Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA768506
`09/02/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92062051
`
`Party
`
`Correspondence
`Address
`
`Defendant
`NOMOO, LLC
`
`TIMOTHY D PECSENYE
`BLANK ROME LLP
`ONE LOGAN SQUARE, 130 N 18TH STREET
`PHILADELPHIA, PA 19103-6998
`UNITED STATES
`sjohnston@blankrome.com, aria@blankrome.com, pecsenye@blankrome.com,
`tkelly@blankrome.com
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`Steven M. Johnston
`
`sjohnston@blankrome.com
`
`/Steven M. Johnston/
`
`09/02/2016
`
`1-main.pdf(112857 bytes )
`1-1.pdf(58148 bytes )
`1-2.pdf(47424 bytes )
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 1 of 15
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`CIVIL ACTION NO.
`
`
`
`
`
`JUDITH U. HERRELL, HERRELL’S
`DEVELOPMENT CORPORATION,
`HERRELL’S
` Plaintiff
`
`V.
`
`
`
`
`NOMOO LLC.
` Defendant
`
`
`
`COMPLAINT
`(And jury demand)
`
`NATURE AND BASIS OF ACTION
`
`This is an action by Judith U. Herrell (“Ms. Herrell”), Herrell’s Development
`
`1.
`
`Corporation (“Herrell’s Development”) and Herrell’s Ice Cream Corporation (“Herrell’s Ice
`
`Cream”) (collectively “Plaintiffs”) against NoMoo LLC (“LLC”) for trademark infringement,
`
`cancellation of trademark, and trademark dilution. Development and Ice Cream, as trademark
`
`licensees, seek injunctive relief and damages for trademark infringement under Sections 14 and
`
`32 of the Trademark Act of 1946, as amended, 15 U.S.C. §§ 1114, 1116, and 1125(a) (“the
`
`Lanham Act”), and for infringement of a famous mark under Section 43(c) of the Lanham Act,
`
`15 U.S.C. §1125(c). Ms. Herrell seeks cancellation of a trademark under Sections 32 and 37,
`
`15 U.S.C. §§ 1114, 1119.
`
`PARTIES
`
`Plaintiff Judith U. Herrell is an individual with a business address at 8 Old
`
`1.
`
`South Street, Northampton, Massachusetts 01067.
`
`
`
`1
`
`

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`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 2 of 15
`
`2.
`
`Ms. Herrell is the owner by assignment of a registration on the Principal
`
`Register of the United States Patent & Trademark Office for the trademark No-Moo (No.
`
`1540730)(“No-Moo Mark”).
`
`3.
`
`Plaintiff Herrell’s Development is a corporation duly organized under the laws
`
`of the Commonwealth of Massachusetts.
`
`2.
`
`Plaintiff Herrell’s Ice Cream is a corporation duly organized under the laws of
`
`the Commonwealth of Massachusetts.
`
`3.
`
`Defendant NoMoo, LLC (“LLC”) is a limited liability company organized
`
`under the laws of the State of Delaware with a business address of 5118 Applebutter Road,
`
`Pipersville, Pennsylvania 18947 doing business as NoMoo Cookie Company.
`
`4.
`
`LLC is the owner of a registration on the Principal Register of the United States
`
`Patent & Trademark Office for the trademark NoMoo (Registration No. 4,692,455). (“NoMoo
`
`Mark”).
`
`
`
`JURISDICTION AND VENUE
`
`5.
`
`This Court has original subject matter jurisdiction of this matter pursuant to 15
`
`U.S.C. § 1119 and 28 U.S.C. §1331, as this case arises under the Lanham Act, 15 U.S.C. §§
`
`1064, 1114, 1121, and 1125(a) and (c), Venue is proper in this Court under 28 U.S.C.
`
`§1391(c), as NoMoo is a limited liability corporation subject to personal jurisdiction in this
`
`judicial district. Venue in the Western Division of this Court is proper pursuant to Local Rule
`
`2
`
`40.1(D)(1)(c).
`
`
`
`
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 3 of 15
`
`FACTUAL ALLEGATIONS
`
`Herrell’s Corporate and Trademark History
`
`1.
`
`In 1980, Ms. Herrell’s predecessor-in-interest, Stephen Herrell (“Mr. Herrell”),
`
`d/b/a Herrell’s Ice Cream opened an ice cream parlor in Northampton, Massachusetts.
`
`(“Northampton store”).
`
`2.
`
`On May 23, 1989, the United States Patent and Trademark Office (“USPTO”)
`
`issued to Mr. Herrell a registration for the word mark “No-Moo” in connection with non-dairy
`
`frozen confections for consumption on and off the premises in International Trademark Class
`
`30, with a stated date of first use of April 29, 1985, and a stated date of first use in commerce
`
`of November 28, 1986.
`
`3.
`
`From November 1986 until August 19, 2011, Mr. Herrell engaged in
`
`substantially exclusive and continuous use of the No-Moo Mark in interstate commerce in
`
`connection with non-dairy frozen confections for consumption on an off the premises, in part
`
`through two corporations, Herrell’s Ice Cream (of which he was sole stockholder, and which
`
`owns and operates the Northampton store), and Herrell’s Ice Cream, Inc. (a wholly-owned
`
`subsidiary of Herrell’s Ice Cream Corp., which was later consolidated with Herrell’s Ice Cream
`
`Corp.), and in part through franchisees and licensees under franchise and license agreements
`
`with Herrell’s Ice Cream Corp, and later with Herrell’s Development Corp.
`
`4.
`
`On August 19, 2011, Mr. Herrell assigned a one-half interest in the No-Moo
`
`Mark to Ms. Herrell.
`
`5.
`
`Simultaneous with the assignment, Mr. Herrell and Ms. Herrell entered into
`
`written license agreements with Herrell’s Ice Cream and Herrell’s Development
`
`
`
`3
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 4 of 15
`
`6.
`
`On or about February 6, 2014, Mr. Herrell conveyed to Ms. Herrell all of his
`
`ownership interests in Herrell’s Ice Cream and Herrell’s Development.
`
`7.
`
`Simultaneous with such transaction, Mr. Herrell assigned to Ms. Herrell his
`
`one-half interest in the No-Moo Mark, so that, after the assignment, Ms. Herrell became the
`
`sole owner of the No-Moo Mark.
`
`8.
`
`As sole owner of the No-Moo Mark, Ms. Herrell then entered into license
`
`agreements with both Herrell’s Ice Cream and Herrell’s Development.
`
`9.
`
`Herrell’s Ice Cream has engaged in substantially exclusive and continuous use
`
`of the No-Moo Mark in interstate commerce in connection with non-dairy frozen confections
`
`since 1986.
`
`10.
`
`In or about 1993, Herrell’s Ice Cream began selling non-dairy baked goods
`
`under the No-Moo Mark for consumption on and off the premises at its Northampton,
`
`Massachusetts.
`
`11.
`
`The No-Moo Mark had been in continuous and substantially exclusive use in
`
`connection with non-dairy baked goods by Ms. Herrell, through her authorized licensees,
`
`Herrell’s Ice Cream and Herrell’s Development, and their licensees and franchisees, since
`
`1993.
`
`12.
`
`On July 31, 2015, Ms. Herrell applied to the USPTO for registration of the No-
`
`Moo Mark on the Principal Register for non-dairy baked goods for consumption on or off the
`
`premises. (Serial No. 86710786)
`
`
`
`4
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 5 of 15
`
`13.
`
`Herrell’s Ice Cream currently advertises, offers for sale and sells at the
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`Northampton store, and authorizes others to sell under license, a variety of products under the
`
`No-Moo Mark (“No-Moo® products”), including:
`
`a. No-Moo® non-dairy frozen desserts;
`b. No-Moo® Cookie & Frozen Dessert Sandwiches;
`c. No-Moo® non-dairy frozen dessert cakes with No-Moo® cake center;
`d. No-Moo® cookies (Chocolate Chip, Potato Chip, Chocolate Flourless Walnut,
`and Oatmeal);
`e. No-Moo® Eggless Chocolate Cupcakes;
`f. No-Moo® Vanilla Cake;
`g. No-Moo® Brownies;
`h. No-Moo® Cookie Dough Pie; and
`i. No-Moo® Brookie Pie.
`
`In addition, Herrell’s Ice Cream advertises and sells No-Moo® Ice Cream by
`
`14.
`
`mail on its website at http://www.herrells.com/cakes-parties/ice-cream-by-mail, and advertises
`
`and sells No-Moo® non-dairy baked goods (those which do not require refrigeration) on its
`
`website at http://www.herrells.com/cakes-parties/pies-and-baked-goods.
`
`15.
`
`Herrell’s Development advertises, offers for sale, and sells No-Moo® products
`
`through its authorized franchisee, Herrell’s Ice Cream Huntington, 46L Gerard Street,
`
`Huntington, New York, and through its authorized retailers, Lickety Split, 69 Spring Street,
`
`Williamstown, Massachusetts 01267; Richardson’s Candy Kitchen, Route 5 & 10, Deerfield,
`
`Massachusetts 01342; and Glazed Donuts, 19 N. Pleasant Street, Amherst.
`
`16.
`
`Throughout their 30-plus year history, Herrell’s Ice Cream and Herrell’s
`
`Development and predecessor corporations have actively conducted advertising and
`
`promotional activities designed to enhance and promote the public image of Herrell’s Ice
`
`Cream, the No-Moo Mark and No-Moo products through a variety of means, including but not
`
`limited to point-of-sale displays, and newspaper and radio advertising, booths at industry trade
`
`
`
`5
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 6 of 15
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`shows, via posters and ads for educational and sporting events, local sports teams, local theater
`
`companies and venues, and charities.
`
`17.
`
`The non-dairy frozen confections sold by Herrell’s Ice Cream, and by Herrell’s
`
`Development’s licensees under the No-Moo Mark, have been the subject of numerous
`
`unsolicited reviews on the Internet over the years.
`
`18.
`
`As a result of the thirty-years of sales to hundreds of thousands of customers at
`
`the Northampton store, sales of No-Moo products at the locations of authorized licensees and
`
`franchisees, frequent mention of Herrell’s No-Moo ice cream on the Internet, and visits by
`
`consumers to Herrell’s website, consumers have come to associate non-dairy frozen
`
`confections and non-dairy baked goods sold under the No-Moo Mark exclusively with
`
`Herrell’s Ice Cream as their source.
`
`Wrongdoing by Defendants
`
`19.
`
`On September 3, 2010, Mr. David Bader (“Mr. Bader”) filed an application with
`
`the USPTO for registration of the mark “NoMoo” connection with kosher baked goods in
`
`International Trademark Class 30. The application was filed on an intent-to-use basis under
`
`Section 1(b) of the Lanham Act.
`
`20.
`
`Among the kosher baked goods Mr. Bader intended to sell under the No-Moo
`
`Mark were dairy-free, sweetened dessert products.
`
`21.
`
`The non-dairy frozen confections sold by Herrell’s Ice Cream, Herrell’s
`
`Development, and its licensees and franchisees are dairy-free, sweetened dessert products.
`
`22.
`
`The non-dairy baked goods sold by Herrell’s Ice Cream, and Herrell’s
`
`Development’s New York franchisee are dairy-free, sweetened dessert products.
`
`
`
`6
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 7 of 15
`
`23.
`
`In filing the 2010 application, Mr. Bader certified that, to the best of his
`
`knowledge and belief, no other person had the right to use the NoMoo mark in commerce,
`
`either in an identical form or in such near resemblance as to be likely, when used on or in
`
`connection with the goods of such other person, to cause confusion, or to cause mistake, or to
`
`deceive.
`
`24.
`
`At the time he filed the application with the USPTO, Mr. Bader was on
`
`constructive notice of the existence of Mr. Herrell’s registration on the Principal Register of the
`
`USPTO of the No-Moo Mark in Class 30 for non-dairy frozen confections.
`
`25.
`
`The No-Moo Mark so nearly resembled the NoMoo Mark as to be likely, when
`
`used by Mr. Herrell’s licensees and sub-licensees in connection with non-dairy desserts, to
`
`cause confusion, or to cause mistake, or to deceive.
`
`26. Mr. Bader filed, or caused his attorney to file, a Statement of Use in connection
`
`with the 2010 application falsely representing August 1, 2011 as the date of first use of the
`
`NoMoo Mark in commerce in connection with kosher bakery products.
`
`27.
`
`After the Examining Attorney at the USPTO rejected the Statement of Use
`
`because the specimen submitted did not show use of the NoMoo mark in connection with the
`
`sale of kosher baked goods in commerce, Mr. Bader abandoned the 2010 trademark
`
`application.
`
`28.
`
`On July 24, 2014, Mr. Bader, now doing business as NoMoo LLC, filed a
`
`second application in the USPTO for registration on the Principal Register of the NoMoo Mark
`
`in connection with kosher bakery products in International Class 30, giving as a first date of
`
`use of June 1, 2014.
`
`
`
`7
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 8 of 15
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`29.
`
` In filing the 2014 application, NoMoo LLC certified that, to the best of its
`
`knowledge and belief, no other person had the right to use the NoMoo mark in commerce,
`
`either in an identical form or in such near resemblance as to be likely, when used on or in
`
`connection with the goods of such other person, to cause confusion, or to cause mistake, or to
`
`deceive.
`
`30.
`
`At the time NoMoo LLC filed the 2014 application with the USPTO, it was on
`
`constructive notice of the existence of Ms. Herrell’s registration on the Principal Register of
`
`the USPTO of the No-Moo Mark in Class 30 for non-dairy frozen confections.
`
`31.
`
`The No-Moo Mark so nearly resembled the NoMoo Mark as to be likely, when
`
`used by Ms. Herrell’s licensees and sub-licensees in connection with non-dairy desserts, to
`
`cause confusion, or to cause mistake or to deceive.
`
`32.
`
`On February 24, 2015, the USPTO issued to NoMoo LLC a registration for the
`
`word mark “NoMoo” in connection with kosher bakery products in International Trademark
`
`Class 30.
`
`33.
`
`NoMoo LLC offers diary-free cookies for sale to customers via an Internet
`
`website (www.nomoocookies.com) and through 27 authorized retailers: fifteen (15) in
`
`Pennsylvania, two (2) in New York, five (5) in Connecticut, and three (2) in New Jersey, and
`
`two (2) in Massachusetts. One store (Torrington, CT) is 60 miles from the Northampton store;
`
`another, in Cambridge, New York, is 90 miles from the Northampton store.
`
`34.
`
`The number of stores carrying NoMoo cookies has increased from ten to twenty
`
`stores in March 2016, and located only in the states of Pennsylvania and Connecticut, to
`
`twenty-seven stores today in five Northeastern states.
`
`
`
`8
`
`

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`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 9 of 15
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`35.
`
`The first page of the results list for a Google™ search using the search term No
`
`Moo includes links to the website for NoMoo Cookies (first and second listings in search
`
`results), and a link to the Herrell’s website (fourth listing).
`
`36.
`
`The first page of the results list for a Google™ search using the search term No-
`
`Moo includes links to the website for NoMoo Cookies (first and second listings in search
`
`results) and a link to the Herrell’s website (fourth listing).
`
`37.
`
`LLC competes directly with Herrell’s Ice Cream in the sale of non-dairy/dairy
`
`free confections, including ice cream and baked goods, both on the Internet and through
`
`authorized retailers.
`
`38.
`
`On August 18, 2015, shortly after becoming aware that LLC had obtained a
`
`federal registration for the NoMoo Mark and, doing business as NoMoo Cookie Company, was
`
`offering non-dairy/dairy-free cookies under the NoMoo Mark on its website and through retail
`
`locations, Ms. Herrell petitioned the Trademark Trial and Appeal Board of the USPTO to
`
`cancel Registration No. 4,692,455 on the ground that LLC’s continued use of the NoMoo Mark
`
`creates a likelihood of confusion with her previously registered No-Moo Mark.
`
`39.
`
`LLC has not only opposed cancellation, but has continued to advertise, promote,
`
`and sell its dairy-free/non-dairy cookies under the NoMoo Mark on its website and through an
`
`ever-expanding number of retail locations in the Northeast.
`
`40.
`
`LLC has continued its use of the domain name “NoMoo Cookies” for Internet
`
`and website purposes.
`
`
`
`9
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 10 of 15
`
`41.
`
`LLC’s use of the name “NoMoo” in the advertising, promotion, and sale of non-
`
`dairy/dairy-free cookies has caused and will likely continue to cause actual confusion among
`
`consumers.
`
`COUNT I
`
`(§§ 32, 37 OF THE LANHAM ACT)
`
`42. Ms. Herrell incorporates and realleges, as if fully set forth in this paragraph, the
`
`allegations of the foregoing paragraphs.
`
`43.
`
`LLC has, without Ms. Herrell’s consent, used in commerce a colorable imitation
`
`of the No-Moo Mark in connection with the sale, offering for sale, distribution, and/or
`
`advertising of goods or services likely to cause confusion, or to cause mistake, or to deceive in
`
`violation of Section 32(1)(a) of the Lanham Act, 15 U.S.C. §1114(1)(a).
`
`44.
`
`The infringing acts committed by LLC have been committed with knowledge
`
`that such imitation was intended to cause confusion, or to cause mistake or to deceive, and
`
`have caused, and, unless LLC’s registration for the NoMoo Mark is cancelled, will continue to
`
`cause damage to Ms. Herrell.
`
`COUNT II
`
`(§43(a) OF THE LANHAM ACT)
`
`45.
`
`Plaintiffs incorporate and realleges, as if fully set forth in this paragraph, the
`
`allegations of the foregoing paragraphs.
`
`46.
`
`The No-Moo Mark, as more fully described above, is a well established mark
`
`that serve to identify the goods and services sponsored, approved by, authorized by, associated
`
`with, or affiliated exclusively with Herrell’s Ice Cream.
`
`
`
`10
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 11 of 15
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`47.
`
`As evidenced by the federal registrations and long, continued and exclusive use,
`
`the No-Moo mark has acquired distinctiveness and secondary meaning in connection with non-
`
`dairy frozen confections and non-dairy baked goods for consumption on and off the premises
`
`provided by Ms. Herrell and her wholly-owned corporations and their licensees and
`
`franchisees.
`
`48.
`
`Prior to beginning the sale of dairy-free cookies under the NoMoo Mark, LLC
`
`had actual and constructive knowledge of the use and ownership by the Plaintiffs of the No-
`
`Moo Mark and was aware of the advertising and promotional activities sponsored by the
`
`Plaintiffs.
`
`49.
`
`LLC, in connection with products almost identical to those offered by Plaintiffs,
`
`and their licensees and franchisees, has used and continue to use, and has expanded, its use of a
`
`colorable imitation of the No-Moo Mark in a manner which is likely to cause confusion, or
`
`cause mistake, or to deceive as to the affiliation, connection, or association of LLC with the
`
`Plaintiffs, and to the origin, sponsorship, or approval of LLC’s goods by the Plaintiffs.
`
`50.
`
`LLC’s use of a colorable imitation of the No-Moo Mark constitutes false
`
`designations of origin, false descriptions and false representations in interstate commerce in
`
`violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and have caused and will
`
`continue to cause irreparable harm to Herrell’s Ice Cream and Herrell’s Development unless
`
`and until temporarily, preliminarily, and thereafter permanently enjoined by this Court.
`
`Herrell’s Ice Cream and Herrell’s Development have no adequate remedy at law.
`
`
`
`11
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 12 of 15
`
`51.
`
`LLC’s conduct represents a conscious and intentional effort to misappropriate
`
`the No-Moo Mark for the purposes of injuring Herrell’s Ice Cream and Herrell’s Development,
`
`and unjustly enriching LLC at their expense.
`
`COUNT III
`
`(SECTION 43(c) OF THE LANHAM ACT)
`
`52.
`
`Plaintiffs incorporate and reallege, as if fully set forth in this paragraph, the
`
`allegations of the foregoing paragraphs.
`
`53.
`
`The No-Moo Mark is “famous” within the meaning of Section 43(c)(1) and (2)
`
`of the Lanham Act.
`
`54.
`
`After the No-Moo Mark became famous, and after October 6, 2006, LLC
`
`commenced use of a mark in commerce that is likely to cause dilution by blurring by impairing
`
`the distinctiveness of such famous mark, lessening the capacity of such mark to identify and
`
`distinguish non-dairy dessert products offered by Ms. Herrell and her affiliates, licensees, and
`
`franchisees, and by creating an association arising from the similarity between LLC’s NoMoo
`
`Mark and the Plaintiffs’ No-Moo Mark that harms the reputation of such famous mark.
`
`55.
`
`LLC willfully intended to trade on the recognition of the No-Moo mark and
`
`cause dilution of such famous mark.
`
`COUNT IV
`
`(DECLARATORY RELIEF UNDER 28 U.S.C. §2201
`
`)
`
`56.
`
`Plaintiffs incorporate and reallege, as if fully set forth in this paragraph, the
`
`allegations of the foregoing paragraphs.
`
`
`
`12
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 13 of 15
`
`57.
`
`Plaintiffs maintain that the use by LLC of the mark “NoMoo” violates Sections
`
`43(a) and (c) of the Lanham Act.
`
`58.
`
`LLC denies that its use of the “NoMoo” violates the Lanham Act and asserts a
`
`continued right to use such name in the sale of kosher baked goods, including dairy-free
`
`cookies.
`
`59.
`
`An actual case or controversy exists with respect to the rights of Plaintiffs and
`
`LLC, and whether the use by LLC of the mark “NoMoo” violates Plaintiffs’ rights under
`
`federal law.
`
`PRAYERS FOR RELIEF
`
`WHEREFORE, Plaintiffs respectfully requests that this Court:
`
`A.
`
`Order the cancelation on the Principal Register of the United States Patent &
`
`Trademark Office of the trademark “NoMoo” (Registration No. 4,692,455) in International
`
`Trademark Class 30 for kosher bakery products, and certify the cancelation to the Director for
`
`appropriate entry upon the records of the Patent and Trademark Office, under Sections 32 and
`
`37, 15 U.S.C. §§ 1114, 1119.
`
`B.
`
`Enter judgment that Defendant has, without the consent of Plaintiffs, used in
`
`commerce a colorable imitation of the No-Moo mark in connection with the sale, offering for
`
`sale, distribution, and advertising of non-dairy/dairy-free baked dessert products which such
`
`use is likely to cause confusion, or to cause mistake, or to deceive in violation of 15 U.S.C.
`
`§1114(1)(a).
`
`C.
`
`Enter judgment that Defendant has used false designations of origin, false
`
`descriptions, and false representations, in bad faith and in willful violation of 15 U.S.C. §
`
`
`
`13
`
`

`
`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 14 of 15
`
`1125(a); has injured the business reputation of the Plaintiffs and diluted the distinctive quality
`
`of Ms. Herrell’s federally registered and famous mark; and has otherwise injured Plaintiffs by
`
`promoting, advertising, and selling dairy-free cookies using a colorable imitation of the No-
`
`Moo Mark in willful violation of 15 U.S.C. § 1125(c)(1).
`
`D.
`
`Enter judgment declaring that Defendant NoMoo LLC’s use of the NoMoo
`
`Mark violates Plaintiffs’ rights under the Sections 43(a) and (c) of the Lanham Act, 15 U.S.C.
`
`§§ 1125(a), (c).
`
`E.
`
`Issue a preliminary injunction and thereafter a permanent injunction under 15
`
`U.S.C. §1116(a) ordering Defendant NoMoo LLC and its respective officers, agents, servants,
`
`employees, and attorneys, and those persons in active concert with them, to refrain from using,
`
`authorizing or employing the name or mark “No-Moo” or any colorable imitation of the No-
`
`Moo Mark, including without limitation the use of the mark “NoMoo”, as will be requested in
`
`a separate motion, and to file with the court and serve on the Plaintiffs within thirty (30) days
`
`of service on Defendant NoMoo LLC of such injunction a report in writing under oath setting
`
`forth in detail the manner and form in which Defendant has complied with the injunction;
`
`F.
`
`Award damages to the Plaintiffs as provided under 15 U.S.C. §1117(a),
`
`including the Defendants’ profits, three times the actual damages sustained by Plaintiffs, and
`
`reasonable attorneys fees to the Plaintiffs as prevailing party, and/or if the court shall find that
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`the amount of recovery based on profits is either inadequate or excessive, to award in its
`
`discretion enter judgment for such sum as the court shall find to be just, according to the
`
`circumstances of this case, and the costs of this action;
`
`
`
`14
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`

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`Case 3:16-cv-11553-KAR Document 1 Filed 07/28/16 Page 15 of 15
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`G.
`
`Issue an order under 15 U.S.C. §1118 ordering that all labels, signs, prints,
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`packages, wrappers, receptacles, and advertisements in the possession of Defendants bearing
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`the registered marks or colorable imitation of such marks, shall be delivered and destroyed;
`
`H.
`
`Require the Defendant to pay Plaintiffs both the costs of this action and
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`reasonable attorney’s fees; and
`
`I.
`
`Grant such other and further relief as this Court deems appropriate.
`
`PLAINTIFFS DEMAND A JURY TRIAL ON ALL ISSUES
`THAT ARE TRIABLE BY JURY AS A MATTER OF RIGHT
`
`Respectfully submitted,
`
`Judith U. Herrell, Herrell’s Ice
`Cream Corp., and Herrell’s
`Development Corp.
`
`Plaintiffs
`
` /Lindsey M. Straus/
`Lindsey M. Straus, Esquire
`BBO #554181
`Cummings Franchise Law, PC
`Two Main Street
`Suite 300
`Stoneham, MA 02180
`(781) 307-5680
`lstraus@cummingsfranchiselaw.com
`
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`Dated: July 22, 2016
`
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`15
`
`

`
`JS 44 (Rev. 0(cid:26)/16)
`
`Case 3:16-cv-11553-KAR Document 1-1 Filed 07/28/16 Page 1 of 2
`CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet.
`(SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`
`I. (a) PLAINTIFFS
`
`Judy U. Herrell, Herrell's Ice Cream Corp., and Herrell's Development
`Corp.
`(b) County of Residence of First Listed Plaintiff
`Hampshire
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`DEFENDANTS
`
`Nomoo, LLC
`
`County of Residence of First Listed Defendant
`
`Bucks
`(IN U.S. PLAINTIFF CASES ONLY)
`
`NOTE:
`
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Lindsey M. Straus, Esq., Cummings Franchise Law, P.C., Two Main
`Street, Suite 300, Stoneham, MA 02180, (508) 896-8008 (direct dial),
`(781) 481-9100 (main office number)
`
` Attorneys (If Known)
`Timothy D. Pecsenye, Esq. Blank Rome LLP, One Logan Square,
`18th and Cherry Streets, Philadelphia, PA 19108 (215) 569-5619
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`(cid:117) 1 U.S. Government
`Plaintiff
`
`(cid:117) 3 Federal Question
`(U.S. Government Not a Party)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF DEF
`PTF
` DEF
`(cid:117) 1
`(cid:117) 1
`(cid:117) 4
`(cid:117) 4
`
`Citizen of This State
`
`Incorporated or Principal Place
` of Business In This State
`
`(cid:117) 2 U.S. Government
`Defendant
`
`(cid:117) 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`(cid:117) 2
`
`(cid:117) 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`(cid:117) 5
`
`(cid:117) 5
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
`
`Citizen or Subject of a
` Foreign Country
`
`(cid:117) 3
`
`(cid:117) 3
`
`Foreign Nation
`
`(cid:117) 6
`
`(cid:117) 6
`
`FORFEITURE/PENALTY
`
`BANKRUPTCY
`
`OTHER STATUTES
`
`(cid:117) 422 Appeal 28 USC 158
`(cid:117) 625 Drug Related Seizure
` of Property 21 USC 881 (cid:117) 423 Withdrawal
`(cid:117) 690 Other
` 28 USC 157
`
`PROPERTY RIGHTS
`(cid:117) 820 Copyrights
`(cid:117) 830 Patent
`(cid:117) 840 Trademark
`
`SOCIAL SECURITY
`(cid:117) 861 HIA (1395ff)
`(cid:117) 862 Black Lung (923)
`(cid:117) 863 DIWC/DIWW (405(g))
`(cid:117) 864 SSID Title XVI
`(cid:117) 865 RSI (405(g))
`
`FEDERAL TAX SUITS
`(cid:117) 870 Taxes (U.S. Plaintiff
` or Defendant)
`(cid:117) 871 IRS—Third Party
` 26 USC 7609
`
`(cid:117) 375 False Claims Act
`(cid:117) 376 Qui Tam (31 USC
` 3729(a))
`(cid:117) 400 State Reapportionment
`(cid:117) 410 Antitrust
`(cid:117) 430 Banks and Banking
`(cid:117) 450 Commerce
`(cid:117) 460 Deportation
`(cid:117) 470 Racketeer Influenced and
` Corrupt Organizations
`(cid:117) 480 Consumer Credit
`(cid:117) 490 Cable/Sat TV
`(cid:117) 850 Securities/Commodities/
` Exchange
`(cid:117) 890 Other Statutory Actions
`(cid:117) 891 Agricultural Acts
`(cid:117) 893 Environmental Matters
`(cid:117) 895 Freedom of Information
` Act
`(cid:117) 896 Arbitration
`(cid:117) 899 Administrative Procedure
` Act/Review or Appeal of
` Agency Decision
`(cid:117) 950 Constitutionality of
` State Statutes
`
`(cid:117) 110 Insurance
`PERSONAL INJURY
` PERSONAL INJURY
`(cid:117) 365 Personal Injury -
`(cid:117) 310 Airplane
`(cid:117) 120 Marine
`(cid:117) 315 Airplane Product
`(cid:117) 130 Miller Act
` Product Liability
`(cid:117) 367 Health Care/
`(cid:117) 140 Negotiable Instrument
` Liability
`(cid:117) 150 Recovery of Overpayment (cid:117) 320 Assault, Libel &
` Pharmaceutical
` Personal Injury
` & Enforcement of Judgment
` Slander
`(cid:117) 151 Medicare Act
`(cid:117) 330 Federal Employers’
` Product Liability
`(cid:117) 368 Asbestos Personal
`(cid:117) 152 Recovery of Defaulted
` Liability
`(cid:117) 340 Marine
` Injury Product
` Student Loans
`(cid:117) 345 Marine Product
`LABOR
` Liability
` (Excludes Veterans)
` PERSONAL PROPERTY (cid:117) 710 Fair Labor Standards
`(cid:117) 153 Recovery of Overpayment
` Liability
`(cid:117) 370 Other Fraud
`(cid:117) 350 Motor Vehicle
` Act
` of Veteran’s Benefits
`(cid:117) 371 Truth in Lending
`(cid:117) 720 Labor/Management
`(cid:117) 160 Stockholders’ Suits
`(cid:117) 355 Motor Vehicle
`(cid:117) 380 Other Personal
`(cid:117) 190 Other Contract
` Relations
` Product Liability
`(cid:117) 740 Railway Labor Act
`(cid:117) 195 Contract Product Liability (cid:117) 360 Other Personal
`Property Damage
`(cid:117) 385 Property Damage
`(cid:117) 751 Family and Medical
`(cid:117) 196 Franchise
` Injury
`(cid:117) 362 Personal Injury -
` Product Liability
` Leave Act
`(cid:117) 790 Other Labor Litigation
` Medical Malpractice
` PRISONER PETITIONS (cid:117) 791 Employee Retirement
` CIVIL RIGHTS
`(cid:117) 440 Other Civil Rights
`Habeas Corpus:
` Income Security Act
`(cid:117) 463 Alien Detainee
`(cid:117) 441 Voting
`(cid:117) 510 Motions to Vacate
`(cid:117) 442 Employment
`(cid:117) 443 Housing/
` Sentence
`(cid:117) 530 General
` Accommodations
`(cid:117) 445 Amer. w/Disabilities - (cid:117) 535 Death Penalty
`Other:
` Employment
`(cid:117) 446 Amer. w/Disabilities - (cid:117) 540 Mandamus & Other
`(cid:117) 550 Civil Rights
` Other
`(cid:117) 448 Education
`(cid:117) 555 Prison Condition
`(cid:117) 560 Civil Detainee -
` Conditions of
` Confinement
`
` REAL PROPERTY
`(cid:117) 210 Land Condemnation
`(cid:117) 220 Foreclosure
`(cid:117) 230 Rent Lease & Ejectment
`(cid:117) 240 Torts to Land
`(cid:117) 245 Tort Product Liability
`(cid:117) 290 All Other Real Property
`
`IMMIGRATION
`(cid:117) 462 Naturalization Application
`(cid:117) 465 Other Immigration
` Actions
`
`V. ORIGIN (Place an “X” in One Box Only)
`(cid:117) 1 Original
`(cid:117) 2 Removed from
`Proceeding
`State Court
`
`(cid:117) 3 Remanded from
`Appellate Court
`
`(cid:117) 4 Reinstated or
`Reopened
`
`(cid:117) 5 Transferred from
`Another District
`(specify)
`
`(cid:117) 6 Multidistrict
`Litigation -
`Transfer
`
`(cid:117) 8 Multidistrict
` Litigation -
`(cid:3)Direct File
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
`COMPLAINT:
`VIII. RELATED CASE(S)
`IF ANY
`
`DATE
`
`FOR OFFICE USE ONLY
`
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`15 U.S.C 1051 et. seq.
`Brief description of cause:
`Trademark infringement, cancellation of trademark, and trademark dilution
`(cid:117) CHECK IF THIS IS A CLASS ACTION
`DEMAND $
`UNDER RULE 23, F.R.Cv.P.
`
`CHECK YES only if demanded in complaint:
`(cid:117) Yes
`(cid:117) No
`
`JURY DEMAND:
`
`(See instructions):
`
`JUDGE
`
`DOCKET NUMBER
`
`SIGNATURE OF ATTORNEY OF RECORD
`/Lindsey M. Straus/
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`

`
`JS 44 Reverse (Rev. 0(cid:26)/16)
`
`Case 3:16-cv-11553-KAR Document 1-1 Filed 07/28/16 Page 2 of 2
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
`required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
`required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
`Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
`
`I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
`then t