website”) when
`designing and creating its own competing Slim Syrups Website.
`
`Filed Canadian trademark application no 2224589 for SLIM SYRUPS in
`association with “Coffee syrups” and with “Non-alcoholic cocktail mixes”, as
`appears from a copy of said application filed as Exhibit P-15.
`
`45.
`
`In the process of launching the Slim Syrups Website and product line, Hart and/or
`Hart’s Companies – having actual knowledge about the Skinny Syrups Marks
`and the Skinny Syrups Trade Dress – created, adopted, used, and continue to
`use trademarks that incorporate and feature words and designs that are
`
`
`
`

`

`- 9 –
`
`46.
`
`47.
`
`confusingly similar to, and infringe, the Skinny Syrups Marks and Skinny Syrups
`Trade Dress.
`
`The website design, product packaging, and trademarks created, adopted, and
`used for Slim Syrups were intentionally devised to create confusion as between
`Skinny Syrups and Slim Syrups, and/or suggest that Slim Syrups are affiliated with
`or created by Skinny Mixes, to profit off of its goodwill and reputation.
`
`This is compounded with the fact that representatives of Hart’s Companies
`communicated to customers to whom Skinny Syrups were sold that Skinny Mixes
`was in the process of changing its products’ name from “Skinny Syrups” to
`“Slim Syrups” as more fully explained below.
`
`48. Among other things, the following design mark was adopted for Slim Syrups:
`
`49.
`
`Like the Skinny Syrups design mark (described at paragraph 23 above), the Slim
`Syrups design mark is composed of:
`
`
`
`a)
`
`b)
`
`c)
`
`d)
`
`a main row of words composed of SLIM SYRUPS (instead of SKINNY
`SYRUPS) in an elongated font, on a contrasting background;
`
`the latter word is “syrups” and the former is “slim”, a qualifier that is a
`synonym of “skinny” and also starts with an “s”;
`
`the two words separated by a design evoking a feminine silhouette with a
`thin waist and curvy hips;
`
`An additional row of words composed of “Field” (instead of “Jordan’s”), in a
`smaller, cursive font.
`
`
`
`

`

`50.
`
`The two are highly similar in appearance, sound, and meaning:
`
`- 10 –
`
`51. Hart and/or Hart Companies also intentionally chose an overall get-up and trade
`dress almost identical to the Skinny Syrups Trade Dress, as appears from excerpts
`of the Slim Syrups Website, Exhibit P-5, and by way of example:
`
`
`
`
`
`52.
`
`Like the Skinny Syrups Trade Dress (described at paragraph 28 above), the
`product packaging of the Slim Syrups incorporates the following:
`
`a)
`
`The shape of the Slim Syrups bottle and cap are identical to that of Skinny
`Syrups;
`
`
`
`
`
`

`

`- 11 –
`
`b)
`
`The Slim Syrups label is generally composed of:
`
`i)
`
`ii)
`
`iii)
`
`iv)
`
`v)
`
`vi)
`
`a pale background with dark writings;
`
`a thin accent band at the top;
`
`a wider band at the bottom;
`
`the syrup’s flavor in a prominent, capitalized font in a color
`contrasting with the background;
`
`the image of a flavoured coffee, juice or other drink in the middle
`portion; and/or
`
`additional information on sugar and calorie content in the middle
`portion.
`
`53.
`
`Plaintiff’s
`Skinny Syrups
`
`Defendants’
`Slim Syrups
`
`An unwary consumer purchasing specialty syrups would be confused as between
`Skinny Syrups and Slim Syrups, and/or believe that Slim Syrups are affiliated with
`or created by Skinny Mixes:
`Plaintiff’s
`Defendants’
`
`Skinny Syrups
`Slim Syrups
`
`
`
`Plaintiff’s
`Skinny Syrups
`
`Defendants’
`Slim Syrups
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`as appears from excerpts of the Skinny Syrups websites, Exhibits P-6 and P-7,
`and excerpts of the Slim Syrups Website, Exhibit P-5.
`
`54.
`
`These are not and cannot be inadvertent similarities, especially considering the
`Defendants’ actual knowledge of the Skinny Syrups Marks and Skinny Syrups
`Trade Dress, which knowledge it possessed as Plaintiff’s distributor in Canada for
`years.
`
`55. What is more, we emphasize that in furtherance of its knowingly deceptive
`scheme, representatives of Hart’s Companies communicated to customers to
`
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`

`

`- 12 –
`
`whom Skinny Syrups were sold that Skinny Mixes was in the process of
`changing its products’ name from “Skinny Syrups” to “Slim Syrups.” This
`deliberately false and misleading communication created, and continues to create,
`substantial and irreparable harm to Skinny Mixes’ brand and goodwill.
`
`56. Defendants’ deceptive campaign has created – and will continue to create unless
`enjoined by this Court from refraining to do so – confusion in the trade and among
`consumers about the source and origin of Slim Syrups, and by suggesting an
`affiliation between Slim Syrups and Skinny Mixes where there is none.
`
`57.
`
`58.
`
`59.
`
`The Slim Syrups Website was specifically designed to further this deceptive
`messaging within the trade and to consumers.
`
`The Slim Syrups Website layout, color scheme, and design was created to be
`confusingly similar to that of the Skinny Syrups websites (Canadian and
`American), as appears from excerpts of each website filed respectively as Exhibits
`P-5, P-6 and P-7.
`
`Further, as appears from Exhibit P-5, the Slim Syrups Website includes a
`“Clearance” page that offers Skinny Syrups for sale – supporting the Defendants’
`knowingly false and misleading messaging about a name change from Skinny
`Syrups to Slim Syrups.
`
`60. Even certain items on the Slim Syrups Website directly links to Skinny Syrups
`Website, as appears from a click-through demonstration filed as Exhibit P-16.
`
`61. Adding insult to injury, Slim Syrups Website offers for sale as its own certain syrup
`flavors that were created and developed by Skinny Mixes, including by way of
`example, Skinny Mixes’ proprietary and fanciful “Mermaid” and “Unicorn” flavors:
`
`
`
`

`

`- 13 –
`
`Plaintiff’s
`Skinny Syrups
`
`Defendants’
`Slim Syrups
`
`Plaintiff’s
`Skinny Syrups
`
`Defendants’
`Slim Syrups
`
`
`
`
`
`
`
`
`
`
`
`as appears from excerpts of the Skinny Syrups websites, Exhibits P-6 and P-7,
`and excerpts of the Slim Syrups Website, Exhibit P-5.
`
`These are not main-stream flavors like vanilla or raspberry, they are flavors that
`are proprietary and unique to Skinny Mixes.
`
`The use of Skinny Mixes’ “Mermaid” and “Unicorn” flavor offerings for Slim Syrups
`further falsely corroborates the Defendants’ false and deceptive messaging to the
`trade and to consumers about a name change from Skinny Syrups to Slim Syrups.
`
`As these flavors are proprietary and unique to Skinny Mixes, no third party is
`entitled to use the terms, or know their formulation. Necessarily, in the mind of a
`reasonable consumer, if “Mermaid” and “Unicorn” Slim Syrups are sold on the Slim
`Syrups Website, these products must somewhat be related to Skinny Mixes and
`Skinny Syrups.
`
`Slim Syrups’ use of Skinny Mixes unique and proprietary flavors thus created and
`continues to create confusion and falsely suggests an affiliation between Slim
`Syrups and Skinny Mixes.
`
`As a direct and proximate result of the unlawful conduct and actions of the
`Defendants, individual consumers and businesses that have transacted with
`Québec Inc. or purchased Slim Syrups have been confused and misled. They have
`come to believe – and are illegally encouraged to believe - that they were
`
`62.
`
`63.
`
`64.
`
`65.
`
`66.
`
`
`
`

`

`- 14 –
`
`transacting or buying products originating from Skinny Mixes or believed that
`Skinny Mixes approved, endorsed, or sponsored Slim Syrups.
`
`B.
`
`Skinny Mixes Canada Website www.skinnymixes.ca
`
`67. Back in 2018 and in the context of the distribution of Skinny Syrups in Canada,
`Skinny Mixes authorized Hart to oversee the creation of the Skinny Syrups Canada
`Website, which was created to facilitate the sale and promotion of Skinny Syrups
`in Canada.
`
`68. Skinny Mixes’ website in the United States existed since 2009 and the online
`shopping plateform was live since 2013. It intended the Skinny Syrups Canada
`Website to launch or “go live” at or around the same time as an addition to its online
`ordering portion of its website in the United States found at www.skinnymixes.com
`(the “Skinny Syrups US Website”).
`
`69.
`
`In or around October 2018, Québec Inc. registered for the domain name
`www.skinnymixes.ca.
`
`70. Skinny Mixes worked with Hart to provide information and other webpage content
`(including Skinny Syrups Marks and Skinny Syrups Trade Dress) to be used on
`the Skinny Syrups Canada Website, as appears from chains of emails exchanged
`between November 16, 2018 and January 16, 2019, filed en liasse as Exhibit P-
`17.
`
`71.
`
`72.
`
`73.
`
`The addition to Skinny Syrups US Website launched in early 2019, and Skinny
`Syrups Canada Website – which included much of the same information and
`content – launched shortly thereafter.
`
`In the final preparations for the launch of the Skinny Syrups Canada Website,
`Skinny Mixes provided Hart with information for 1,400 Canada-based contacts.
`
`The Skinny Syrups Canada Website was to be monitored by Québec Inc. so as to
`facilitate the taking and filling of orders of Skinny Syrups in Canada. Accordingly,
`Skinny Mixes permitted Québec Inc. to have control over the Skinny Syrups
`Canada Website consistent with Skinny Mixes’ authorization of Québec Inc. to sell
`and promote Skinny Syrups in Canada.
`
`74. Upon termination of the Agreement, Skinny Mixes requested that Québec Inc. turn
`over control of the Skinny Syrups Canada Website to Skinny Mixes. Indeed,
`Québec Inc. was no longer permitted to use the Skinny Syrups Marks and Skinny
`Syrups Trade Dress.
`
`75. Québec Inc. refused, and continues to refuse, to cede control of the Skinny Syrups
`Canada Website to Skinny Mixes.
`
`
`
`

`

`- 15 –
`
`76.
`
`77.
`
`78.
`
`The Skinny Syrups Canada Website contains and prominently features Skinny
`Syrups Marks and Skinny Mixes Trade Dress, as appears from excerpts of said
`website, Exhibit P-6.
`
`In addition to Québec Inc.’s unauthorized, ongoing use of Skinny Syrups Marks
`and Skinny Syrups Trade Dress on the Skinny Syrups Canada Website, other
`sections of the website contain content developed for the exclusive use of Skinny
`Mixes to promote its products — including, but not limited to, a video segment
`featuring a testimonial by Skinny Mixes’ founder, as appears from Exhibit P-6.
`
`The “Contact Us” page on the Skinny Syrups Canada Website directs consumers
`to contact Skinny Mixes at its corporate address and provides a “Contact Form”,
`as appears from Exhibit P-6. This form however continues to route customer
`inquiries to Québec Inc., not to Skinny Mixes.
`
`79. Most recently, as Skinny Mixes learned on or about May 4, 2023, Québec Inc.
`posted the following announcement on Skinny Syrups Canada Website:
`
`
`
`
`
`

`

`- 16 –
`
`
`
`the
`of
`copy