Baker Hostetler
`
`September 10, 2012
`
`VIA MESSENGER
`
`Trademark Assistance Center
`
`Trademark Trial and Appeal Board
`James Madison Building - East Wing
`Concourse Level, Room C55
`600 Dulany Street
`Alexandria, VA 22314
`
`Subject: Cancellation No. 92055857
`Reg. No. 4043730
`ESTTA 493504 and ESTTA 493513
`Client-Matter No. : 045275. 000201
`
`Dear Sir/Madam:
`
`Bakera Hostetler LLP
`
`Washington Square, Suite 1100
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5304
`T 202.861.1500
`F 202.861.1783
`
`www.bakerlaw.com
`
`Kelu Sullivan
`d"
`td'
`I: 202.861.1532
`k's'§r'iva'r?@bakerraw.com
`
`We enclose exhibits to the above-referenced filings made today on behalf of
`Respondent, Globefill Incorporated. These documents were not able to be uploaded
`electronically.
`
`Should you have any questions, please do not hesitate to contact the undersigned.
`
`Sincerely,
`
`Kelu Sullivan
`
`Enclosures: Exhibits to Motion for Judgment on the Pleadings
`
`H||||||||||||ll|||||l|||||llll||||l||||||l|l|||||l||||ll|||
`09-10-2012
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`0
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`F‘a.lerrt 0 li'lW:«'Tl‘l flail Pitt:
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`["1
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`#7:
`
`Chicago
`Houston
`
`Columbus
`Cleveland
`Cincinnati
`Los Angeles
`New York
`Orlando
`
`Costa Mesa
`Washington, DC
`
`Denver
`
`

`
` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`I I
`
`Cancellation No.:
`Registration No.
`
`92055 857
`4043730
`
`|
`|
`
`| I
`
`| I
`
`Petitioner,
`
`v.
`
`Globefill Incorporated,
`
`|
`Respondent.
` l
`
`RESPONDENT’S MOTION FOR JUDGMENT ON THE PLEADINGS
`
`Pursuant to Rule 12(c) of the Federal Rules of Civil Procedure, Respondent, Globefill
`
`Incorporated (“Globefill”), by and through its undersigned counsel, moves for judgment on the
`
`pleadings to dismiss Cancellation No. 92055857 filed by Petitioner, Elements Spirits, Inc.,
`
`(“Elements”).
`
`Elements’ first count is for fraud on the United States Patent and Trademark Office
`
`(“USPTO”). The count is based on the fact that the District Court for the Central District of
`
`California dismissed a complaint filed by Globefill against Elements for infringement of the
`
`trade dress which is the subject of Registration No. 4043730. The First Amended Complaint was
`
`filed on March 25, 2010, and it was based on Section 43(a) of the Lanham Act and Globefill’s
`
`common law rights in the subject trade dress which is bottle packaging for Globefill’s vodka
`
`product. (Sullivan Dec]. 114, Ex. 1) The First Amended Complaint was first dismissed on June
`
`22, 2010 by the Central District of California on the ground that it “fail[ed] to factually allege the
`
`essential elements of its [Section 43(a)] claim.” (Am. Pet. To Cancel, Ex. A) The Court gave
`
`Globefill leave to amend the complaint, which it did on June 28, 2010. (Sullivan Dec]. 1] 5, Ex.
`
`

`
`2). On December 3, 2010, the Court dismissed Globefill’s amended complaint without leave to
`
`amend, holding that “[Globefill] fails to establish the nonfunctionality of its Skull Bottle design.
`
`(Am. Pet. To Cancel, Ex. B) The elements comprising [Globefill’s] alleged trade dress are
`
`essential to its goal of creating a skull-shaped bottle, and thus, functional.” Id. This is, of
`
`course, not the standard for determining functionality and Globefill immediately appealed the
`
`decision to the Ninth Circuit Court of Appeals on December 6, 2010. (Sullivan Dec]. 11 6, Ex. 3)
`
`On May 23, 2012, the Ninth Circuit reversed the District Court’s dismissal on December 3,
`
`2010, and remanded the case with specific instructions to consider Globefill’s pending motion
`
`for preliminary injunction.1 (Sullivan Dec]. 11 7, Ex. 4)
`
`Upon remand, Elements requested leave to supplement its papers in opposition to
`
`Globefill’s motion for preliminary injunction. (Sullivan Dec]. 1] 8, Ex. 5) On June 26, 2012, the
`
`District Court gave Elements until July 13, 2012 to file its supplementation brief and affidavits.
`
`(Sullivan Dec]. 11 9, Ex. 6) The day before its supplemental brief was due, Elements filed this
`
`petition for cancellation. As the following quote from Elements supplemental brief makes clear,
`
`Elements filed its petition for cancellation in furtherance of the ulterior motive of using its
`
`petition to denigrate Globefill’s registration before the Central District of California:
`
`Globefill failed to advise the USPTO that this Court twice had
`
`ruled that the design was functional and nonprotectable. This
`
`1 Even if this Board determines that Elements has sufficiently pleaded fraud on the USPTO, then the issue is
`nonetheless ripe for summary determination. In a motion for summary judgment, the moving party has the burden
`of establishing the absence of any genuine issue of material fact and that it is entitled to judgment as a matter of law.
`See Fed. R. Civ. P. 56(c). A genuine dispute with respect to a material fact exists if sufficient evidence is presented
`that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v.
`GreatAm. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus, all doubt as to whether any
`particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving
`party. See Old Tyme Foods Inc. v. Round)/’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
`
`

`
`material omission, which was done with the intent to obtain a
`
`. Accordingly,
`.
`registration to which it is not entitled, is fraud. .
`Elements has filed with TTAB a petition to cancel the registration
`based on this fraud. .
`.
`. [H]ad Globefill informed the examining
`attorney of this Court’s ruling that the design was functional,
`Globefill would not have the registration.
`
`(Sullivan Decl. 1] 10, EX. 7)
`
`Elements could have opposed Globefill’s registration during the opposition period and it
`
`could have petitioned to cancel Globefill’s registration at any time after it issued. After all,
`
`Elements was fully aware of Globef1ll’s pending application because Globefill included the
`
`pending application in both of its complaints with the Central District of California and requested
`
`judicial notice of its registration with the Ninth Circuit after it issued. (Sullivan Decl. W 4-5, 11,
`
`Ex. 1-2, 8) Clearly, Elements did not oppose this application or petition to cancel the registration
`
`earlier because it had no legitimate basis to do so. That is why it waited until the day before its
`
`supplemental brief was due at the Central District of California to file its petition to cancel.
`
`Not only was the petition to cancel filed with an ulterior motive, the petition was also
`
`filed with unclean hands because Elements failed to tell this Board that the Ninth Circuit
`
`reversed and remanded the decision to dismiss Gl0befill’s complaint. As a basis of its fraud
`
`claim, Elements contends that Globef1ll’s application declaration became inaccurate during the
`
`dismissals of the complaint even though the dismissal with prejudice was on appeal and even
`
`though the dismissal was reversed by the Ninth Circuit (again a fact which Elements withheld
`
`from the Board). Elements’ allegations do not give rise to a claim upon which relief may be
`
`granted.
`
`Under Rule 12(0) of the Federal Rules of Civil Procedure, a motion for judgment on the
`
`pleadings is designed to provide a means of disposition of a case when the material facts are not
`
`in dispute and judgment on the merits can be achieved by focusing on the pleadings. See Fed. R.
`
`

`
`Civ. P. 12(c). For purposes of the motion, all well-pleaded factual allegations of the nonmoving
`
`party are assumed to be true, and the inferences drawn therefrom are to be viewed in a light most
`
`favorable to the nonmoving party. 5 ALAN WRIGHT & ARTHUR R. MILLER, FED. PRAC. & PRoc.
`
`CIV. §1368(2d ed. 1990). A motion for judgment on the pleadings will only be granted when the
`
`moving party establishes that no material issue of fact remains to be resolved and that it is
`
`entitled to judgment as a matter of law. See, e. g., Baroid Drilling Fluids, Inc. v. Sun Drilling
`
`Prods., 24 USPQ2d 1048 (TTAB 1992). An unresolved material issue of fact may result from an
`
`express conflict on a particular point between the parties’ respective pleadings or from
`
`defendant's pleading of new matter and affirmative defenses in its answer. 5 ALAN WRIGHT &
`
`ARTHUR R. MILLER, FED. PRAC. & PRoc. CIV. §1368. Thus, a plaintiff may not secure a
`
`judgment on the pleadings when the answer raises issues of fact that, if proved, would defeat
`
`plaintiffs claim. See e.g., Austad v. US. 386 F.2d 147 (9th Cir. 1967).
`
`Fed. R. Civ. P. 9(b) provides that the circumstances constituting the alleged fraud shall be
`
`stated with particularity. See also King Aut0., Inc. v. Speedy Mufller King, Inc., 667 F.2d 1008,
`
`1010, 212 USPQ 801, 803 (CCPA 1981) (“[t]he pleadings [must] contain explicit rather than
`
`implied expressions of the circumstances constituting fraud”). Intent to deceive is an
`
`indispensable element of the analysis in a fraud case. See In re Bose Corp., 580 F.3d 1240, 1244-
`
`1245, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). As such, intent to deceive the USPTO, whether
`
`to obtain a registration, or to maintain a registration, is also an element to be pleaded in a fraud
`
`claim. Kingsdown Med Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 872 (Fed. Cir. 1988) (to
`
`prevail on a claim of inequitable conduct, the accuser must plead and prove, by clear and
`
`convincing evidence, a specific intent to deceive the USPTO).
`
`In addition to pleading a specific “intent to deceive,” a petitioner must also plead
`
`

`
`“materiality” of the alleged fraud. See Therasense Inc. v. Becton Dickenson and Co., 649 F.3d
`
`1276 (Fed. Cir. 2011). “[T]he materiality required to establish in equitable conduct is but-for
`
`materiality.” Id. at 1291. That is, would the registration have issued anyway. Cf id at 1292
`
`(“enforcement of an otherwise valid patent does not injure the public merely because of
`
`misconduct, lurking somewhere in the patent prosecution, that was immaterial to the patent’s
`
`issuance.” .
`
`Had Elements been honest with the Board, and apprised the Board of the fact that the
`
`District Court’s decision was reversed and remanded, it would have been obvious that not only
`
`was there no obligation to infonn the examiner of the appealed decision but the registration
`
`would clearly have issued even if the examiner had suspended the application pending the appeal
`
`to the Ninth Circuit. Elements’ fraud count is futile.
`
`“[A] trademark is obtained fraudulently under the Lanham Act only if the applicant or
`
`registrant knowingly makes a false, material representation with the intent to deceive the PTO.”
`
`Bose, 91 USPQ2d at 1941. See also Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48, 1
`
`USPQ2d 1483, 1484 (Fed. Cir. 1986). The standard for finding intent to deceive is stricter than
`
`the standard for negligence or gross negligence. See Bose, 91 USPQ2d at 1941. Deceptive
`
`intent may be established by direct evidence or may be inferred from indirect or circumstantial
`
`evidence, but no matter the type of evidence, it must be clear and convincing. Id. (citing Star
`
`Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F3d. 1357, 1366, 88 USPQ2d 1001, 1007 (Fed.
`
`Cir. 2008)). There is no fraud if a false representation is occasioned by an honest
`
`misunderstanding or inadvertence without a willful intent to deceive. Bose, 91 USPQ2d at 1940.
`
`There exists no evidence in this case which would meet the Bose standard.
`
`It is clear that under the holding of Bose, intent must be separately proved; and there is no
`
`

`
`genuine issue about the existence of intent to deceive the Office. Moreover, in Therasense, the
`
`Federal Circuit held that “inequitable conduct hinges on basic fairness” and it “should only be
`
`applied in instances where the [registrant’s] misconduct resulted in the unfair benefit of receiving
`
`an unwarranted claim.” Therasense, 649 F.3d at 1292.
`
`Elements’ second count is similarly futile. In its second count, Elements pleads that
`
`because Globefill highlights its product packaging when promoting the sale of its vodka and
`
`because some purchasers of Globef1ll’s vodka sell the empty bottles as “collectables,” this
`
`converts the product package for Vodka into a product design itself, thereby requiring a showing
`
`of secondary meaning. Elements tried to make the same argument before the Ninth Circuit Court
`
`of Appeals, to which Judge Paez responded that “the product is the vodka. . .not the bottle. . .the
`
`packaging of the product is classic trade dress material.” Oral Argument at 15:40-15:45,
`
`Globefill Inc. v. Elements Spirits, Inc. (No. 10-56895) available at
`
`http://wvvw.ca9.uscourts.gov/media. Elements cannot point to any existing law to support its
`
`proposition that product packaging becomes product design if post sale customers collect the
`
`packing or because a merchant touts the packaging style in its marketing.
`
`For the foregoing reasons, Globefill Incorporated respectfully requests that its Motion for
`
`Judgment on the Pleadings be granted.
`
`[Signature on Next‘ Page]
`
`

`
`DATED: September 10, 2012
`
`Respectfully submitted,
`
`By: /s/ John H. Weber
`John H. Weber
`Kelu L. Sullivan
`
`Baker Hostetler LLP
`
`Washington Square, Suite 1100
`1050 Connecticut Avenue, N.W.
`
`Washington, DC 20036
`Tel:
`(202) 861-1500
`Fax:
`(202) 861-1783
`Email: trademarks@bakerlaw.com
`Counsel for Respondent, Globefill Incorporated
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing MOTION FOR
`JUDGMENT ON THE PLEADINGS was served by first-class mail, postage pre-paid on this
`10th day of September, 2012 to Petitioner’s counsel at the following address:
`
`Steven M. Weinberg
`Holmes Weinberg, PC
`30765 Pacific Coast Highway, Suite 41]
`Malibu, CA 90265
`
`By:
`
`/s/ Kelu L. Sullivan
`Kelu L. Sullivan
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No.:
`Registration No.
`
`92055 85 7
`4043730
`
`I I
`
`|
`|
`
`| I
`
`| I
`
`Elements Spirits, Inc.,
`
`Petitioner,
`
`V.
`
`Globefill Incorporated,
`
`|
`Respondent.
` l
`
`AFFIDAVIT OF KELU L. SULLIVAN
`
`Pursuant to 28 U.S.C. § 1746, I, Kelu L. Sullivan, hereby declare as follows:
`
`1.
`
`I am an individual over the age of twenty-one (21) and I have personal knowledge of the
`
`facts stated herein.
`
`2.
`
`3.
`
`I am a lawyer with the firm of Baker & Hostetler LLP, counsel for the Respondent.
`
`I submit this affidavit in support of Globefill Incorporated’s Motion for Judgment on the
`
`Pleadings.
`
`4. Attached hereto as Exhibit 1 is a true and accurate copy of Globefill Incorporated’s First
`
`Amended Complaint, filed with the District Court for the Central District of California on
`
`March 25, 2010.
`
`5. Attached hereto as Exhibit 2 is a true and accurate copy of Globefill Incorporated’s
`
`Second Amended Complaint, filed with the District Court for the Central District of
`
`California on June 28, 2010.
`
`6. Attached hereto as Exhibit 3 is a true and accurate copy of Globefill Incorporated’s
`
`Notice of Appeal to the Court of Appeals for the Ninth Circuit on December 6, 2010.
`
`7. Attached hereto as Exhibit 4 is a true and accurate copy of Memorandum issued by the
`
`Court of Appeals for the Ninth Circuit on May 23, 2012.
`
`8. Attached hereto as Exhibit 5 is a true and accurate copy of Elements Spirits, Inc.’s Ex
`
`Parte Application to Submit Additional Briefing and to Conduct Limited Discovery filed
`
`on June 22, 2012.
`
`

`
`9. Attached hereto as Exhibit 6 is a true and accurate copy of the Order Granting the
`
`Submission of Additional Briefing and Denying Discovery issued by the District Court
`
`for the Central District of California on June 26, 2012.
`
`10. Attached hereto as Exhibit 7 is a true and accurate copy of Elements Spirits, Inc.’s
`
`Supplemental Briefing Opposing Globefill Incorporated’s Motion for Preliminary
`
`Injunction filed on July 13, 2012.
`
`ll. Attached hereto as Exhibit 8 is a true and accurate copy of Globefill Incorporated’s
`
`Request for Judicial Notice filed on October 26, 201 1.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on this 10th day of September 2012.
`
`/s/ Kelu L. Sullivan
`
`Kelu L. Sullivan
`
`

`
`EXHIBIT 1
`
`

`
`Case 2:1 O-cv-02034-CBM-PLA Document 6
`
`Filed 03/25/10 Page 1 of8
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`C. DENNIS LOOMIS, Bar No. 82359
`BAKER 5: HCSTETLER LLP
`12100 Wilshire Bpuleyard 15th Floor
`Los Angeles California 96025-7120
`'I‘elephone:' 310.820.8800
`Facsimile:
`310.820.8859
`Email:
`cdloomis@bakerlaw.com
`,
`Attorn
`for Plaintiff
`GLOB FILL INCORPORATED, aCanad1an
`corporation
`
`UNITED sraras DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`GLOB_EFILL INCORPORATED, a
`Canadian corporation,
`
`Plaintiff,
`
`v.
`
`Case No. CV10 2034 CBM (PLAx)
`
`FIRST AMENDED COMPLAINT FOR
`DAMAGES AND INJUNCTION FOR
`INFRINGEMENT
`AND UNFAIR COMPETITION
`
`_ ELEMENTS SPIRITS, INC. a
`California corporation; KIM IBRANDI,
`an 1I1d1V1du81,
`
`Defendants.
`
`
`
`DEMAND FOR JURY TRIAL
`
`Globefill Incorporated, by its attorneys, as its complaint against Defendants,
`
`alleges as follows:
`
`PARTIES AND JURISDICTION
`
`l.
`
`Globefill Incorporated (hereinafter “G1obefill"), is a Canadian
`
`corporation with its principal place ofbusiness at 309 Alfred Street, Kingston,
`
`Ontario, Canada K7L3 S4.
`
`2.
`
`Upon infomiation and belief, defendant Elements Spirits, Inc.
`
`(hereinafter “E1emcnts") is a California corporation with its principal place of
`
`business at 265 S. Arroyo Parkway, Suite 308, Pasadena, California 91105.
`
`501395333
`
`FIRST AMENDED COMPLAINT
`
`

`
`BAKER&HosrsruznLLPArvmutrvsA!Law
`
`InAQIGELI!
`
`Case 2:10-cv-02034-CBM-PLA Document 6
`
`Filed 03/25/10 Page 2 of 8
`
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`3.
`
`Upon information and belief, defendant Kim Brandi (“Brandi” is an
`
`individual residing at 2236 Fairglen Place, Corona, California 92881 and is the
`
`Chief Executive Officer of defendant Elements (Elements and Brandi hereinafter
`
`collectively “Defendants”).
`
`4.
`
`This is an action for trademark infiingement and related claims of
`
`unfair competition under the Lanham Act, 15 U.S.C. §l l25(a). This Court has
`
`jurisdiction of this action under 28 U.S.C. §§133l , 1332, l338(a)-(b) and l367(a).
`
`Venue is proper in this district under 28 U.S.C. §§l39l and 1400(a).
`
`STATEMENT OF FACTS
`
`5.
`
`Globefill is the owner of Crystal Head vodka which it has promoted
`
`and sold throughout the United States since September 2008 in an inherently
`
`distinctive skull shaped bottle packaging. Globefill is the owner of the Skull Bottle
`
`Design packaging trademark (hereinafier “Skull Bottle Mark”) for vodka as shown
`
`in Exhibit A. Globefill is also the owner of U.S. Application Serial Nos.
`
`77/693,600 and 77/693,594 for the trademarks CRYSTAL HEAD & “Skull Bottle”
`
`Design, attached hereto as Exhibit B.
`
`6.
`
`Globefill has committed a significant amount of time and expense to
`
`conceive and develop its Skull Bottle Mark, and its marketing of its Crystal Head
`
`vodka packaged in its Skull Bottle Mark has centered on Meso—American
`
`observations of the Day of the Dead, which in turn represents rebirth and new
`
`beginnings. Globefill is associated with the famous actor and entertainer, Dan
`
`Aykroyd, who has been a centerpiece of Globefill’s promotion of its Crystal Head
`
`vodka and its unique Skull Bottle Mark. Because Globefill’s association with Mr.
`
`Aykroyd, the kickoff meeting for Crystal Head vodka was held at House of Blues
`
`in Anaheim (a restaurant and club chain in which Mr. Aykroyd is a partner in
`
`ownership) in late September 2008. This sales meeting was followed by a well
`
`publicized bottle signing by Mr. Aykroyd at Hi Times along with the general
`
`release of Crystal Head vodka for sale across Southern California independent
`
`502806288
`
`- 2 -
`
`FIRST AMENDED COMPLAINT
`
`

`
`BAKER&HOSTETLERLLPAwotuevsMLuv
`
`L05Itucnu
`
`Case 2:10-cv-02034-CBM-PLA Document 6
`
`Filed 03/25/10 Page 3 of 8
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`stores and “on premise” outlets. This pattern was repeated in the initial launch
`
`markets of Florida, Louisiana, Texas and Nevada. In each of these markets, launch
`
`meetings were held with the respective distributor sales forces at the House of
`
`Blues locations in Orlando, New Orleans, Dallas and Houston and well publicized
`
`bottle signings were held along with visits by Mr. Aykroyd to key “on premise”
`
`accounts. In addition there was extensive media coverage including radio and
`
`television interviews where Mr. Aykroyd spoke about the origins of the product
`
`packaging and the tie to the Mexican Day of the Dead celebrations as well as a
`
`number of print interviews in each location. The net result of all this activity was
`
`that they sold out of their initial first year projection of 5,000 cases in about thirty
`
`days.
`
`7.
`
`In light of this success, the decision was made to rollout Crystal Head
`
`vodka across the United States using the same launch pattern of distributor sales
`
`meetings (at the House of Blues wherever possible), media interviews and bottle
`
`signings. This activity has resulted in one of the most successful launches in the
`
`history of distilled spirits according to a variety of third parties, including Adams
`
`Beverage Media, who have cited Crystal Head vodka as a “brand to watch." The
`
`combination of Globef1ll’s distinctive skull product packaging design and its
`
`expansive marketing activities has created substantial goodwill in Globefil1’s skull
`
`design package during the two years it has been on the market. Globefill is now
`
`selling in 47 states, and Mr. Aykroyd has done bottle signings in 23 states with over
`
`45 signings in total. The signings have attracted over 1000 people per event. Each
`
`opening has been preceded by advertising for the event and included signings of the
`
`bottle packaging by Mr. Aylcroyd. The vodka has been so well received that, as of
`
`January 2010, it has received over 535,000 hits on its website,
`
`www.crystaldheadvodka.com and there are over 70,000 Google references to the
`
`product.
`
`502806288
`
`— 3 -
`
`FIRST AMENDED COMPLAINT
`
`

`
`BAKER1.HosnnsnLLPAflcuuflsMLin: Lo:
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`Anette:
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`Case 2:10-cv-02034-CBM-PLA Document6
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`Filed O3/25/10 Page4of 8
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`8.
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`On March 10, 2010, Mr. Aylcroyd also appeared as a keynote speaker
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`at the Nightclub & Bar Convention and Trade Show in Las Vegas, during which he
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`promoted Globefill’s Crystal Head vodka and Skull Bottle Mark.
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`9.
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`As a result of Globefill’s extensive marketing efforts, its high-profile
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`and widespread promotional activity, and the highly distinctive and unique nature
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`of Globefill’s Skull Bottle Mark, Globefill’s Skull Bottle Mark has become well-
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`, known in the on-premises bar and restaurant trade and among the public as a
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`source-identifier of Globefill’s Crystal Head vodka.
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`10. Upon information and belief, Defendants are promoting a product
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`called KAH Tequila using a highly similar product packaging. Compare Exhibit A
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`u-n
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`(depicting Globefill’s product packaging) and Exhibit C (depicting Defendants’
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`product packaging).
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`l 1. Upon information and belief, Defendants’ are trading on Globefill’s
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`marketing themes of Meso-American Day of the Dead celebration and rebirth and
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`new beginnings. Defendants’ March 1, 2010 press release in “The Polished Palate”
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`.
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`tracked such advertising themes by refening to its product’s “cultural roots in Aztec
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`’ and Meso-American observances of Day ofthe Dead, which in turn represents
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`rebirth and new beginnings.”
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`12. Upon information and belief, the Chief Operating Officer of Defendant
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`Elements, Chris Melendez, in Elements’ March 1, 2010 press release, stated that the
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`KAH Tequila “easily fits in the House of Blues or a Mexican Grandmother’s
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`kitchen” (emphasis added).
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`13. Upon information and belief, during the March 2010 Nightclub & Bar
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`. Convention and Trade Show, the Spring 2010 edition of the Liquid Living
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`Magazine, of which defendant Brandi is the publisher, was distributed to attendees.
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`That edition of defendant Brandi’s Liquid Living Magazine featured an article
`about Defendants’ KAH Tequila showing its product packaging. Exhibit C. This
`article again tracked Meso-American theme.
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`:
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`502806288
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`- 4 —
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`FIRST AMENDED COMPLAINT
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`

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`BAKER&HOSTIZTLIRLLPArrmunsMLAIK
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`LossAndrus
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`Case 2:10-cv-O2034—CBM-PLA Document 6
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`Filed 03/25/10 Page 5 of 8
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`14. During a telephone conversation between counsel for the parties on
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`March 18, 2010, counsel for Defendants twice admitted that Defendants have
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`experienced instances of actual confusion.
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`15. Upon information and belief, Defendants are aware of instances in
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`which persons have expressed confusion about an association between Globefill’s
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`Crytal Head vodka and Defendants’ KAH Tequila.
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`COUNT I:
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`UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN
`IN VIOLATION OF LANHAM ACT § 43(A); 15 U.S.C. §l l25(a)
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`l6. Globefill hereby repeats, and incorporates by reference, the allegations
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`set forth in paragraphs 1 through 15 herein.
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`l7. Defendants’ use of the Skull Bottle Mark in association with a
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`competing alcoholic product constitutes unfair competition and a false designation
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`of origin that is likely to deceive customers and prospective customers concerning
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`the source of Defendants’ products, in violation of § 43(a) of the Lanham Act, 15
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`U.S.C. §1l25(a).
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`18. Defendants’ actions are likely to cause confiision or mistake among
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`the public as to the true origin and sponsorship of Defendants’ products, and to
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`confuse the public into believing that Defendants’ products are somehow associated
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`with Globefill, in violation of section 43(a) of the Lanham Act. 15 U.S.C. §
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`1l25(a).
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`19. Upon information and belief, all of the acts complained of herein by
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`defendant Elements were and are under the direction and control of defendant
`
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`27
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`28
`
`20.
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`By the aforesaid acts, Defendants have falsely designated the origin,
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`quality and nature of their goods and business and have falsely described and
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`represented same, causing likelihood of confusion and constituting unfair
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`competition in violation of Section 43(a) of the Lanham Act (15 U.S.C § l l25(a)).
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`502806288
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`- 5 -
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`FIRST AMENDED COMPLAINT
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`

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`Case 2:10-cv-02034—CBM-PLA Document 6
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`Filed 03/25/10 Page 6 of 8
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`\DOO\lG’\U\-fib-FPO»-*
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`Unless enjoined by this Court from so doing, Defendants will continue to engage in
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`its acts of false representation and designation as complained of herein, to the
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`irreparable damage and injury of Globefill.
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`21. Upon information and belief, the aforesaid acts of false designation of
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`origin by Defendants have been undertaken with knowledge of Globefill’s
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`exclusive rights to the Skull Bottle Mark, and are willful, entitling Globefill to an
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`award of treble damages and attorneys’ fees in bringing and maintaining this action,
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`pursuant to Section 35(b) of the Trademark Act, 15 U.S.C. § ll 17(b).
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`WHEREFORE, plaintiff Globefill requests judgment as follows:
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`A.
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`That Defendants jointly and severally, along with their officers, agents,
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`servants, employees, attorneys, confederates, and all other persons in active concert
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`or participation with Defendants to whom notice of the injunction is given by
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`personal service or otherwise, be enjoined, at first preliminarily and, thereafter,
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`permanently, from making any use of the Skull Bottle Mark in any manner
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`whatsoever;
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`That Defendants jointly and severally be ordered to deliver up to the
`B.
`plaintiff for destruction all materials comprising, associated with, hearing or
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`packaged in the Skull Bottle Mark;
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`C.
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`That Defendants jointly and severally be ordered to recall all goods,
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`advertisements and promotional materials comprising, associated with, bearing or
`packaged in the Skull Bottle Mark from their present locations, including, but not
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`:
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`limited to, locations owned by others;
`
`D.
`That Defendants jointly and severally be required to account to
`: Globefill for any and all profits derived by them and to compensate Globefill for all
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`damages sustained by Globefill by reason of the acts complained of herein, and that
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`such damages be trebled;
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`BAKER5:HOSTETLERLLPArvmmlvAILW LosAnarus
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`502806283
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`FIRST AMENDED COMPLAINT
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`

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`Case 2:10-cv-02034-CBM-PLA Document 6
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`Filed 03/25/10 Page 7 of 8
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`E.
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`That Defendants jointly and severally pay Globefill’s attorneys’ fees,
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`costs, and disbursements incurred in this action in view of the exceptional nature of
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`this case due to the willful and intentional nature of the infringement;
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`F.
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`Such other and further relief as the Court deems just.
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`BAKER & HOSTETLER LLP
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`
`
`
`. D
`is Loomis _
`Attornefaiys for Plaintiff
`GLOB_ FILL INCORPORATED, a
`Canadian corporation
`
`Dated: March 25, 2010
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`\DOO\)O\UI-bu-Jl\)>—CD\OOO~.)O\UIJ>-ubtx)
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`BAKERI:H0511-:TLt:RLLPAnonuuvsAILAW
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`L05ANGELIS
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`FIRST AMENDED COMPLAINT
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`

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`Case 2:10-Cv—O2034-CBM—PLA Document 6
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`Filed 03/25/10 Page 8 of 8
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`JURY TRIAL DEMAND
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`Plaintiff demands a jury trial as to all matters properly so tried.
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`1 Dated: March 25, 2010
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`BAKER & I-IOSTETLER LL
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`
`cnnis
`C
`Aitorne s for Plaintiff‘
`GLOB FILL INCORPORATED, a
`Canadian corporation
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`a-—-to--r-—tu-—o——v--I---c-4u-a\DX\lC‘KI!«QU3B)3V000\ION‘~11«#5UJ.|Q¢--
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`502305233
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`— 8 -
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`FIRST AMENDED COMPLAINT
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`

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`Case 2:10—cv-02034-CBM-PLA Document 6-1
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`Filed 03/25/10 Page 1 of 15
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`EXHIBIT A
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`

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`Case 2:10-cv-02034-CBM-PLA Document 6-1
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`Filed 03/25/10 Page 2 of 15
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`EXHIBIT A
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`
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`Exhibit A - Page 9
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`

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`Case 2:10-cv-02034-CBM—PLA Document 6-1
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`Filed 03/25/10 Page 3 of 15
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`EXHIBIT B
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`

`
`Latest Status Info
`
`Case 2:10-cv-02034-CBM-PLA Document 6-1 mfi,i)g5},§),;*}{.3§(,1,Q,,,E’@Q§-fi¢Qfi,1§,;,1&cm,y=7-,-593500
`
`Thank you for your request. Here are the latest results from the ‘IARR web server.
`
`This page was generated by the TARR system on 20l()-()3- I 9 l5:53:4l ET
`
`Serial Number: 77693600 Assignment lnforqigggg
`
`’l'raderg”z;1_;'_kw_‘I_)_~«c_)_g:Atn:,_x31e:1t R§;r_i_e;y_:3_j
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
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`
`
`(Luna! huh
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`(words only): CRYSTAI. I--IEAD
`
`Standard Character claim: No
`
`Current Status: An office action suspending further action on the application has been mailed.
`
`Date of Status: 20 I 0-01 -07
`
`Filing Date: 2009-()3-I 8
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`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Ofiice Assigned: LAW OFFICE 106
`
`Attorney Assigned:
`AYALA l.0l}RDlZS
`
`Current Location: L6)‘; -'l'Mt£G Law Office 106 - hxamining Attorney Assigned
`
`Date In Location: 20 I (H)! -07
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. Globefill incorporated
`
`Address:
`
`Globefill Incorporated
`309 Alfred Street
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`I of 3
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`Exhibit B — Page 10
`
`

`
`Latest Status Info
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`Case 2:10-cv~O2034-CBM-PLA Document 6-1 h$J mefia%-fig§;§,;flmm775935m
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`Kingston. Ontario K7L3S4
`Canada
`
`Legal Entity Type: Corporation
`State or Country ofIncorporation: Canada
`
`
`
`GOODS ANDIOR SERVICES
`
`
`International Class: 033
`Class Status: Active
`
`(Based on Intent to Use) Vodka(Based on 44(d) Priority Application) Vodka
`Basis: l(b), 44(d)
`First Use Date: 2008-O9~00
`
`First Use in Commerce Date: 200809-()0
`
`
`
`ADDITIONAL INFORMATION
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Description of Mark: The mark consists of the front view of a bottle in the shape ofa skull with a topper on
`the top of the bottle with the words "CRYSTAL HEAI)" shown below it.
`
`Design Search Code(s):
`02.11.10 - Bones, human; Human skeletons, parts of skeletons, bones, skulls; Skulls, human
`l9.09.02 - Bottles, jars or flasks with bulging. protruding or rounded sides; Flasks with bulging or protruding
`sides; Jars with bulging or protruding sides
`
`Prior Registration Number(s):
`3602523
`
`Foreign Application Number: I4 I 8234
`Country: Canada
`Foreign Filing Date: 2008-l l- l 3
`
`MADRID PROTOCOL INFORMATION
`
`(NOT AVAILABLE)
`
`PROSECUTION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval"
`shown near the top of this page.
`
`2010-034 8 - Amendment to use processing complete
`
`20 lO«03-l8 - Amendment to Use filed
`
`20l0-()3—l 7 ~ Tl%ZAS Amendment of Use Received
`
`2of3
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`Exhibit B -— Page 11
`
`

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`Latcststatuslnfo
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`Case 2:10-cv-02034-CBM-PLA Document 6-1 nFgJm6hQ§J8§6iflerJ?eaafi'2%3Er15:ria1&emy=776936oo
`
`2010-01 -07 - Notification 01' Letter Of