Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA812434
`
`Filing date:
`
`04/09/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92065756
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Defendant
`CocoVaa, LLC
`
`COCOVAA LLC
`1 SHERMAN TERRACE 102B
`MADISON, WI 53704
`UNITED STATES
`info@cocovaa.com, syovata.e@gmail.com
`
`Motion to Suspend for Civil Action
`
`Syovata K. Edari
`
`info@cocovaa.com, syovata.e@gmail.com
`
`/Syovata K. Edari/
`
`04/09/2017
`
`Attachments
`
`TTAB--170409--Motion_for_Stay.pdf(2154108 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No.: 92065756
`
`
`Mark:
`COCOVAA
`
`
`Reg. No.:
`5160782
`
`
`
`
`
`
`
`
`
`
`
`
`Mars, Incorporated,
`
`
`
`Plaintiff / Petitioner,
`
`
`
`CocoVaa, LLC
`
`
`
`
`v.
`
`
`
`Defendant / Registrant
`
`
`MOTION TO SUSPEND CANCELLATION PROCEEDINGS
`PENDING CIVIL LITIGATION
`(37 CFR §2.117; TBMP 510 et seq.)
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`Registrant CocoVaa LLC ("CocoVaa"), by and through its managing member, Syovata
`
`Edari, hereby moves the Board to suspend the present proceeding pursuant to 37 CFR §2.117(a)
`
`and TBMP 510.02(a), pending the outcome of litigation pending in the United States District Court
`
`for the Eastern District of Virginia. In support of this motion, CocoVaa states as follows:
`
`1.
`
`On March 24, 2017, Petitioner Mars commenced an action in the United States District
`
`Court for the Eastern District of Virginia entitled Mars, Incorporated v. CocoVaa, LLC
`
`and Syovata K. Edari, Case No. 1:17-cv-00346-LO-JFA (the “District Court Action”). A
`
`copy of the complaint is attached as EXHIBIT A.
`
`2.
`
`As stated at paragraph 1 of the complaint, Mars’ District Court Action is “an action for
`
`trademark infringement, false designation of origin, unfair competition, cancellation of a
`
`federal trademark registration, and related claims under the United States Trademark
`
`(Lanham) Act of 1946, 15 U.S.C. §§ 1051 et seq. (as amended), and Virginia common law.
`
`The Complaint arises from Defendants’ unauthorized adoption, use, and registration of the
`
`CERTIFICATE OF TRANSMISSION / CERTIFICATE OF SERVICE
`I hereby certify as of the date set out below, this document has been (1) transmitted electronically to the Trademark
`Trial and Appeal Board via the ESTTA electronic filing system, and (2) served on the attorney for Petitioner at
`nytrademarks@gtlaw.com and nodam@gtlaw.com pursuant to 37 CFR §2.119.
`
`April 9, 2017
`
`Date of Signature
`
`/Syovata K. Edari/
`
`Syovata K. Edari
`
`
`
`April 9, 2017
`Date of Deposit
`
`
`
`
`
`

`

`designation ‘COCOVAA,’ which is virtually identical to Plaintiff’s COCOAVIA
`
`trademark.” (Underline added.)
`
`3.
`
`Mars’ complaint alleges it is damaged by my registration, which is the subject of this
`
`cancellation proceeding, and requests that the District Court cancel my registration (¶¶73-
`
`77 of Mars’ Fourth Cause of Action, page 18; ¶2 of Mars’ Prayer for Relief, page 20).
`
`4.
`
`Mars additionally alleges violations of 15 USC §1114(1),15 USC §1125(a), common law
`
`trademark infringement, and common-law unfair competition. (¶¶52-72, pages 15-18.)
`
`Mars requests relief including, but not limited to, a preliminary and permanent injunction
`
`preventing me from using my registered mark. (¶1, pages 19-20.)
`
`5.
`
`Mars’ March 29, 2017 Petition for Cancellation, which initiated the present cancellation
`
`proceeding, was filed subsequent to Mars’ District Court Action, and is redundant with
`
`Mars’ District Court Action insofar as it seeks cancellation of my registration – relief which
`
`Mars is already seeking in the District Court Action.
`
`6.
`
`The outcome of the District Court Action involves matters outside the jurisdiction of the
`
`Board, and will ultimately resolve the question presented to the Board in the present
`
`cancellation proceeding.
`
`To preserve the resources of both the Board and the parties, CocoVaa requests that the Board
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`suspend the present cancellation proceeding pending final judgment in the District Court Action,
`
`pursuant to TBMP 510.02(a) (“Unless there are unusual circumstances, the Board will suspend
`
`proceedings in the case before it if the final determination of the other proceeding may have a
`
`bearing on the issues before the Board”).
`
`For the Registrant,
`
`
`
`
`
`April 9, 2017
`/Syovata K. Edari/
`
`Syovata K. Edari
`Date
`Managing Member / Principal, CocoVaa LLC
`
`1 Sherman Terrace 102B
`
`Madison, WI 53704
`
`Tel.: 414-779-0074
`
`Email: info@cocovaa.com / syovata.e@gmail.com
`
`
`
`
`
`2
`
`

`

`EXHIBIT A
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 1 of 21 PageID# 1
`
` UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
`
`Case No. ______________
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`MARS, INCORPORATED
`
`
`6885 Elm Street
`
`
`
`McLean, Virginia 22101
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`COCOVAA, LLC
`1 Sherman Terrace, 102b
`
`
`Madison, Wisconsin 53704,
`
`
`
`
`
`
`
`
`and
`
`
`
`
`
`
`
`
`
`
`
`SYOVATA K. EDARI
`
`
`1 Sherman Terrace, 102b
`
`
`Madison, Wisconsin 53704
`
`
`
`
`
`
`
`
`Defendants.
`
`
`
`
`
`
`
`
`
`COMPLAINT
`
`Plaintiff Mars, Incorporated (“Plaintiff” or “Mars”) brings this action against Defendants
`
`
`
`CocoVaa, LLC and Syovata K. Edari (collectively referred to herein as “Defendants”), and
`
`alleges as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for trademark infringement, false designation of origin, unfair
`
`competition, cancellation of a federal trademark registration, and related claims under the United
`
`States Trademark (Lanham) Act of 1946, 15 U.S.C. §§ 1051 et seq. (as amended), and Virginia
`
`common law. The Complaint arises from Defendants’ unauthorized adoption, use, and
`
`registration of the designation “COCOVAA,” which is virtually identical to Plaintiff’s
`
`
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 2 of 21 PageID# 2
`
`COCOAVIA trademark. Defendants’ use and registration of the COCOVAA name and mark for
`
`goods highly related to goods offered by Plaintiff under the COCOAVIA trademark will
`
`inevitably confuse, mislead and deceive the general public into believing that Plaintiff
`
`manufactures, sells, sponsors, approves or licenses Defendants’ cocoa-based chocolate products.
`
`THE PARTIES
`
`2.
`
`Plaintiff Mars, Incorporated is a corporation organized and existing under the
`
`laws of the State of Delaware with a principal place of business at 6885 Elm Street, McLean,
`
`Virginia 22101.
`
`3.
`
`Upon information and belief, Defendant CocoVaa LLC is a limited liability
`
`company organized and existing under the laws of the State of Wisconsin with a principal place
`
`of business at 1 Sherman Terrace, 102b, Madison, Wisconsin 53704.
`
`4.
`
`Upon information and belief, Defendant Syovata K. Edari is an individual and
`
`citizen of the State of Wisconsin, who owns Defendant CocoVaa LLC and is a registered agent
`
`thereof, with a residence at 1 Sherman Terrace, 102b, Madison, Wisconsin 53704.
`
`
`
`JURISDICTION AND VENUE
`
`5.
`
` This Court has jurisdiction over the subject matter of this action under Section 39
`
`of the Lanham Act, 15 U.S.C. § 1121, as well as 28 U.S.C. §§ 1331, 1332, and 1338, and the
`
`doctrine of supplemental jurisdiction, 28 U.S.C. § 1367. The amount in controversy exceeds the
`
`sum or value of $75,000, exclusive of interest and costs, and the parties are of diverse
`
`citizenship.
`
`6.
`
`Personal jurisdiction over Defendants is proper because Defendants solicit,
`
`transact, and do business within the Commonwealth of Virginia and within this District, and the
`
`claims in this action arise out of such business in this District.
`
`2
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 3 of 21 PageID# 3
`
`7.
`
`Defendants have caused and are causing injury within this District by advertising,
`
`distributing, and selling products bearing the infringing COCOVAA trademark in this District.
`
`8.
`
`Venue is proper in this District under 28 U.S.C § 1391(b) because Plaintiff resides
`
`within this District and a substantial part of the events giving rise to the claims alleged herein
`
`occurred in this District.
`
`PLAINTIFF’S TRADEMARK RIGHTS IN ITS COCOAVIA® TRADEMARK
`
`Plaintiff Mars, Incorporated is a global manufacturer of numerous brands of
`
`9.
`
`petcare, chocolate, food and drink products, which operates in six (6) business segments:
`
`Petcare, Chocolate, Wrigley, Food, Drinks, and Symbioscience.
`
`10.
`
`Through its Symbioscience business segment, Mars has been pursuing extensive
`
`research in the area of cocoa flavanols, the beneficial phytonutrients found naturally in cocoa, for
`
`more than 20 years.
`
`11.
`
`As a result of its extensive research into the area of cocoa flavanols, Mars has
`
`developed, marketed, and sold the industry’s leading line of cocoa extract supplements,
`
`delivering the highest concentration of cocoa flavanols available, under the CocoaVia®
`
`trademark.
`
`12.
`
`The real health benefits of chocolate come from cocoa flavanols and Mars’
`
`CocoaVia® daily supplement delivers the highest concentration of cocoa flavanols in a cocoa
`
`extract supplement. Numerous scientific studies have demonstrated that these flavanols promote
`
`healthy blood flow from head to toe.
`
`13. Mars introduced the CocoaVia® brand in 2003, which at the time was the first
`
`functional food product launched by the company. CocoaVia® featured a line of dark chocolate
`
`bars and chews that contained cocoa flavanols and plant sterols.
`
`3
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 4 of 21 PageID# 4
`
`14.
`
`Since the initial launch in 2003, the CocoaVia® brand grew its portfolio of
`
`products to include milk chocolate, granola bars, chocolate covered almonds, and ready-to-drink
`
`beverages. Sample images of the CocoaVia® chocolate and chocolate-based products are shown
`
`below:
`
`
`
`4
`
`
`
`
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 5 of 21 PageID# 5
`
`
`
`
`
`15.
`
`Through substantial financial investment and effort, Mars built considerable
`
`goodwill and a reputation for the highest quality chocolate products containing cocoa flavanols.
`
`Building such goodwill and reputation of the CocoaVia® name and mark, Mars launched the
`
`CocoaVia® cocoa extract supplements and related products in 2010.
`
`16. Mars’ CocoaVia® supplements are sold as capsules or in a powdered stick-pack
`
`form, which is available in several flavors, including the “unsweetened dark chocolate” and
`
`“sweetened dark chocolate” flavors. Sample images of Mars’ CocoaVia® products are shown
`
`below:
`
`5
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 6 of 21 PageID# 6
`
`
`
`
`
`
`
`17. Mars owns and operates its CocoaVia® brand web site at www.cocoavia.com,
`
`where CocoaVia® cocoa extract supplement products are sold. In addition to the CocoaVia®
`
`products, Mars has been selling for many years, and currently offers for sale, its dark chocolate-
`
`based snack squares called goodnessknows® on the same CocoaVia® web site, as shown
`
`below. The goodnessknows® chocolate-based snacks, which consist of dark chocolate made
`
`from specially processed cocoa beans to preserve naturally occurring cocoa flavanols, are closely
`
`associated with the CocoaVia® brand for the health benefits provided by cocoa flavanols.
`
`6
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 7 of 21 PageID# 7
`
`
`18. Mars has protected its valuable rights in and to the CocoaVia® trademark by
`
`
`
`filing for and obtaining U.S. Trademark Registration No. 4,179,465 for the mark COCOAVIA,
`
`covering “dietary and nutritional supplements, powdered nutritional supplement drink mix,
`
`powdered dietary supplement drink mix, and nutritionally fortified beverage mix, all made in
`
`7
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 8 of 21 PageID# 8
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`significant part of cocoa” in Class 5 (the “COCOAVIA® Goods”), which was registered on July
`
`24, 2012 (the “COCOAVIA® Mark”).
`
`19. Mars’ registration provides prima facie evidence of the validity of the
`
`COCOAVIA® Mark and of Mars’ exclusive right to use its COCOAVIA® Mark in commerce
`
`pursuant to 15 U.S.C. § 1115(b), and the registration provides nationwide constructive notice of
`
`Mars’ exclusive rights pursuant to 15 U.S.C. § 1072. A copy of the registration certificate is
`
`attached as Exhibit A.
`
`20.
`
`The COCOAVIA® Mark is immediately recognizable to the ordinary consumer
`
`and distinguishes the COCOAVIA® cocoa extract supplements from other cocoa-based
`
`supplements.
`
`21.
`
`The COCOAVIA® Mark is a strong mark and is entitled to the highest degree of
`
`protection under the law.
`
`22.
`
`The COCOAVIA® Mark was first used in U.S. commerce on or about October
`
`2010 in connection with the COCOAVIA Goods, and since the date of first use, Mars has
`
`continuously used the COCOAVIA® Mark in connection with the COCOAVIA Goods.
`
`23. Mars prominently and consistently displays its distinctive COCOAVIA® Mark
`
`on the packaging for the COCOAVIA® Goods, as shown in Paragraph 16 above.
`
`24.
`
`Cocoa extract supplement products bearing the COCOAVIA® Mark have been
`
`sold throughout the United States in various locations and trade channels, including health food
`
`specialty retailers, natural and grocery retailers, drug store retailers, Internet websites and online
`
`stores.
`
`25. Mars has advertised and promoted, and continues to advertise and promote, its
`
`COCOAVIA® Goods bearing the COCOAVIA® Mark in a variety of media throughout the
`
`8
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 9 of 21 PageID# 9
`
`United States, including but not limited to national print advertisements, e-mails, e-newsletters,
`
`digital, search, social, and through paid spokespersons and key opinion leaders.
`
`26. Mars has also advertised and promoted, and continues to advertise, market and
`
`promote the COCOAVIA® Goods bearing the COCOAVIA® Mark via its web site at
`
`<www.cocoavia.com>, which averaged approximately 120,000 page views a month in 2016, of
`
`which approximately more than 56,000 were unique visitors per month in 2016.
`
`27.
`
`Since the introduction of the COCOAVIA® cocoa extract supplements in 2010,
`
`Plaintiff has expended substantially large sums of money to advertise and promote the
`
`COCOAVIA® Goods in a variety of media throughout the United States by continuously using
`
`and displaying the COCOAVIA® Mark to distinguish the COCOAVIA® Goods from those
`
`offered by others.
`
`28. Mars spends millions of dollars annually in developing and promoting its line of
`
`COCOAVIA® cocoa extract supplements. COCOAVIA® supplements have been widely
`
`advertised and sold online, through general retail stores and specialty health foods stores,
`
`throughout the United States with millions of dollars in sales per year.
`
`29.
`
`The COCOAVIA® Mark and the COCOAVIA® Goods have received global
`
`press and media coverage. News stories, features and posts have appeared in print, online, and in
`
`broadcast television, including but not limited to the TODAY Show, CBS New York, The
`
`Huffington Post, Men’s Health, Boston Globe, Houston Chronicle, The Seattle Times, Chicago
`
`Business Journal, NBC Right Now, Drug Store News, Market Watch, Washington Business
`
`Journal, The Street, Yahoo! Finance, Reuters, iHeart Radio, and WTOP radio in the United
`
`States. Internationally, the CocoaVia® brand has received coverage in media outlets in Europe
`
`9
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 10 of 21 PageID# 10
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`such as the Daily Express, Food Business Review, Just-Food.com, NutraIngredients.com,
`
`Confectionery News, FoodBev, Royal Candy Company, and Lebensmittel Zeitung.
`
`30.
`
`As a result of such advertising and promotion, as well as the uniquely high
`
`concentration of cocoa flavanols in Mars’ cocoa supplements, Mars’ cocoa extract supplements
`
`bearing the COCOAVIA® Mark are the market leaders in their category and enjoy a favorable
`
`reputation among consumers throughout the United States. In particular, the Unsweetened Dark
`
`Chocolate flavor is the best-selling of the COCOAVIA® powder stick supplements. As a result
`
`of its widespread recognition and reputation for excellence, consumers have come to associate
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`the COCOAVIA® Mark exclusively with Mars. Together with its reputation for excellence,
`
`Mars enjoys valuable goodwill in the COCOAVIA® Mark.
`
`DEFENDANTS’ WRONGFUL AND INFRINGING CONDUCT
`
`31. Without authorization from Plaintiff, and despite Plaintiff’s prior use of and rights
`
`in the COCOAVIA® Mark, Defendants are manufacturing, and recently began offering
`
`nationwide for sale, selling, advertising, promoting, and distributing, within this judicial district
`
`and in interstate commerce, cocoa-based chocolate products under the name and mark
`
`COCOVAA, thereby infringing Plaintiff’s COCOAVIA® Mark and creating a likelihood of
`
`confusion, mistake, and deception among consumers as to source, sponsorship, or affiliation.
`
`32.
`
`On information and belief, Defendant Syovata K. Edari (“Defendant Edari”)
`
`formed a limited liability company called “CocoVaa LLC” in July 2016 and launched a line of
`
`chocolate products under the “CocoVaa” name and trademark (the “Infringing COCOVAA
`
`Mark”), which is virtually identical to the COCOAVIA® Mark.
`
`10
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 11 of 21 PageID# 11
`
`33.
`
`Upon information and belief, in or about April 2015, Defendant Edari launched
`
`and began selling a line of cocoa-based chocolate products under the name “Gilded Artisan
`
`Chocolates.”
`
`34.
`
`Upon information and belief, in or about June 2016, for some reason, Defendant
`
`Edari ceased using the “Gilded Artisan Chocolates” name and adopted the “CocoVaa” name and
`
`mark, thereby commencing sale of cocoa-based chocolate products under the Infringing
`
`COCOVAA Mark.
`
`35.
`
`On August 5, 2016, Defendants filed an application to register with the United
`
`States Patent and Trademark Office (“USPTO”) the mark COCOVAA, Serial No. 87/129,092 for
`
`“Candy; Caramels; Chocolate candies; Chocolate fondue; Chocolate mousse; Toffee; Brittle;
`
`Chocolate confections, namely, bonbons, bars, barks, chocolate covered nuts, chocolate covered
`
`coffee beans, drinking chocolate; Confectioneries, namely, snack foods, namely, chocolate;
`
`Filled chocolate,” (“Defendants’ Goods”) with an alleged first use in commerce date of June 1,
`
`2016, which is prior to the date on which Defendant CocoVaa, LLC was legally formed. Said
`
`application matured to registration on March 14, 2017 and has been assigned U.S. Trademark
`
`Registration No. 5,160,782.
`
`36.
`
`All products sold by Defendants are marketed, promoted and sold under the
`
`Infringing COCOVAA Mark.
`
`37.
`
`The
`
`Infringing COCOVAA Mark
`
`is confusingly similar
`
`to Plaintiff’s
`
`COCOAVIA® Mark in appearance, sound, meaning, and commercial impression. Defendants
`
`prominently display the Infringing COCOVAA Mark on their website and on their packaging as
`
`shown below:
`
`11
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 12 of 21 PageID# 12
`
`
`
`
`
`
`Plaintiff first became aware of the Infringing COCOVAA Mark in late August,
`
`
`
`38.
`
`2016 while reviewing trademark watch notices for Plaintiff’s COCOAVIA® Mark.
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`39.
`
`After careful consideration, on September 9, 2016, Mars sent a letter to
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`Defendants notifying them of Mars’ ownership of the COCOAVIA® Mark, coupled with Mars’
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`extensive advertising and marketing. Plaintiff requested that Defendants immediately and
`
`12
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 13 of 21 PageID# 13
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`voluntarily cease and desist from all current use and intended future use and sale of products
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`bearing the Infringing COCOVAA Mark and voluntarily withdraw their trademark application
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`for the Infringing COCOVAA Mark. A copy of this letter is attached hereto as Exhibit B and
`
`incorporated herein by reference.
`
`40. Mars received a response from Defendants’ counsel via email on September 13,
`
`2016, declining Plaintiff’s requests. A copy of this email is attached hereto as Exhibit C and
`
`incorporated herein by reference.
`
`41.
`
`Upon information and belief, at the time Plaintiff and Defendants exchanged the
`
`above referenced correspondence, Defendants were selling their COCOVAA Goods exclusively
`
`in the State of Wisconsin.
`
`42.
`
`Despite having received notification from Plaintiff that their use of the Infringing
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`COCOVAA Mark constitutes an infringement of Plaintiff’s valuable rights in the COCOAVIA®
`
`Mark, Defendants have nevertheless expanded, and continue to expand, sales of their products
`
`bearing the Infringing COCOVAA Mark throughout the United States.
`
`43.
`
`Upon information and belief, at least as early as January 2017, Defendants’
`
`COCOVAA website located at www.cocovaa.com, was updated to indicate that online ordering
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`of products bearing the Infringing COCOVAA Mark would be available starting Valentine’s Day
`
`2017.
`
`44.
`
`Upon information and belief, as of the date of this filing, while Defendants did not
`
`launch their online ordering site by Valentine’s Day 2017, Defendants are now accepting phone
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`orders for shipment of COCOVAA Goods nationwide.
`
`45.
`
`Defendants are using the Infringing COCOVAA Mark in connection with cocoa-
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`based chocolate products for human consumption, and thus the goods offered under the
`
`13
`
`

`

`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 14 of 21 PageID# 14
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`Infringing COCOVAA mark are highly similar and/or related to Plaintiff’s products bearing the
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`COCOAVIA® Mark.
`
`46.
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`Defendants’ production, marketing, distribution and sale of Defendants’ Goods
`
`bearing the Infringing COCOVAA Mark is likely to confuse and deceive consumers, and harm
`
`Plaintiff’s substantial reputation and goodwill as symbolized by the COCOAVIA® Mark.
`
`47.
`
`Defendants’ infringement of Mars’ COCOAVIA® Mark is willful, deliberate and
`
`intentional.
`
`48.
`
`Defendants are not affiliated with or sponsored by Plaintiff, and have not been
`
`authorized by Plaintiff to use its distinctive COCOAVIA® Mark or any mark confusingly
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`similar thereto, including the Infringing COCOVAA Mark, to identify their products.
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`49.
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`Defendants’ adoption and use of the Infringing COCOVAA Mark for its line of
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`Defendants’ Goods is likely to cause confusion, mistake or deception among purchasers and the
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`consuming public as to the source, origin or sponsorship of Defendants’ Goods. A substantial
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`number of actual and potential purchasers and consumers, upon encountering Defendants’ Goods
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`or advertising bearing Defendants’ Infringing COCOVAA Mark, are likely to mistakenly believe
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`that Defendants’ Goods originate with, or are licensed, approved, sponsored by, or otherwise
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`affiliated with or related to, Plaintiff’s COCOAVIA® Goods.
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`50.
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`Upon information and belief, Defendant Edari directed, authorized and approved
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`the actions of Defendants as alleged herein.
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`51.
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`Upon information and belief, Defendants plan to continue use of the Infringing
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`COCOVAA Mark in connection with the COCOVAA Goods, all to the damage and detriment of
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`Plaintiff’s reputation, goodwill and sales.
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`14
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`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 15 of 21 PageID# 15
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`FIRST CAUSE OF ACTION
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`(Trademark Infringement in Violation of 15 U.S.C. § 1114(1) / Lanham Act § 32(1))
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`Plaintiff repeats and realleges each and every allegation of fact above as if set
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`52.
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`forth herein.
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`53.
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` U.S. Trademark Registration No. 4,179,465 for the COCOAVIA® Mark is a
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`valid and subsisting federally registered trademark. By virtue of this registration, the
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`COCOAVIA® Mark is entitled to protection under the Lanham Act, 15 U.S.C. §§ 1051, et seq.
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`54.
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`Defendants’ use of the Infringing COCOVAA Mark is likely to cause confusion,
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`mistake, or deception as to the origin, sponsorship, or approval of Defendants’ cocoa-based
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`chocolate products in that the public is likely to believe that those products are provided by,
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`sponsored by, licensed by, affiliated, or associated with, or in some other way legitimately
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`connected to Plaintiff or its products offered under the COCOAVIA® Mark, in violation of
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`Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
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`55.
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` Defendants have continued their unlawful use of their Infringing COCOVAA
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`Mark despite receiving cease-and-desist demands from Mars and are willfully infringing Mars’
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`COCOVIA® Mark.
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`56.
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`Plaintiff has been damaged by the aforementioned acts in an amount to be
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`determined at trial.
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`57.
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`Defendants’ conduct, if it continues, will result in irreparable harm to Plaintiff
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`and, specifically, to the goodwill and reputation associated with the COCOAVIA® Mark, unless
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`such conduct is enjoined.
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`SECOND CAUSE OF ACTION
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` (False Designation of Origin, Passing Off and Unfair Competition
`Under 15 U.S.C. § 1125(a) / Lanham Act §43(a))
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`15
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`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 16 of 21 PageID# 16
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`
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`58.
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`Plaintiff repeats and realleges each and every allegation of fact above as if set
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`forth herein.
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`59. Without authorization from Plaintiff, Defendants have adopted and continue to
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`use the Infringing COCOVAA Mark in connection with the advertising and sale of goods in
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`commerce in such a manner to falsely designate the origin of Defendants’ products and confuse
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`the public by suggesting that those products are sponsored by or affiliated with Plaintiff, in
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`violation of 15 U.S.C. § 1125(a).
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`60.
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`Defendants’ acts have a substantial economic effect on interstate commerce
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`because goods bearing the Infringing COCOVAA Mark are advertised and sold in interstate
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`commerce, and because Plaintiff’s goods bearing the COCOAVIA® Mark are also advertised
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`and sold in interstate commerce.
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`61.
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`Defendants’ aforesaid acts are in violation of Section 43(a)(1)(A) of the Lanham
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`Act, 15 U.S.C. § 1125(a) and Defendants’ use of a trademark identical or confusingly similar to
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`Plaintiff’s COCOAVIA® Marks for highly similar goods constitutes a false designation of origin
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`and unfair competition.
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`62.
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`As a direct and proximate result of Defendants’ conduct, Plaintiff has suffered
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`damages in an amount to be proved at trial.
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`63.
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`Plaintiff has no adequate remedy at law. If Defendants’ activities are not enjoined,
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`Plaintiff will continue to suffer irreparable harm and injury to its goodwill and reputation.
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`THIRD CAUSE OF ACTION
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`(Common Law Trademark Infringement and Unfair Competition)
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`
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`64.
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`Plaintiff repeats and realleges each and every allegation of fact above as if set
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`forth herein.
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`16
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`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 17 of 21 PageID# 17
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`65.
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`As a result of Plaintiff’s substantial advertising and promotional efforts for the
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`COCOAVIA® Mark, as well as its dedication to providing quality products under the
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`COCOAVIA® brand, Plaintiff has built up valuable goodwill in the COCOAVIA® Mark. As
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`such, the COCOAVIA® Mark has become associated with Plaintiff’s products, and has come to
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`symbolize the reputation for quality and excellence of Plaintiff’s COCOAVIA® products.
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`66. Without Plaintiff’s consent, Defendants have used and are using the Infringing
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`COCOVAA Mark, which is confusingly similar to the COCOAVIA® Mark, in connection with
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`the advertising and sale of goods in commerce in such a manner as to create a likelihood of
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`confusion among prospective purchasers, and to compete unfairly with Plaintiff.
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`67.
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`Defendants’ use of the Infringing COCOVAA Mark induces prospective
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`purchasers and others to believe, contrary to the fact, that the goods sold by Defendants are
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`rendered, sponsored, or otherwise approved by, or connected with, Plaintiff.
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`68.
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`Defendants have continued their unlawful conduct despite receiving cease-and-
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`desist demands from Mars.
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`69.
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`Defendants’ use of the Infringing COCOVAA Mark is confusingly similar to
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`Plaintiff’s COCOAVIA® Mark and is likely to deceive the public into believing, falsely, that
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`Defendants’ cocoa-based chocolate products are associated therewith, originate from or are
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`offered, sponsored or approved by Plaintiff, or that there is otherwise a connection between the
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`companies’ products and businesses. Defendants have unfairly competed with Plaintiff in
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`violation of Virginia common law and laws of States in which Defendants have sold their
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`products.
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`70.
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`Defendants’ unauthorized use of the Infringing COCOVAA Mark constitutes
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`trademark infringement of the COCOAVIA® Mark under the common law.
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`17
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`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 18 of 21 PageID# 18
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`71.
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`As a direct and proximate result of Defendants’ conduct, Plaintiff has suffered
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`damage to its goodwill and reputation as symbolized by its valuable COCOAVIA® Mark, and
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`other damages in an amount to be proved at trial.
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`72.
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`Plaintiff does not have an adequate remedy at law, and will continue to be
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`damaged by Defendants’ sale of products bearing the Infringing COCOVAA Mark. Unless
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`enjoined by this Court, Defendants will continue these acts of trademark infringement and unfair
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`competition, thereby deceiving the public and causing Plaintiff immediate and irreparable
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`damage entitling Plaintiff to remedies available under the common law.
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`FOURTH CAUSE OF ACTION
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`(Cancellation of U.S. Trademark Registration No. 5,160,782 under 15 U.S.C. § 1119)
`
`
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`73.
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`Plaintiff repeats and realleges each and every allegation of fact above as if set
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`forth herein.
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`74.
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`Plaintiff’s use of the COCOAVIA® Mark predates Defendants’ U.S. Trademark
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`Application (and resulting Registration No. 5,160,782) for and use of the Infringing COCOVAA
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`Mark.
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`75.
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`By virtue of such earlier use, Plaintiff’s rights in the COCOAVIA® Mark have
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`priority over the mark in Registration No. 5,160,782.
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`76.
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`Defendants’ registration and use of the Infringing COCOVAA Mark is likely to
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`cause confusion, mistake, or to deceive as to an affiliation, connection, or association between
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`Defendants and/or Defendants’ Goods, on the one hand, and Mars and the COCOAVIA®
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`Goods, on the other hand, or as to the origin, sponsorship, or approval of Defendants’ Goods by
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`Mars.
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`18
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`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 19 of 21 PageID# 19
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`77. Mars is being and will continue to be damaged by the registration of the
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`Infringing COCOVAA Mark unless this Court acts to cancel Registration No. 5,160,782
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`pursuant to Section 37 of the Lanham Act, as amended (15 U.S.C. § 1119).
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays for judgment against Defendants as follows:
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`
`
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`1.
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`Pursuant to 15 U.S.C. §1116 and the common law, that Defendants and each of
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`their agents, servants, employees, attorneys, officers, and all others in privity and acting in
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`concert with them be preliminarily and permanently enjoined and restrained from:
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`a.
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`using, registering, or applying to register the Infringing COCOVAA Mark
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`or any other trademark or trade name confusingly similar to Plaintiff’s
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`COCOAVIA® Mark, in connection with the sale, advertising, promotion,
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`or distribution of any cocoa-based food or drink products, or related
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`goods;
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`b.
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`using or authorizing to use in any manner any design, trademark, trade
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`name, or combination thereof which imitates, resembles, or suggests the
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`c.
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`d.
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`COCOAVIA® Mark;
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`otherwise infringing the COCOAVIA® Mark;
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`unfairly competing with Plaintiff, diluting the distinctiveness of Plaintiff’s
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`COCOAVIA® Mark, and otherwise
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`injuring Plaintiff’s business
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`reputation in any manner;
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`e.
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`publishing any telephone, directory or Internet listing using the Infringing
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`COCOVAA Mark and any other mark containing the term COCOVAA,
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`and any other mark confusingly similar to the COCOAVIA® Mark, in the
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`19
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`Case 1:17-cv-00346-LO-JFA Document 1 Filed 03/24/17 Page 20 of 21 PageID# 20
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`advertising, offering for sale and/or sale of any cocoa-based food or drink
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`products or related goods that may reasonably be encompassed by the
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`COCOAVIA® Mark, or which may constitute a n