Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA118729
`ESTTA Tracking number:
`01/09/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92046666
`Defendant
`FIORDIFRUTTA LLC
`FIORDIFRUTTA LLC
`353 CHRISTIAN STREET
`OXFORD, CT 06478
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`FIORDIFRUTTA LLC
`353 CHRISTIAN STREET
`OXFORD, CT 06478
`UNITED STATES
`Motion to Suspend for Civil Action
`Paul N. Tauger
`ptauger@schnader.com,sspitzer@schnader.com,tclancy@schnader.com
`/Paul N. Tauger/
`01/09/2007
`Motion to Suspend Cancellation Proceeding.pdf ( 28 pages )(1032605 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Before the Trademark Trial and Appeal Board
`
`In the Matter of Registration No. 2,730,330
`Issued June 24, 2003
`
`No. 92046666
`
`) )
`
`)
`
`) )
`
`) )
`
`) )
`
`RIGONI DI ASIAGO, SPA,
`
`Petitioner,
`
`V.
`
`FIORDIFRUTTA LLC,
`
`Registrant.
`
`MOTION TO SUSPEND CANCELLATION PROCEEDING
`
`Respondents Fiordifrutta LLC and Rigoni USA, Inc. (collectively “Respondent”) hereby
`
`move the Trademark Trial and Appeal Board (hereinafter “TTAB” or “Board”) for an order,
`
`pursuant to 37 C.F.R. § 2.1 l7(a), suspending the instant cancellation proceeding against
`
`Respondent. In supportof its motion, Respondent states as follows:
`
`SUMMARY OF FACTS
`
`On January 9, 2007, Respondent filed a civil action against Petitioner in the United States
`
`District Court for the Southern District of Florida. Also named in that action is Rigoni di Asiago
`
`USA, LLC and Andrea Rigoni. Said civil action is comprised of, amongst others, federal claims
`
`of trademark infringement, trademark counterfeiting and unfair competition relating to the
`
`NYDATA 282507__l
`
`

`
`Fiordifrutta trademark, U.S. Trademark Reg. No. 2,730,330. A true and correct copy of said
`
`filed District Court Complaint captioned Rigoni USA, Inc. and Fiordzfrutta LLC v. Rigoni dz’
`
`Asiago USA, LLC, Rz'g0m' dz‘ Asiago, SPA and Andrea Rigoni, C.A. No. 07-20070 is attached
`
`hereto as Exhibit A. A review of the complaint therein reveals that the civil action filed by
`
`Respondent involves issues that are directly in common with those issues in the instant
`
`cancellation action, mainly, who is the rightful owner of the right to use the mark Fiordifrutta,
`
`Registration No. 2,730,330.
`
`ARGUMENT
`
`Because a decision of the federal district court would be binding upon the TTAB and a
`
`decision by the Board would not be binding or res judicata as to the issues before the court (E
`
`The Toro Company V. Hardigg Indus., Inc., 187 USPQ 689 (TTAB 1975); TBMP §510.02(a)),
`
`whenever it comes to the attention of the Board that parties to a pending case are involved in a
`
`civil action which may be dispositive of the TTAB case, the Board may, either by motion or on
`
`its own accord, suspend its case until there is a final determination of the civil action. fig
`
`Careerxchange Inc. v. Corpnet Infohub Ltd., 80 USPQ2d 1046 (TTAB 2005); General Motors
`
`Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933 (TTAB 1992) (Board suspended
`
`proceedings following review of complaint in civil action which indicated that a decision by the
`
`district court would be dispositive of the issues in proceeding before the Board); 37 C.F.R. §
`
`2.1 l7(a); TBMP §5l0.02(a). Thus, inasmuch as the Federal District Court civil action involves
`
`issues common with the instant cancellation proceeding before the TTAB (i.e. rightful ownership
`
`of Fiordifrutta mark), Respondent believes that the District Court action is dispositive of issues
`
`2
`
`NYDATA 282507_1
`
`

`
`currently pending in the instant cancellation proceeding. S_ee_ The Other Telephone Company V.
`
`Connecticut National Telephone Company, Inc., 181 USPQ 125 (TTAB 1974) (civil court action
`
`seeking court determination of respective rights of the parties to use in commerce a certain
`
`trademark found by TTAB to be dispositive of issues pending in proceeding before Board).
`
`Therefore, in an effort to avoid duplicative proceedings and potentially conflicting outcomes,
`
`suspension of the cancellation proceeding herein would be appropriate.1
`
`WHEREFORE, Respondent respectfully requests that the Trademark Trial and Appeal
`
`Board order a suspension of the instant cancellation proceeding.
`
`Dated: January 9, 2007
`
`SCHNADER ARRISON SEGAL & LEWIS LLP
`
`
`
`Address:
`
`One Montgomery Street, Suite 2200
`San Francisco, CA 94104-5501
`(415) 364-6700
`Phone:
`(415) 364-6785
`Fax:
`ptauger@schnader.com (e-mail authorized)
`
`ATTORNEYS FOR RESPONDENT
`
`1 Because Respondent has not been served with a potentially dispositive motion, there can be no claim by
`Petitioner citing 37 C.F.R. § 2.1 17(b) that, by filing the within motion, Respondent is merely seeking to
`escape that motion by filing a civil action and then moving to suspend before the Board has decided the
`potentially dispositive motion. E 37 C.F.R. § 2.117(b).
`
`3
`
`NYDATA 232507_1
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing MOTION TO SUSPEND
`
`CANCELLATION PROCEEDING of Respondent Rigoni USA, Inc. and Fiordifrutta LLC was
`
`served Via United States Mail this 9th day of January, 2007 upon:
`
`Eric T. Fingerhut, Esq.
`Howrey LLP
`1299 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`
`
`
`4
`
`NYDATA 282507_1
`
`

`
`EXHIBIT A
`
`

`
`Case 1:07-cv-20070-AJ
`
`Document 1
`we
`
`Entered On FLSD Docket 01/09/2007
`Hi
`
`Page 1 of 23
`
`MARLENE K. SILVERMAN
`
`GREENBERG TRAURIG, LLP
`1221 Brickell Avenue
`
`Miami, FL 33131
`Telephone: (305) 579-0500
`Facsimile: (305)579-0717
`
`PAUL N. TAUGER (Pro Hac Vice Admission Pending)
`SCHNADER HARRISON SEGAL & LEWIS LLP
`
`One Montgomery Street, Suite 2200
`San Francisco, CA 94104-5501
`Telephone: (415) 364-6700
`Facsimile: (415)364-6785
`
`SETH E. SPITZER (Pro Hac Vice Admission Pending)
`SCHNADER HARRISON SEGAL & LEWIS LLP
`
`/.
`
`140 Broadway, Suite 3100
`New York, NY 10005-1101
`Telephone: (212) 973-8000
`Facsimile: (212) 972-8798
`
`Counsel for Plaintiffs
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`Own Acnon
`FILE NO.
`
`COMPLAINT FOR:
`
`RIGONI USA, INC., 21
`Connecticut corporation, and
`FIORDIFRUTTA LLC. a
`Connecticut corporation,
`
`Plaintiffs,
`
`vs.
`RIGONI D1 ASIAGO USA, LLC:
`a Florida corporation, RIGONI DI
`ASIAGO» SPA» an Italian
`°°’P‘:I_a‘?g“: [ANDREA RIGONI’
`3“ 1“ “'1 "3 ’
`
`)
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`99
`D K
`Q D
`1. FEDERAL TRADEMARK INFRINGEMENT ‘(is
`U.S.C. § 1114);
`2. TRADEMARK COUNTERFEITING (15 U.S.C. §§
`1116, 1117);
`3. FEDERAL UNFAIR COMPETITION 15 U.S.C.
`1125(3)).
`(
`§
`4. TORTIOUS INTERFERENCE WITH BUSINESS
`RELATIONSHIP (Florida common law);
`5. TORTIOUS INTERFERENCE WITH
`CONTRACT (Florida common law);
`6. UNFAIR COMPETITION (Fla. Stat. § 501.204);
`Z:§823%%1$§éVE
`
`GreenbergTraurig, P.A.
`
`I Attorneys at Law I
`
`‘1221 Brickell Avenue I Miami. FL 33131 I Tel 305.579.0500 I Fax 305.579.0711?‘
`
`DATA 282471 1
`www.gtlaw.cor‘r1
`
`

`
`Case 1:07-cv—20070-AJ Document 1
`v
`
`Entered on FLSD Docket 01/09/2007
`\/
`
`Page 2 of 23
`
`INTRODUCTION
`
`1.
`
`This action arises under the Lanham Act, Section 32 (15 U.S.C. § 1114), for
`
`infringement of a registered trademark, Sections 34 and 35 (15 U.S.C. §§ 1116 and 1117), for
`
`trademark counterfeiting, Section 43(a) (15 U.S.C. § ll25(a)) for federal unfair competition
`
`(common law trademark infringement), Tortious Interference with Business Relationship and
`
`Tortious Interference with Contract, pursuant to Florida State law, and Florida Unfair
`
`Competition pursuant to Fla. Stat. § 501.204.
`
`PARTIES
`
`2.
`
`Co-Plaintiff RIGONI USA, INC. (“Rigoni USA”) is a corporation organized and
`
`operating under the laws of the State of Connecticut with its principal place of business at 353
`
`Christian Street, Oxford, CT 06478.
`
`3.
`
`Co-Plaintiff FIORDIFRUTTA LLC (“Fiordifrutta LLC”) is a limited liability
`
`corporation organized and operating under the laws of the State of Connecticut with its principal
`
`place of business at 353 Christian Street, Oxford, CT 06478. (The plaintiffs are collectively
`
`referred to herein as “Rigoni” or “Plaintiffs”).
`
`4.
`
`Defendant RIGONI DI ASIAGO USA, LLC (“Rigoni di Asiago USA”) is, on
`
`information andubelief, a limited liability corporation organized and operating under the laws of
`
`the State of Florida, with its principal place of business at 52 NW 47”‘ Street, Miami, Florida
`
`33127.
`
`5.
`
`Defendant RIGONI DI ASIAGO, SPA (“Rigoni di Asiago SPA”) is, on
`
`information and belief, an Italian corporation with its principal place of business at Via Oberdan,
`
`8 Asiago (V1) 36012, Italy.
`
`6.
`
`Defendant ANDREA RIGONI is, on information and belief, a resident of Italy
`
`who conducts business in the United States of America, generally, and the Southern Judicial
`
`District of the State of Florida, specifically.
`
`Greenberg Traurig, PA.
`
`I Attorneys at Law I 1221 Bricl:ellAvenue I Marni, FL 33131 I Tel 305.579.0500 I Fax 305.579.071yI,1?/s’/\‘\v1\l@gt§\;v‘.1c7olrr1]
`
`

`
`.Case 1:07—cv—20070—AJ Document 1
`
`Entered on FLSD Docket 01/09/2007
`5-1
`
`Page 3 of 23
`
`JURISDICTION AND VENUE
`
`7.
`
`This Court has jurisdiction over the subject matter of this action pursuant to 28
`
`U.S.C. §§ 2201-2202 and 28 U.S.C. §§ 1331,1332 and 1367.
`
`8.
`
`Venue of this action lies in this Judicial District pursuant to 28 U.S.C. § 1391.
`
`FACTS COMMON TO ALL COUNTS
`
`9.
`
`This is a dispute about jam. Defendant Andrea Rigoni is, on information and
`
`belief, the owner of Rigoni di Asiago SPA, an Italian company that manufactures a variety of
`
`fruit jams that it distributes in Italy under the name, “Fiordifrutta.” “Fiordifrutta” is Italian for
`
`“flower of fruit.”
`
`10.
`
`In or about 1997, Mr. Rigoni, wishing to expand the market for his jam products,
`
`together with Claudio Mucci, formed a Connecticut corporation called Apicultura Rigoni USA,
`
`Inc. (“Apicultura”) that would distribute Fiordifrutta products in the United States.
`
`11.
`
`Apicultura was the exclusive distributor of Fiordifrutta products in the United
`
`States until it went dormant in approximately 2000. At that time, Mr. Rigoni and Mr. Mucci
`
`formed Rigoni USA, Inc. (“Rigoni USA”) for the purpose of being the exclusive U.S. distributor
`
`of Fiordifrutta.
`
`12.
`
`As a result of the marketing efforts of Apicultura and Rigoni USA, the
`
`Fiordifrutta brand acquired a small but not-insignificant following in the United States, and the
`
`specialty jam market came to recognize Rigoni USA as the source of Fiordifrutta products in the
`
`United States. To protect its brand, Rigoni USA registered the FIORDIFRUTTA trademark with
`
`the United States Patent and Trademark Office, obtaining U.S. Trademark Reg. No. 2,730,330,
`
`which issued on June 24, 2003, and having a priority date of October 25, 2001. A true and
`
`correct copy of U.S. Trademark Reg. No. 2, 730,330 is attached hereto as Exhibit A.
`
`13.
`
`Subsequently, Rigoni USA learned that Mr. Rigoni and Rigoni di Asiago SPA
`
`were, without the knowledge, consent or authorization of Rigoni USA, importing into the U.S.
`
`jam products identified with the FIORDIFRUTTA trademark and selling them to U.S.
`
`Greenberg Traurig, P.A.
`
`I Attorneys at Law I
`
`‘I221 BrickellAvenue I Migmi, FL 33131 I Tel 305.579.0500 I Fax 305.579.0719lI13\/'/\Iv-Ix/‘vl.‘gf’I§v2\/fl)nl’rTl
`
`€
`

`
`.Case 1:07—cv-20070-AJ Document 1
`-..v
`
`Entered on FLSD Docket 01/09/2007
`\—J
`
`Page 4 of 23
`
`customers, including the United States military. This unauthoriaed importation was done solely
`
`for the benefit of Mr. Rigoni and Rigoni di Asiago SPA.
`
`14.
`
`Upon learning of the duplicity of Mr. Rigoni and Rigoni di Asiago SPA, Rigoni
`
`USA immediately transferred by assignment the FIORDIFRUTTA trademark to Fiordifrutta
`
`LLC.
`
`15.
`
`On information and belief, Mr. Rigoni and Rigoni di Asiago SPA formed a
`
`Florida limited liability corporation which they called Rigoni di Asiago USA, LLC. Mr. Rigoni
`
`and Rigoni di Asiago SPA then sent letters to customers of Rigoni USA, claiming that they were
`
`the source of FIORDIFRUTTA products, that Claudio Mucci was no longer authorized to
`
`represent FIORDIFRUTTA products, and that customers would be contacted by representatives
`
`of Rigoni di Asiago USA. A true and correct copy of Mr. Rigoni’s letter is attached hereto as
`
`Exhibit B.
`
`16.
`
`On December 18, 2006, Rigoni USA sent a letter to Mr. Rigoni and Rigoni di
`
`Asiago USA demanding, inter alia, that Defendants cease-and-desist from using the
`
`FIORDIFRUTTA trademark and from making any representation that Defendants were
`
`authorized to distribute products in the United States that were identified by the
`
`FIORDIFRUTTA trademark. A true and correct copy of the letter sent on December 18, 2006, is
`
`attached hereto as Exhibit C. On information and belief, Defendants, and each of them, have
`
`ignored the cease-and-desist letter and continue in the conduct complained of herein.
`
`COUNT I
`
`Trademark Infringement, 15 U.S.C. § 1114 et seq.
`
`17.
`
`Plaintiffs incorporate and reallege the allegations of Paragraphs 1 through 16
`
`inclusive, as if fully set forth herein.
`
`18.
`
`Defendants’ activities, as described herein, constitute infringement of Plaintiffs’
`
`federally registered trademark, U.S. Trademark Reg. No. 2, 730,330, in violation of the Lanham
`
`Act, including, but not limited to, 15 U.S.C. § 1114.
`
`GreenbergTraurig, P.A.
`
`| Attorneys at Law] 1221 Brickell Avenue | Miéni. FL 33131 | Tel 3055790500 | Fax 305.579.0719‘ 1v)vG‘/3-v72:
`
`

`
`.Case 1:07-c:v—20070—AJ Document 1
`Vu/
`
`Entered on FLSD Docket 01/09/2007
`VI
`
`Page 5 of 23
`
`19.
`
`Defendants’ use of Plaintiffs’ federally-registered trademark is likely to result in
`
`consumer confiision as to source, sponsorship, ownership or affiliation of the goods identified by
`
`the FIORDIFRUTTA mark.
`
`20.
`
`Defendants’ use of Plaintiffs’ federally-registered trademark, as described herein,
`
`was willful and deliberate, and intended to trade upon the goodwill and reputation appurtenant to
`
`Plaintiffs’ mark.
`
`21.
`
`As a result of Defendants’ wrongful conduct, Plaintiffs have suffered substantial
`
`losses, including, but not limited to, damage to its business reputation and goodwill. Plaintiffs
`
`are entitled to recover damages, which include their losses and all profits Defendants have made
`
`as a result of their wrongful conduct, pursuant to 15 U.S.C. § 11l7(a).
`
`22.
`
`In addition, because Defendants’ infringement of Plaintiffs’ trademark was
`
`willful, within the meaning of the Lanham Act, the award of damages and profits should be
`
`trebled pursuant to 15 U.S.C. § ll17(b). Alternatively, the award of statutory damages should be
`
`enhanced pursuant to 15 U.S.C. § l117(c).
`
`23.
`
`The illegal conduct by Defendants complained of herein is on-going and unlikely
`
`to cease unless enjoined. Plaintiffs are also entitled to injunctive relief pursuant to 15 U.S.C. §
`
`1l16(a) and to an order compelling the impounding of all products identified by Defendants with
`
`infringing marks. Plaintiffs have no adequate remedy at law for Defendants’ wrongfiil conduct
`
`because, inter alia, (a) Plaintiffs’ trademark is a unique and valuable property which has no
`
`readily determinable market value, (b) Defendants’ infringement constitutes harm to Plaintiffs’
`
`business reputation and goodwill such that Plaintiffs could not be made whole by any monetary
`
`award, (c) if Defendants’ wrongful conduct is allowed to continue, the public and relevant
`
`market is likely to become further confused, mistaken, or deceived as to the source, origin or
`
`authenticity of the products identified by the infringing marks, and (d) Defendants’ wrongful
`
`conduct, and the resulting damages to Plaintiffs, is, on information and belief, continuing.
`
`24.
`
`Plaintiffs are also entitled to recover their attomey’s fees and costs of suit
`
`pursuant to 15 U.S.C. § 1117.
`
`Greenberg Traurig, P.A.
`
`I Attorneys at Law I 1221 Brickell Avenue I Mi§ni, FL 33131 I Tel 305.579.0500 I Fax 305579.071?! wl/,‘v'v]vf€g‘tfa8\/%o7rlrrl
`
`

`
`Case 1 :07-cv-20070-AJ Document 1
`V
`
`Entered on FLSD Docket 01/09/2007
`V
`
`Page 6 of 23
`
`COUNT II
`
`Counterfeit Trademark, 15 U.S.C. §§ 11l6(d)
`and 1117(c) (Lanham Act, Sections 34(d) and 35(c))
`
`25.
`
`Plaintiffs incorporate and reallege the allegations of Paragraphs 1 through 16, and
`
`18 through 24, inclusive, as if fiilly set forth herein.
`
`26.
`
`Defendants have applied to their products a spurious designation that is identical
`
`with, or substantially indistinguishable from, Plaintiffs’ federally—registered FIORDIFRUTTA
`
`trademark, U.S. Trademark Reg. No. 2,730,330. Said spurious designation is counterfeit as a
`
`matter of law, pursuant to 15 U.S.C. § ll16(d)(l)(B)(ii).
`
`27.
`
`Defendants have sold, offered for sale and/or distributed goods identified by said
`
`counterfeit mark.
`
`28.
`
`29.
`
`Defendants’ conduct, as described herein, was willful and intentional.
`
`Defendants’ conduct, as described herein, renders them liable to Plaintiffs in an
`
`amount up to $1,000,000.00 per counterfeit mark per type of goods sold, pursuant to 15 U.S.C. §
`
`1l17(c).
`
`COUNT III
`
`Federal Unfair Competition, False
`Designation of Origin, 15 U.S.C. § 1125(a) et seq.
`
`30.
`
`Plaintiffs incorporate and reallege the allegations of Paragraphs 1 through 16, 18
`
`through 24, and 26 through 29, inclusive, as if fully set forth herein.
`
`31.
`
`Plaintiffs have used the name “Rigoni USA” extensively in commerce throughout
`
`the United States since, at least, 2000, in connection with their marketing, distribution,
`
`advertising and sales of, inter alia, jam products.
`
`32.
`
`Plaintiffs’ extensive use of the “Rigoni USA” mark has resulted in its acquiring a
`
`reputation throughout the United States in the minds of the relevant market of customers for
`
`Rigoni USA products, and said customers look to Rigoni USA as the sole source in the United
`
`States for those products.
`
`Greenberg Traurig, P.A.
`
`I Attorneys at Law I 1221 Brickell Avenue I Mifini, FL 33131 I Tel 305.579.0500 I Fax 30S.579.O71i\lIYi/)v®xi‘EtFa§&iidriFl
`
`

`
`-Case 1:07-cv—20070—AJ Document 1
`\/
`
`Entered on FLSD Docket 01/09/2007
`\/
`
`Page 7 of 23
`
`33.
`
`As a result, Plaintiffs have acquired preemptive rights in the common law
`
`trademark “Rigoni USA” as applied, at least, to jams and related products.
`
`34.
`
`On information and belief, Defendants have held themselves out, and used in
`
`commerce, the name, “Rigoni di Asiago USA,” in the course of attempting to market, distribute,
`
`advertise and sell substantially identical product through substantially identical channels of trade
`
`to substantially identical customers.
`
`35.
`
`In so doing, Defendants have traded on the goodwill appurtenant to the trademark
`
`“Rigoni USA,” and/or have attempted to pass themselves off as Rigoni USA.
`
`36.
`The conduct complained of herein constitutes federal unfair competition, the false
`designation of origin and common law trademark infringement pursuant to 15 U.S.C. § 1l25(a).
`
`37.
`
`As a result of the illegal conduct of Defendants described herein, Plaintiffs have
`
`been damaged in an amount to be determined.
`
`38.
`
`The illegal conduct by Defendants complained of herein is on—going and unlikely
`
`to cease unless enjoined. Plaintiffs are also entitled to injunctive relief pursuant to 15 U.S.C. §
`
`lll6(a) and to an order compelling the impounding of all products identified by Defendants with
`
`infringing marks. Plaintiffs have no adequate remedy at law for Defendants’ wrongfill conduct
`
`because, inter alia, (a) Plaintiffs’ trademark is a unique and valuable property which has no
`
`readily determinable market value, (b) Defendants’ infringement constitutes harm to Plaintiffs’
`
`business reputation and goodwill such that Plaintiffs could not be made whole by any monetary
`
`award, (c) if Defendants’ wrongful conduct is allowed to continue, the public and relevant
`
`market is likely to become further confused, mistaken, or deceived as to the source, origin or
`
`authenticity of the products identified by the infringing marks, and (d) Defendants’ wrongfiil
`
`conduct, and the resulting damages to Plaintiffs, is, on information and belief, continuing.
`
`Greenberg Traurig, P.A.
`
`| Attorneys at Law I 1221 Brickell Avenue | Migni, FL 33131 [ Tel 305.579.0500 I Fax 305,579,071 a§/vzlcltzrirl
`
`

`
`.Case 1:07-cv-20070-AJ Document 1
`w
`
`Entered on FLSD Docket 01/09/2007
`\J
`
`Page 8 of 23
`
`COUNT IV
`
`Tortious Interference with Business Relationship (Florida common law)
`
`39.
`
`Plaintiffs incorporate and reallege the allegations of Paragraphs 1 through 16, 18
`
`through 24, 26 through 29, and 31 through 38, inclusive, as if fully set forth herein.
`
`40.
`
`Plaintiffs maintain a variety of business relationships with customers who obtain
`
`FIORDIFRUTTA products from Plaintiffs.
`
`41.
`
`The existence of these business relationships was, at all times relevant to the
`
`conduct complained of herein, known to Defendants, and each of them.
`
`42.
`
`Defendants, intentionally and without justification, interfered with Plaintiffs’
`
`business relationships with their customers by, inter alia, sending unsolicited communications to
`
`said customers advising that Defendants and not Plaintiffs were the source of Plaintiffs’
`
`products, that Claudio Mucci was not authorized to represent Plaintiffs’ products, and that
`
`Defendants would contact Plaintiffs’ customers in the future.
`
`43.
`
`On information and belief, Defendants’ conduct as described herein, has resulted
`
`in the breach of business relationships between Plaintiffs and certain of its customers.
`
`44.
`
`As a result of Defendants’ conduct as described herein, Plaintiffs have been
`
`damaged in an amount to be determined.
`
`Tortious Interference with Contract (Florida common law)
`
`COUNT V
`
`45.
`
`Plaintiffs incorporate and reallege the allegations of Paragraphs 1 through 16, 18
`
`through 24, 26 through 29, 31 through 38, and 40 through 44, inclusive, as if fully set forth
`
`herein.
`
`46.
`
`Plaintiffs enjoy contracts with its customers who obtain FIORDIFRUTTA
`
`products from Plaintiffs.
`
`47.
`
`The existence of these contracts was, at all times relevant to the conduct
`
`complained of herein, known to Defendants, and each of them.
`
`Greenberg Traurig, P.A.
`
`| Attorneys at Law | 1221 BrickellAvenue | Migni, FL 33131 I Tel 305.579.0500 I Fax 3O5.579.O71}‘II‘{v1?rIJ\i/‘vFI\i.1§‘tfia§/v;‘c1<)7rlrrl
`
`

`
`‘Case 1:07-cv-20070-AJ Document 1
`V
`
`Entered on FLSD Docket 01/09/2007
`V
`
`Page 9 of 23
`
`48.
`
`Defendants, intentionally and without justification, interfered with Plaintiffs’
`
`contracts with their customers by, inter alia, sending unsolicited communications to said
`
`customers advising that Defendants, and not Plaintiffs, were the source of Plaintiffs’ products,
`
`that Claudio Mucci was not authorized to represent Plaintiffs’ products, and that Defendants
`
`would contact Plaintiffs’ customers in the future.
`
`49.
`
`On information and belief, Defendants’ conduct as described herein, has resulted
`
`in the breach of contracts between Plaintiffs and certain of its customers.
`
`50.
`
`As a result of Defendants’ conduct as described herein, Plaintiffs have been
`
`damaged in an amount to be determined.
`
`COUNT VI
`
`Unfair Competition (Fla. Stat. § 501.204)
`
`51.
`
`Plaintiffs incorporate and reallege the allegations of Paragraphs 1 through 16, 18
`
`through 24, 26 through 29, 31 through 38, 40 through 44, and 46 through 50, inclusive, as if fully
`
`set forth herein.
`
`52.
`
`The conduct of Defendants as described herein constitutes unfair competition
`
`within the meaning of Fla. Stat. § 501.204.
`53.
`As a result of Defendants’ conduct, Plaintiffs have been damaged in an amount to
`
`be determined.
`
`COUNT VII
`
`Constructive Trust upon Illegal Profits
`
`S4.
`
`Plaintiffs incorporate and reallege the allegations of Paragraphs 1 through 16, 18
`
`through 24, 26 through 29, 31 through 38, 40 through 44, 4 through 50, and 52 through 53,
`
`inclusive, as if fully set forth herein.
`
`55.
`
`Defendants’ conduct constitutes deceptive, fraudulent, and wrongful conduct in
`
`the nature of passing off products identified with infringing trademarks as approved or
`
`authorized by Plaintiffs.
`
`GreenbergTraurig, P.A.
`
`] Attorneys at Law | 1221 Brickell Avenue I Migni, FL 33131 I Tel 305.579.0500 I Fax 3O5.579.O71’l‘iIY]\/Dvovxlgt ai/v2.Lc1<-J/rirl
`
`

`
`Case 1:07-cv-20070-AJ
`
`Document 1
`"MI
`
`Entered on FLSD Docket 01/09/2007
`\_I
`
`Page 10 of 23
`
`56.
`
`By virtue of Defendants’ wrongful conduct, Defendants have illegally received
`
`money and profits that rightfully belong to Plaintiffs.
`
`57.
`
`Plaintiffs are also entitled, pursuant to 15 U.S.C. § lll7(a) to recover any and all
`
`profits of Defendants that are attributable to their acts of infringement or other violations thereof.
`
`58.
`
`Upon information and belief, Defendants hold the illegally received money and
`
`profits in the form of bank accounts, real property, and personal property that can be located and
`
`traced.
`
`59.
`
`Defendants hold the money and profits that they have illegally received as
`
`constructive trustees for the benefit of Plaintiffs.
`
`COUNT VIII
`
`Accounting
`
`60.
`
`Plaintiffs incorporate and reallege the allegations of Paragraphs 1 through 16, 18
`
`through 24, 26 through 29, 31 through 38, 40 through 44, 46 through 50, 52 through 53, and 55
`
`through 59, inclusive, as if fully set forth herein.
`
`6].
`
`Plaintiffs are entitled, pursuant tol 5 U.S.C. § 1117, to recover any and all profits
`
`of Defendants that are attributable to their acts of infringement or other violations thereof.
`
`62.
`
`The amount of money due from Defendants to Plaintiffs is unknown to Plaintiffs
`
`and cannot be ascertained without a detailed accounting by Defendants of the precise number of
`
`units of infringing products offered for distribution and/or distributed by Defendants.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiffs prays for a judgment and order:
`
`A.
`
`Defendants, and each of them, their officers, directors, agents, servants,
`
`employees and all persons in active concert and participation with them, shall be enjoined by
`
`preliminary and permanent injunction and restrained from, in any manner, directly or indirectly,
`
`Greenberg Traurig, P.A.
`
`| Attorneys at Law [ 1221 Brickell Avenue I MLQH, FL 3313‘! I Tel 305.579.0500 I Fax 30S.579.07l§qI\’v?Iév\'l-vgitfai/vzicloirifl
`
`

`
`Case 1:07—cv—20070-AJ Document 1
`\n/
`
`Entered on FLSD Docket 01/09/2007
`V-5’
`
`Page 11 of 23
`
`using, promoting, advertising, displaying, offering to sell, selling, or otherwise marketing in the
`
`United States jam orjam—related products identified as FIORDIFRUTTA;
`
`B.
`
`Defendants, and each of them, their officers, directors, agents, servants,
`
`employees and all persons in active concert and participation with them, shall be enjoined by
`
`preliminary and permanent injunction and restrained from, in any manner, directly or indirectly,
`
`using, promoting, advertising, displaying, offering to sell, selling, or otherwise marketing in the
`
`United States jam orjam-related products under the name Rigoni USA, or anything confusingly
`
`similar, including but not limited to Rigoni di Asiago USA;
`
`C.
`
`Defendants, and each of them, shall be jointly and severally liable to Plaintiffs for
`
`all profits Defendants, and each of them, have derived from marketing jam and jam-related
`
`products in the United States in connection with the name FIORDIFRUTTA;
`
`D.
`
`Defendants, and each of them, shall be jointly and severally liable to Plaintiffs for
`
`all profits Defendants, and each of them, have derived from marketing jam and jam-related
`
`products in the United States in connection with the name Rigoni USA, or any confusingly
`
`similar name, including, but not limited to, Rigoni di Asiago USA;
`
`E.
`
`This case shall be deemed an exceptional case and all damages awarded
`
`hereunder shall be trebled in accordance with the provisions of 15 U.S.C. § 1117.
`
`F.
`
`All infringing products within Defendants possession, custody or control
`
`identified as FIORDIFRUTTA or Rigoni USA, or any confusingly similar name, including, but
`
`not limited to, Rigoni di Asiago USA, and any and all advertising and/or marketing materials for
`
`same shall be delivered up for impoundment and destruction as the Court directs, pursuant to 15
`
`U.S.C. § 1116.
`
`G.
`
`Defendants, and each of them, shall file a report with the Court under oath in
`
`accordance with 15 U.S.C. § 1116 setting forth the manner and form of their compliance with
`
`this Court’s injunction.
`
`H.
`
`Defendants to pay the costs of this action;
`
`GreenbergTraurig, P.A.
`
`I Attorneys at Law I 1221 BrickellAvenue I Minrlti, FL 33131 I Tel 305.579.0500 I Fax 305579.071
`
`ali/aiclciirirrl
`
`

`
`Case 1:O7—cv—20070-AJ Document 1
`Va“
`
`Entered on FLSD Docket 01/09/2007
`\.I
`
`Page 12 of 23
`
`I.
`
`Defendants to pay Plaintiffs’ reasonable attomeys’- fees, pursuant to 15 U.S.C. §
`
`1 117(a); and
`
`J.
`
`Granting to Plaintiffs such other and further relief as available by law and as the
`
`Court shall deem just, fair and proper.
`
`Dated: January _4,?2007
`
`Respectfully submitted:
`
`MARLENE K. SILVERMAN
`GREENBERG TRAURIG, LLP
`1221 Brickell
`venue
`
` M
`NE K.
`E
`counsét for P1 'ntiffs
`
`RIGONI USA, INC., and
`FIORIDIFRUTTA LLC.
`
`OF COUNSEL:
`PAUL N. TAUGER
`
`SCHNADER HARRISON SEGAL & LEWIS LLP
`One Montgomery Street, Suite 2200
`San Francisco, CA 94104-5501
`
`SETH E. SPITZER
`
`SCHNADER HARRISON SEGAL & LEWIS LLP
`
`140 Broadway, Suite 3100
`New York, NY 10005-1101
`
`324 1
`YD
`.
`_
`.
`GreenbergTraung,P.A.| Attorneys at Law| 1221 BrickellAvenue| MLzI, FL 33131 | Tel 3os.s79.o5oo| Fax 3os.579.o71l‘l| m’«‘/VT‘/g‘taw.cclnr
`
`1
`
`

`
`Case 1:07—cv-20070—AJ Document 1
`\r’
`
`Entered on FLSD Docket 01/09/2007
`~../
`
`Page 13 of 23
`
`EXHIBIT A
`
`

`
`Case 1:O7—cv—20070—AJ Document 1
`
`Entered on FLSD Docket 01/09/2007
`
`Page 14 of 23
`
`1561395
`
`
`
`EQ)éW£lE®W1lQ!IJ EBEQELNES5 3
`
`UNITED STATES DEPARTMENT OF COMJVIERCE
`
`United States Patent and Trademark Office
`
`January 04, 2007
`
`
`
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 2,730,330 IS
`CERTIFIED TO BE A TRUE COPY OF THE REGISTRATION ISSUED BY
`
`
`
`
`
`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE WHICH
`
`REGISTRATION IS IN FULL FORCE AND EFFECT.
`
`REGISTERED FOR A TERM OF 10 YEARS FROM June 24, 2003
`
`SAID RECORDS SHOW TITLE TO BE IN: FIORDIFRUTTA LLC
`
`A LIMITED LIABILITY COMPANY OF CONNECTICUT
`
`By Authority of the
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`LANAI JA SON
`
`Certifying Officer
`
`

`
`Case 1:07—cv—20070—AJ
`
`Document 1
`V
`
`Entered on FLSD Docket 01/09/2007
`\/
`
`Page 15 of 23
`
`Int. Cl.: 29
`
`Prior U.S. CL: 46
`
`United States Patent and Trademark Office
`
`Reg. No. 2,730,330
`Registered June24,zoo3
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`RIGONI USA, INC. (CONNECTICUT CORPORA-
`TION)
`353 CHRISTIAN STREET
`OXFORD, CI‘ 06478
`
`FOR: JAMS. JELLIES, PRESERVES, MARMA-
`LADE, FRUIT-BASED SPREADS, IN CLASS '29 (U.S.
`CL. 46).
`
`THE ENGLISH TRANSLATION OF "FIORDI-
`FRU'I'I‘A" Is "FRUIT FROM THE FLOWER".
`
`SN 76-329,604, FILED 10-25-2001.
`
`FIRST USE 9-0-2002; IN COMMERCE 9-0-2002.
`
`TANYA AMOS, EXAMINING ATTORNEY
`
`
`
`.sxrz-.3-Ht-.+.“1:='u_imi:&
`
`

`
`-Case 1 :O7—cv-20070—AJ Document 1
`v
`
`Entered on FLSD Docket 01/09/2007
`\./
`
`Page 16 of 23
`
`EXHIBIT B
`
`

`
`Case 1:07—cv—20070—AJ Document 1
`
`Entered on FLSD Docket 01/09/2007
`
`Page 17 of 23
`
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`
`-Case 1:07—cv—20070-AJ
`
`Document 1
`
`Entered on FLSD Docket O1/09/2007
`
`Page 18 of 23
`
`\.r’
`
`\.4
`
`EXHIBIT C
`
`

`
`.Case 1:07-cv—20070-AJ Document 1
`
`Entered on FLSD Docket 01/09/2007
`
`P
`
`age
`
`19 f23
`0
`
`'
`
`I
`
`sun-r: 2200
`on: MONTGOMIHLY srnzer
`um runcuco. ca 94104-5501
`415.364.6700
`F.\x415.364.6785
`schnadencom
`
`December 18, 2006
`
`\
`S C h n a d e r
`“TT°"“E” ‘T ""“’
`
`Paul N. Tauger
`Direct Dial 415-364-6736
`Email: ptaugcr@schnudcr.com
`
`Via Federal Express Delivery
`
`Andrea Rigoni
`Rigoni di Asiago USA LLC
`52 NW 47th Street
`Miami, Florida 33127
`
`Re:
`
`United States Trademark Registration No. 2,730,330 for FIORDIFRUTTA
`
`Dear Mr. Rigoni:
`
`This office represents Rigoni USA, Inc. and Fiordifnitta LLC (collectively, “Rigoni")
`with respect to protection of their intellectual property. Rigoni is the owner of United States
`Trademark Registration No. 2,730,330 for the trademark FIORDIFRUTTA, affording Rigoni
`preemptive rights to the mark in International Class 29 as