Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA825483
`06/07/2017
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92065799
`
`Defendant
`Hillside Plastics, Inc.
`
`IRA J LEVY
`GOODWIN PROCTER LLP
`620 EIGHTH AVENUE
`NEW YORK, NY 10018
`UNITED STATES
`NY-TMAdmin@goodwinprocter.com
`Motion to Suspend for Civil Action
`
`Ira J. Levy
`
`ILevy@goodwinlaw.com, CBrownworth@goodwinlaw.com
`
`/Ira J. Levy/
`
`06/07/2017
`
`FINAL Hillside Motion to Suspend.pdf(39018 bytes )
`FINAL Exhibit A Hillside Motion to Suspend.pdf(1421022 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Cancellation No 92065799
`Registration No. 1605584
`
`
`SALBRO BOTTLE INC.
`
`
`Petitioner
`
`vs-
`
`HILLSIDE PLASTICS, INC.
`
`
`Registrant.
`
`
`
`
`
`Mark:
`
`
`
`REGISTRANT’S MOTION TO SUSPEND
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`Registrant, Hillside Plastics, Inc. (“Hillside”), through its counsel, hereby moves pursuant
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`to Trademark Rule 2.117(a) (37 C.F.R. § 2.117(a)) and Trademark Trial and Appeal Board
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`Manual of Procedure (“TBMP”) § 510.02(a) that the Board suspend proceedings in the above-
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`captioned cancellation, pending the disposition of an action pending in the United States District
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`Court for the District of Massachusetts concerning the same mark and that involves related issues
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`of law and fact. As grounds for this Motion, Hillside states as follows:
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`FACTS & HISTORY
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`As early as November of 2016 Registrant placed Petitioner, Salbro Bottle Inc. (“Salbro”)
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`on notice of Registrant’s rights in the subject registration. This notice was based, in part, on an
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`infringing product that was being offered for sale by a company by the name of Dominion &
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`Grimm, a customer of Salbro. Salbro and Dominion & Grimm responded through a single
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`counsel. On March 31, 2017, Hillside filed a Complaint and Demand for Jury Trial
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`(“Complaint”) in the United States District Court for the District of Massachusetts against
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`Dominion & Grimm USA, Inc. and Dominion & Grimm, Inc. (collectively, “D&G”). A copy of
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`Hillside’s Complaint is attached hereto as Exhibit A. In its Complaint, Hillside asserts claims for
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`

`

`injunctive and other relief under the Federal Trademark Act, 15 U.S.C. § 1051, et seq. (“Lanham
`
`Act”), particularly 15 U.S.C. §§ 1114 and 1125, for infringement of a registered trademark, false
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`designation of origin, false description or representation, trademark dilution and related unfair
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`competition. Ex. A ¶¶ 27-44. Hillside also asserts claims under state law for infringement and
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`unfair competition. Id. ¶¶ 45-53. Hillside’s claims arise out of D&G’s sale of blow-molded
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`plastic jugs alleged to bear Hillside’s Mark. See, e.g., id. ¶ 18. In particular, in its Complaint,
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`Hillside alleged that, “upon information and belief, Defendants [D&G] contracted with non-party
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`Salbro Bottle, Inc.. . . to manufacture the [allegedly infringing] jugs according to specifications
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`that Defendants provided to Salbro.” Id. Dominion & Grimm USA, Inc.’s response to the
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`Complaint is due on June 20, and Hillside is presently executing service on Dominion & Grimm,
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`Inc. in Canada.
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`On that same day, Salbro filed this action seeking to cancel Registration No. 1605584,
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`which was granted to Hillside by the United States Patent and Trademark Office in 1990.
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`Petition to Cancel (“Petition”) ¶ 5. Salbro, a manufacturer of bottles for food and beverages,
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`asserts that Hillside’s Registered Mark, which covers blow-plastic jugs, is functional. Id. ¶¶ 1-
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`2, 25-28.
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`ARGUMENT
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`It is standard procedure for the Board to suspend administrative proceedings such as this
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`pending the outcome of a related civil action. See 6 J.T. McCarthy, MCCARTHY ON
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`TRADEMARKS AND UNFAIR COMPETITION, § 32:47 (4th ed.) (citing Whopper-Burger, Inc. v.
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`Burger King Corp., 171 USPQ 805, 1971 WL 16554 (TTAB 1971); New Orleans Louisiana
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`Saints LLC and NFL Properties LLC v. Who Dat?, Inc., 99 U.S.P.Q.2d 1550, 2011 WL 3381380
`
`(TTAB 2011)). The TBMP states that: “Unless there are unusual circumstances, the Board will
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`
`
`
`2
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`

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`suspend proceedings in the case before it if the final determination of the other proceeding may
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`have a bearing on the issues before the Board.” TBMP § 510.02(a).
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`Registrant respectfully submits that this cancellation proceeding should be suspended
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`pending the outcome of related litigation pending in the United States District Court for the
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`District of Massachusetts. Suspension of this proceeding is proper because the District Court’s
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`decision regarding the trademark at issue clearly “may have a bearing on the issues before the
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`Board.” See TBMP § 510.02(a). Both proceedings concern the same Registered Mark and, at
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`bottom, the same allegedly infringing products. Compare, e.g., Ex. A ¶¶ 14, 18 with Petition
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`¶¶ 4, 5. Indeed, Salbro and D&G apparently believe that their interests with regard to the
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`Registered Mark are aligned as Salbro’s counsel in this action has also been representing D&G
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`in negotiations with Hillside concerning the federal district court litigation. Moreover, while
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`Salbro is not a party in the Massachusetts action, as noted above, the allegedly infringing
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`products at issue in that case are believed to have been manufactured by Salbro. Ex. A ¶ 18.
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`And Hillside would anticipate taking discovery from Salbro in the District Court action, as a
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`third-party. As such, any decision by the federal district court concerning whether D&G has
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`infringed upon a valid trademark by directing Salbro to manufacture the jugs at issue will
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`necessarily bear on the issues raised by this cancellation proceeding. And while D&G has yet to
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`file an answer in the Massachusetts action, it does not strain credulity to expect that D&G will
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`defend the action, at least in part, on the issues raised by Salbro in this cancellation. As such, it
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`is reasonable to anticipate that the District Court will be deciding, at least in part, the identical
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`issue presented by this cancellation proceeding. Where the decision by the court may be
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`dispositive of the issues before the Board, a “motion to suspend is well taken.” See General
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`Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933 (TTAB 1992), abrogation on
`
`
`
`
`3
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`

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`other grounds recognized by Gaylord Enter. Co. v. Calvin Gilmore Prod., Inc., 59 USPQ2d 1369
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`(TTAB 2000); see also New Orleans Louisiana Saints LLC, 2011 WL 3381380, at *2 (“Thus, the
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`civil action does not have to be dispositive of the Board proceeding to warrant suspension, it
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`need only have a bearing on the issues before the Board.”); Kearns-Tribune, LLC v. Salt Lake
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`Tribune Publ’g Co., LLC, Opp. No. 151,843, 2003 WL 22134916, at *3 (TTAB Sept. 11, 2003)
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`(citing General Motors and suspending proceeding where outcome of civil action “may have a
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`bearing on the issues before the Board”).
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`WHEREFORE, for all the foregoing reasons, Registrant Hillside respectfully prays that
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`this Board suspend all proceedings herein pending the disposition of the litigation in the United
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`States District Court for the District of Massachusetts.
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`
`
`Respectfully submitted,
`
`By: /s/ Ira J. Levy
`Ira J. Levy
`GOODWIN PROCTER LLP
`620 Eighth Avenue
`New York, NY 10018
`Tel: (212) 813-8800
`Fax: (212) 355-3333
`
`Attorneys for Registrant
`
`
`
`
`
`Dated: June 7, 2017
` New York, New York
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`
`
`
`
`
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`
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`
`
`4
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`

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`CERTIFICATE OF SERVICE
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`I Janis Nici, hereby certify that on this 7th day of June, 2017, the foregoing Registrant’s Motion
`to Suspend was served on the attorney of record for the Petitioner by email to Petitioner’s
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`counsel of record, as indicated below:
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`trademarkdocket@venable.com; rliebowitz@venable.com, mkent@venable.com,
`cmitros@venable.com
`-
`
`Rebecca Liebowitz
`
`
`
`Senior Trademark Paralegal
`
`GOODWTN PROCTER LLP
`
`620 Eighth Avenue
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`New York, NY 10018
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`

`

`
`
`EXHIBIT A
`EXHIBIT A
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`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 1 of 14
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`Civil Action No. 17-30037
`
`
`
`
`
`HILLSIDE PLASTICS, INC.,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`DOMINION & GRIMM USA, INC., and,
`DOMINION & GRIMM, INC.,
`
`
`Defendants.
`
`COMPLAINT AND DEMAND FOR JURY TRIAL
`
`
`
`
`
`
`
`Plaintiff Hillside Plastics, Inc. (“Hillside” or “Plaintiff”), through its attorneys, Goodwin
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`Procter LLP, for its complaint, alleges as follows, upon personal knowledge as to its own actions
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`and upon information and belief as to the actions of Defendants Dominion & Grimm USA, Inc.
`
`and Dominion & Grimm, Inc. (collectively “Defendants”):
`
`THE PARTIES
`
`1.
`
`Hillside is a Massachusetts company organized and existing under the laws of the
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`Commonwealth of Massachusetts with its principal place of business at 262 Millers Falls Road,
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`Turners Falls, MA 01376.
`
`2.
`
`Upon information and belief, Defendant Dominion & Grimm USA, Inc. (“D&G
`
`USA”) is a corporation organized and existing under the laws of the State of Vermont having a
`
`principal place of business at 164 Yankee Park Road, Fairfax, VT 05454 and an office at 10883
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`State Route 19A, Fillmore, NY 14735. Upon information and belief, D&G USA sells its products
`
`throughout the United States, including in this District, and has authorized dealers for its
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`products within this District.
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`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 2 of 14
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`3.
`
`Upon information and belief, Defendant Dominion & Grimm, Inc. (“D&G I”) is
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`a corporation organized and existing under the laws of Canada, with a principal place of business
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`in the province of Quebec at 8250 Marconi Anjou, Montreal, QC H1J 1B2. Upon information
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`and belief, D&G I is the owner of D&G USA. D&G USA and D&G I are collectively referred to
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`as Defendants.
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`
`
`JURISDICTION AND VENUE
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`4.
`
`This is an action for injunctive and other relief under the Federal Trademark Act, 15
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`U.S.C. § 1051, et seq. (“Lanham Act”), particularly 15 U.S.C. §§ 1114 and 1125, for infringement of
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`a registered trademark, false designation of origin, false description or representation, trademark
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`dilution and related unfair competition. Plaintiff also asserts claims under state law for infringement
`
`and unfair competition.
`
`5.
`
`This Court has jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1338(a),
`
`and 1338(b). This Court also has jurisdiction pursuant to 15 U.S.C. § 1121(a), 28 U.S.C. § 1332 and
`
`the doctrine of supplemental jurisdiction.
`
`6.
`
`This Court has personal jurisdiction over Defendants under Mass. Gen. Laws ch.
`
`223A § 3, including for the reason that Defendants conducted and continue to conduct business in
`
`the Commonwealth of Massachusetts when they (i) sell products in Massachusetts and conduct or
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`solicit business through advertising, offering for sale and selling a confusingly similar product in
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`Massachusetts; and (ii) commit acts of trade dress infringement, as more fully described below, in
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`whole or in part in Massachusetts. In addition Defendants, directly and/or through their distribution
`
`networks, regularly place their products within the stream of commerce, with the knowledge and/or
`
`understanding that such products will be sold in Massachusetts.
`
`7.
`
`Venue is proper under 28 U.S.C. §§ 1391(b) and 1391(c) in that, upon information
`
`-2-
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 3 of 14
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`and belief, Defendants do business in the Commonwealth of Massachusetts, and/or the wrongful acts
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`committed by Defendants occurred in and are causing injury in the Commonwealth of
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`Massachusetts.
`
`
`
`PLAINTIFF AND PLAINTIFF’S TRADEMARK
`
`8.
`
`Plaintiff is a leading provider of high-quality containers to the household,
`
`automotive, industrial and food and beverage industries.
`
`9.
`
`At least as early as June 1980, and long prior to the acts of Defendants complained of
`
`herein, Plaintiff designed, adopted and used in commerce the distinctive SUGARHILL® JUG
`
`DESIGN Trademark for and in connection with blow-molded plastic jugs (“products”). Such use
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`has been continuous since that time. Plaintiffs’ SUGARHILL® JUG DESIGN Trademark products
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`have been sold to wholesale bottlers, food distributors, and maple syrup farmers.
`
`10.
`
`Plaintiff has invested considerable time, money and effort in designing its
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`SUGARHILL® Jug, including significant investment in molds for the manufacture of its unique and
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`distinctive design, as well as investments in advertising, marketing and promotion of its product.
`
`11.
`
`As a result of these efforts Plaintiff has sold millions of SUGARHILL® Jug products
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`over the years, yielding tens of millions of dollars of revenue, throughout the United States,
`
`including the Commonwealth of Massachusetts, and worldwide. For calendar year 2016 alone, sales
`
`of SUGARHILL® Jug products were in excess of $10,000,000.00. As a result of these efforts,
`
`Plaintiff has developed substantial recognition and goodwill in its SUGARHILL® JUG DESIGN
`
`Trademark. Consumers have come to recognize and associate the SUGARHILL® JUG DESIGN
`
`Trademark with Plaintiff, and it has acquired secondary meaning in the marketplace.
`
`12.
`
`The SUGARHILL® JUG DESIGN Trademark has been featured in a variety of
`
`local, regional and national publications. For example, the SUGARHILL® JUG DESIGN
`
`-3-
`
`
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`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 4 of 14
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`Trademark is featured on the website of the Massachusetts Maple Producers Association, a non-
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`profit organization dedicated to the preservation and promotion of maple sugaring in Massachusetts.
`
` (www.massmaple.org, last visited March 8, 2017).
`
`13.
`
`Plaintiff has a reputation as an innovator in the field. As a result of innovation in
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`maple syrup bottling and distribution, in 2000, Plaintiff’s then president was inducted into the Maple
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`Syrup Hall of Fame.
`
`14.
`
`On June 23, 1989 Plaintiff filed an application with the United States Patent and
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`Trademark Office (“PTO”) to register its SUGARHILL® JUG DESIGN Trademark in connection
`
`with “blow-molded plastic jugs for commercial use, sold empty.” After examination at the
`
`trademark office the subject application was published for a period of public opposition on April
`
`17, 1990. No opposition to such application having been made, such application was allowed by
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`the PTO and issued on July 10, 1990 as Trademark Registration Number 1605584 (the “’584
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`Registration.”)
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`15.
`
`A copy of the drawing from the ‘584 Registration (Exhibit A) appears below:
`
`-4-
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 5 of 14
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`
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`16.
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`By virtue of Plaintiffs’ compliance with the strictures of 15 USC § 1058 and 15
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`USC § 1065, the ‘584 Registration has achieved incontestable status.
`
`17.
`
`Plaintiff’s registration constitutes constructive notice to Defendants of Plaintiff’s
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`ownership of the trademark in connection with the goods and services identified in its
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`registration.
`
`DEFENDANTS’ ACTIVITIES
`
`18.
`
`For a number of years, and continuing to this day, Defendants have offered for sale,
`
`through their catalogs and otherwise, products under Plaintiff’s SUGARHILL® JUG DESIGN
`
`Trademark. As a result, Defendants have been long aware of the nature of the goods sold under
`
`Plaintiff’s trademark, and their success in the marketplace. Long subsequent to Plaintiff’s adoption
`
`-5-
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 6 of 14
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`and use of the SUGARHILL® JUG DESIGN Trademark in commerce, Defendants commenced the
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`distribution, and sale in commerce of blow-molded jugs (“infringing jugs”) bearing the
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`SUGARHILL® JUG DESIGN Trademark, or a colorable imitation thereof. Further, upon
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`information and belief, Defendants contracted with non-party Salbro Bottle, Inc. (“Salbro”) to
`
`manufacture the SUGARHILL® JUG DESIGN branded jugs according to specifications that
`
`Defendants provided to Salbro.
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`19.
`
`As a company that has purchased from Plaintiff and has distributed Plaintiff’s
`
`SUGARHILL® JUG DESIGN branded jugs, Defendants are well aware and, since long prior to the
`
`acts of Defendants complained of herein, have been well aware of the goodwill represented and
`
`symbolized by the SUGARHILL® JUG DESIGN Trademark. Defendants have been well aware
`
`that the SUGARHILL® JUG DESIGN Trademark is widely recognized and relied upon by the
`
`public and the trade as identifying Plaintiff and its products and as distinguishing said products from
`
`the products of others.
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`20.
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`Notwithstanding that knowledge, and indeed by reason of such knowledge,
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`Defendants engaged in a deliberate and willful scheme to trade upon and to misappropriate for
`
`themselves the vast goodwill represented and symbolized by the SUGARHILL® JUG DESIGN
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`Trademark, by adopting and using in commerce the accused trademark, and offering products
`
`bearing the SUGARHILL® JUG DESIGN Trademark to parties that have previously purchased
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`Plaintiffs goods.
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`21.
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`A copy of the current catalog page for the infringing jugs appears below (Exhibit B):
`
`-6-
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 7 of 14
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`22.
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`Defendants’ products are offered to the same customers through the same channels
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`of trade as Plaintiff’s goods bearing the SUGARHILL® JUG DESIGN Trademark as reflected by
`
`their side by side offering in Defendants’ catalog:
`
`
`
`23.
`
`In addition to appearing in their catalog, Defendant D&G USA recently took out a
`
`full page advertisement in one of the industry’s leading publications, Maple News, advertising the
`
`availability of the infringing jugs in the United States, including specifically Massachusetts. A copy
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`
`
`-7-
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 8 of 14
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`of this advertisement appears below (Exhibit C):
`
`
`
`24.
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`Defendants’ use in commerce of the accused trademark is designed, is calculated,
`
`
`
`and is likely to cause confusion, to cause mistake, and to deceive customers and prospective
`
`customers as to the source, origin, or sponsorship of Defendants’ products, and to cause them
`
`mistakenly to believe that Defendants’ products are the products of Plaintiff, or are sponsored,
`
`licensed, authorized, or approved by Plaintiff, all to the detriment of Plaintiff, the trade, and the
`
`public.
`
`25.
`
`Defendants’ use in commerce of the accused trademark is further designed, is
`
`calculated, and is likely to dilute the distinctiveness of Plaintiffs’ SUGARHILL® JUG DESIGN
`
`-8-
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 9 of 14
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`Trademark, and to diminish the value of the goodwill represented by the same.
`
`26.
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`Defendants’ use of the accused trademark is without the license or consent of
`
`Plaintiff.
`
`COUNT I – FEDERAL TRADEMARK INFRINGEMENT
`
`27.
`
`Plaintiff incorporates herein each and every allegation set forth in Paragraphs 1
`
`through 26 as if fully set forth herein.
`
`28. With full knowledge and awareness of Plaintiff’s ownership and prior use of the
`
`SUGARHILL® JUG DESIGN Trademark, Defendants have intentionally used in commerce, and
`
`upon information and belief, will continue to intentionally use the accused trademark, which use is
`
`likely to cause confusion, or to cause mistake, or to deceive.
`
`29.
`
`Defendants’ aforesaid acts constitute infringement of a federal trademark registration
`
`in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114.
`
`30.
`
`Defendants’ aforesaid acts have harmed Plaintiff’s reputation, severely damaged
`
`Plaintiff’s goodwill, and upon information and belief, have diverted sales from Plaintiff.
`
`31.
`
`Defendants’ aforesaid acts have caused and will cause great and irreparable injury to
`
`Plaintiff and, unless said acts are restrained by this Court, they will be continued and Plaintiff will
`
`continue to suffer great and irreparable injury.
`
`32.
`
`Plaintiff has no adequate remedy at law.
`
`COUNT II – FEDERAL DILUTION
`
`33.
`
`Plaintiff incorporates herein each and every allegation set forth in Paragraphs 1
`
`through 32 as if fully set forth herein.
`
`34.
`
`The SUGARHILL® JUG DESIGN Trademark is famous and possesses a high
`
`-9-
`
`degree of distinctiveness.
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 10 of 14
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`35.
`
`Defendants’ aforesaid acts, commencing after the SUGARHILL® JUG DESIGN
`
`Trademark became famous and distinctive, constitute dilution in violation of § 43(c) of the Lanham
`
`Act, 15 U.S.C. § 1125(c).
`
`36.
`
`Defendants’ aforesaid acts have harmed Plaintiff’s reputation, severely damaged
`
`Plaintiff’s goodwill, and diluted the SUGARHILL® JUG DESIGN Trademark.
`
`37.
`
`Defendants’ aforesaid acts have caused and will cause great and irreparable injury to
`
`Plaintiff and, unless said acts are restrained by this Court, they will be continued and Plaintiff will
`
`continue to suffer great and irreparable injury.
`
`38.
`
`Plaintiff has no adequate remedy at law.
`
`
`
`
`COUNT III – FALSE DESIGNATION, DESCRIPTION,
`AND REPRESENTATION UNDER THE LANHAM ACT
`
`39.
`
`Plaintiff incorporates herein each and every allegation set forth in Paragraphs 1
`
`through 38 as if fully set forth herein.
`
`40.
`
`Defendants have intentionally used and, upon information and belief, will continue
`
`to use, in commerce the accused trademark, which use constitutes a false designation of origin, false
`
`or misleading description of fact, or a false or misleading representation of fact, which are likely to
`
`cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association with
`
`Plaintiff, or origin, sponsorship, or approval of Defendants’ products by Plaintiff.
`
`41.
`
`Defendants’ aforesaid acts constitute unfair competition, false designation of origin,
`
`and/or false description or representation in violation of § 43(a) of the Lanham Act, 15 U.S.C. §
`
`1125(a).
`
`42.
`
`Defendants’ aforesaid acts have harmed Plaintiff’s reputation, severely damaged
`
`Plaintiff’s goodwill, and upon information and belief, have diverted sales from Plaintiff.
`
`-10-
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 11 of 14
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`43.
`
`Defendants’ aforesaid acts have caused and will cause great and irreparable injury to
`
`Plaintiff and, unless said acts are restrained by this Court, they will be continued and Plaintiff will
`
`continue to suffer great and irreparable injury.
`
`44.
`
`Plaintiff has no adequate remedy at law.
`
`COUNT IV – UNFAIR COMPETITION
`
`45.
`
`Plaintiff incorporates herein each and every allegation set forth in Paragraphs 1
`
`through 44 as if fully set forth herein.
`
`46.
`
`Defendants’ aforesaid acts constitute infringement, misappropriation, and misuse of
`
`the SUGARHILL® JUG DESIGN Trademark, unfair competition, palming-off and passing-off
`
`against Plaintiff, and unjust enrichment of Defendants, all in violation of Plaintiff’s rights at
`
`common law and under Chapter 93A § 11 of the Massachusetts General Laws.
`
`47.
`
`Both Plaintiff and Defendants engage in the conduct of trade or commerce within the
`
`meaning of Mass. Gen. Laws ch. 93A §§ 1, 11.
`
`48.
`
`Defendants’ acts and conduct constitute unfair and deceptive acts and practices in the
`
`conduct of trade or commerce in violation of Mass. Gen. Laws ch. 93A §§ 2, 11.
`
`49.
`
`50.
`
`Defendants’ unfair and deceptive acts and practices occurred within Massachusetts.
`
`Defendants’ unfair and deceptive acts and practices constitute knowing and/or willful
`
`violations of Mass. Gen. Laws ch. 93A §§ 2, 11.
`
`51.
`
`Defendants’ aforesaid acts have harmed Plaintiff’s reputation, severely damaged
`
`Plaintiff’s goodwill, and upon information and belief, have diverted sales from Plaintiff.
`
`52.
`
`Defendants’ aforesaid acts have caused and will continue to cause great and
`
`irreparable injury to Plaintiff and, unless said acts are restrained by this Court, they will be continued
`
`and Plaintiff will continue to suffer great and irreparable injury.
`
`-11-
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 12 of 14
`
`53.
`
`As a direct and proximate result of the foregoing deceptive acts and practices of
`
`Defendants, Plaintiff is entitled to damages, treble damages, and recovery of its attorneys’ fees and
`
`costs.
`
`Plaintiff demands trial by jury of all issues so triable.
`
`JURY DEMAND
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, Plaintiff prays:
`
`A.
`
`That this Court adjudge that the SUGARHILL® JUG DESIGN Trademark has been
`
`infringed and diluted as a direct and proximate result of the acts of Defendants as set forth in this
`
`Complaint, in violation of Plaintiff's rights under the Lanham Act, 15 U.S.C. § 1051 et seq., and the
`
`common law.
`
`B.
`
`That this Court adjudge that Defendants have competed unfairly with Plaintiff as set
`
`forth in this Complaint, in violation of Plaintiff’s rights under the Lanham Act, 15 U.S.C. § 1125(a),
`
`the common law, and Chapter 93A § 11 of the Massachusetts General Laws.
`
`C.
`
`That Defendants, and all officers, directors, agents, servants, employees, affiliates,
`
`attorneys, successors, and assigns, and all persons in active concert or participation therewith, be
`
`preliminarily and permanently enjoined and restrained:
`
`1)
`
`From using the accused trademark, or any designation or trademark similar
`
`thereto, in any way, in connection with software or hardware products or related services;
`
`and
`
`2)
`
`From doing any other act or thing likely to cause the public or the trade
`
`mistakenly to believe that there is any connection between Defendants and Plaintiff, or their
`
`-12-
`
`respective products; and
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 13 of 14
`
`3)
`
`From otherwise infringing or diluting any trademark owned by Plaintiff or
`
`engaging in unfair competition against Plaintiff.
`
`D.
`
`That Defendants be required to deliver up for destruction all products, labels, signs,
`
`prints, packages, promotional materials, advertisements, and other written or printed materials that
`
`bear the accused trademark, or any trademarks similar thereto.
`
`E.
`
`That Defendants be directed to file with this Court and to serve upon Plaintiff within
`
`thirty (30) days after service of the injunction issued in this action, a written report under oath,
`
`setting forth in detail the manner of compliance with paragraphs C and D.
`
`F.
`
`That Plaintiff recover Defendants’ profits and the damages of Plaintiff arising from
`
`Defendants’ acts of trademark infringement, dilution, false designation of origin, false description or
`
`representation, and unfair competition.
`
`G.
`
`H.
`
`That the Court treble such damages as awarded in accordance with paragraph F.
`
`That Plaintiff recover, in addition to such sums as awarded in accordance with
`
`paragraphs F and G, punitive damages in an amount that the Court deems just and proper.
`
`I.
`
`That Plaintiff recover both pre-judgment and post-judgment interest on each and
`
`every award.
`
`J.
`
`K.
`
`action.
`
`That Plaintiff recover its reasonable attorney fees incurred in this action.
`
`That Plaintiff have and recover its taxable costs and disbursements incurred in this
`
`L.
`
`That Plaintiff have other and such further relief as the Court may deem just and
`
`-13-
`
`proper.
`
`
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1 Filed 03/31/17 Page 14 of 14
`
`
`
`Respectfully submitted,
`
`HILLSIDE PLASTICS, INC.,
`
`By its attorneys,
`
`
`
`/s/ Robert D. Carroll
`Robert D. Carroll (BBO# 662736)
`Laura B. Najemy (BBO# 678756)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, Massachusetts 02210
`Tel.: 617.570.1000
`Fax: 617.523.1231
`rcarroll@goodwinlaw.com
`lnajemy@goodwinlaw.com
`
`Ira Jay Levy (Pro Hac Vice Pending)
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`Tel: 212.813-8800
`Fax: 212.355.3333
`ilevy@goodwinlaw.com
`
`
`
`Dated: March 31, 2017
`
`-14-
`
`
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1-1 Filed 03/31/17 Page 1 of 2
`Case 3:17-cv—30037-MAP Document 1-1 Filed 03/31/17 Page 1 of 2
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1-1 Filed 03/31/17 Page 2 of 2
`
`Int. CL: 20
`
`Prior U.S. CL: 2
`
`United States Patent and Trademark Office
`“ “Corrected
`
`~
`
`Reg. No. 1,605,584
`Registered July 10, 1990
`0G Date Dec. 18, 1990
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`-
`
`(MASSA-
`
`SEC. 20:).
`FOR: BLOW-MOLDED PLASTIC JUGS
`FOR
`COMMERCIAL
`USE,
`SOLD
`EMPTY, IN CLASS 20 (US. CL. 2).
`FIRST USE 10-0—1980; IN COMMERCE
`10—0—1980,
`
`SER. NO. 73-808,683, FILED 6—23— 1989.
`
`
`
`
`
`INC.
`HILLSIDE PLASTICS,
`CHUSE'I'I‘S CORPORATION)
`MAIN STREET
`SUNDERLAND, MA 01375
`OWNER OF US, REG. NO. 1,271,312,
`THE DRAWING IS LINED FOR THE
`COLORS
`SILVER 0R GRAY; THE
`LINING OF THE JUG CAP IS CLAIMED
`AS A FEATURE OF THE MARK.
`
`
`
`In testimony whereof I have hereunto set my hand
`and caused the seal of The Patent and Trademark
`Oflice to be affixed on Dec. 18, 1990.
`
`COMMISSIONER OF PATENTS AND TRADEMARKS
`
`

`

`Case 3:17-cv-30037-MAP Document 1-2 Filed 03/31/17 Page 1 of 3
`Case 3:17-cv—30037-MAP Document 1-2 Filed 03/31/17 Page 1 of 3
`
`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1-2 Filed 03/31/17 Page 2 of 3
`Case 3:17-cv—30037-MAP Document 1-2 Filed 03/31/17 Page 2 of 3
`
`MAPLE SUGARING
`EQUiFMENT S. ACCESSORIES
`
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`
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`
`-~
`
`-
`
`0S
`
`

`

`Case 3:17-cv-30037-MAP Document 1-2 Filed 03/31/17 Page 3 of 3
`Case 3:17-cv—30037-MAP Document 1-2 Filed 03/31/17 Page 3 of 3
`
`
`
`f
`
`MAIN THIS- ‘r'EJUt WHICH GIIMM USA INC. Will.
`GIVE 1 FEHN‘F FOR EACH .IUG AND TIN CAN SOLD IN THE
`USA TO THE NORTH AMERICAN MAME SYRUP COUNCIL
`
`FDIl RESEARCH IN TIE IMAM INDUSWEY.
`
`
`
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`
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`

`

`Case 3:17-cv-30037-MAP Document 1-3 Filed 03/31/17 Page 1 of 2
`Case 3:17-cv—30037-MAP Document 1-3 Filed 03/31/17 Page 1 of 2
`
`
`
`EXHIBIT C
`EXHIBIT C
`
`
`
`
`
`

`

`Case 3:17-cv-30037-MAP Document 1-3 Filed 03/31/17 Page 2 of 2
`Case 3:17-cv—30037-MAP Document 1-3 Filed 03/31/17 Page 2 of 2
`
`p .-
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`
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`
`
`

`

`JS 44 (Rev. 0(cid:27)/16)
`
`Case 3:17-cv-30037-MAP Document 1-4 Filed 03/31/17 Page 1 of 1
`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
`
`HILLSIDE PLASTICS, INC.
`
`(b) County of Residence of First Listed Plaintiff
`Franklin County
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`DEFENDANTS
`
`DOMINION & GRIMM USA, INC., and
`DOMINION & GRIMM, INC.
`County of Residence of First Listed Defendant
`(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)
`Robert D. Carroll (BBO# 662736); Laura B. Najemy (BBO# 678756)
`Good