Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA984176
`
`Filing date:
`
`06/28/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Citizenship
`
`Louisiana
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Labeauti, Inc.
`
`Corporation
`
`410 Bourbon Street
`New Orleans, LA 70116
`UNITED STATES
`
`Kenneth L. Tolar
`Tolar Harrigan & Morris LLC
`1055 St. Charles Avenue
`Suite 208
`New Orleans, LA 70130
`UNITED STATES
`ktolar@nolaipa.com
`5045715317
`
`Registration Subject to Cancellation
`
`Registration No.
`
`4560266
`
`Registration date
`
`07/01/2014
`
`Registrant
`
`Nicholas S. Karno #1, Inc.
`732 St. Louis Street
`New Orleans, LA 70130
`UNITED STATES
`
`Additional Registrant Information
`
`Additional registrant in-
`formation provided by
`the petitioner
`
`Nicholas S. Karno #1, Inc.
`700 Bourbon Street
`New Orleans, LA 70116
`UNITED STATES
`no email provided
`no phone number provided
`
`Goods/Services Subject to Cancellation
`
`Class 032. First Use: 1996/12/01 First Use In Commerce: 1996/12/01
`All goods and services in the class are subject to cancellation, namely: Beers
`
`Grounds for Cancellation
`
`The mark is merely descriptive
`
`Trademark Act Sections 14(1) and 2(e)(1)
`
`The mark is or has become generic
`
`Trademark Act Section 14(3), or Section 23 if on
`Supplemental Register
`
`

`

`Fraud on the USPTO
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Attachments
`
`petition for cancellation of Huge Ass Beer.pdf(114283 bytes )
`Exhibit 1.pdf(1524755 bytes )
`
`Signature
`
`Name
`
`Date
`
`/kenneth l tolar/
`
`Kenneth L Tolar
`
`06/28/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Trademark Registration No. 4,560,266
`Mark: HUGE ASS BEER
`Registered: July 1, 2014
`
`*******************************
`Labeauti, Inc.
`
`
`*
`
`
`
`
`
`*
`v.
`
`
`
`
`*
`
`
`
`
`
`*
`Nicholas S. Karno #1, Inc.
`*
`*******************************
`
`Via ESTTA
`Assistant Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`__________________________________________________________________
`
`
`
`
`
`Cancellation No. ______________
`
`PETITION FOR CANCELLATION
`
`
`
`Petitioner Labeauti, Inc. (“Labeauti” or “Petitioner”) hereby seeks cancellation
`
`of registration no. No. 4,560,266 (the ‘266 Registration) for the mark HUGE ASS
`
`BEER for the following reasons.
`
`1.
`
`Petitioner, Labeauti, Inc. is a Louisiana corporation with its principal place of
`
`business in New Orleans, Louisiana, and is sometimes doing business as “Beerfest.”
`
`2.
`
`Made Respondent herein is Nicholas S. Karno #1, Inc. (“Karno”), a Louisiana
`
`corporation with its principal place of business in New Orleans, Louisiana.
`
`3.
`
`Karno owns U.S. Trademark Registration No. 4,560,266 (the ‘266 Registration)
`
`for the mark HUGE ASS BEER for use with “beer.” The ‘266 Registration issued on
`
`July 1, 2014.
`
`4.
`
`Respondent operates various restaurants and nightclubs in the French
`
`
`
`1
`
`

`

`Quarter of New Orleans where it offers a beer under the designation HUGE ASS
`
`BEER. The beer offered and sold under the registered trademark is simply a huge or
`
`extra-large beer.
`
`5.
`
`In early 2019, Petitioner began offering a beer under the mark GAINT ASS
`
`BEER.
`
`6.
`
`Karno immediately filed suit against the petitioner and other related entities
`
`and officers asserting the ‘266 Registration, which is currently pending in the Eastern
`
`District of Louisiana as case no. 19-1745. Specifically, Respondent alleges that
`
`Petitioner’s use of the GIANT ASS BEER constitutes trade dress infringement, unfair
`
`competition and dilution of its trademark rights in HUGE ASS BEER. Exhibit 1.
`
`7.
`
`Upon information and belief, the beer offered and sold under the purported
`
`trademark “HUGE ASS BEER” is packaged in 32-ounce containers, which is
`
`substantially larger than a typical beer container.
`
`8.
`
`9.
`
`“Huge ass” is a term commonly used to describe something large.
`
`Pursuant to 15 U.S.C. §1052(e), any mark that is merely descriptive is not
`
`registerable on the principal register.
`
`10. A mark is merely descriptive if it conveys an ingredient, quality, characteristic,
`
`function, feature, purpose or use of the specified goods or services.
`
` 11. Respondent’s HUGE ASS BEER mark is merely descriptive in that it
`
`immediately conveys to a potential consumer a characteristic or feature of the goods
`
`offered under the mark, namely a large beer.
`
` 12. Respondent admits the highly descriptive nature of the term when stating in
`
`
`
`2
`
`

`

`the complaint in the above-referenced lawsuit: “‘Giant’ is synonymous with both
`
`‘Huge’ and ‘Big.’” Exhibit 1. According to Plaintiff’s own words, the term describes
`
`something that is big.
`
`13. Respondent’s HUGE ASS BEER mark has not acquired distinctiveness and is
`
`so highly descriptive as to be incapable of ever functioning as a trademark. Therefore,
`
`the ‘266 registration is invalid.
`
`14. Respondent also filed trademark application number 86139795 for BIG ASS
`
`BEER on December 10, 2013, but the application was rejected based upon
`
`registration no. 2,265,207 for BIG ASS for use with beer, which had been registered
`
`since July 27, 1999.
`
` 15. Respondent received notice of the BIG ASS registration on March 6, 2014 while
`
`its application to register HUGE ASS BEER was pending. If Respondent’s reasoning
`
`that “huge” and “big” are synonymous were applied, Respondent was actively and
`
`knowingly infringing the BIG ASS registration when it filed its application to register
`
`HUGE ASS BEERS.
`
`16. Moreover, in the Complaint in the above-captioned lawsuit, Respondent
`
`admits to using the mark BIG ASS BEER since 2013 despite its prior knowledge that
`
`another entity had registered the identical mark for use with identical goods and has
`
`been using the mark since at least October 1, 1998.
`
`17. Furthermore, in the application to register the mark HUGE ASS BEER,
`
`Respondent alleges a date of first use in commerce of December 1, 1996. However,
`
`in an application to register the identical mark with the Louisiana Secretary of
`
`
`
`3
`
`

`

`State, Respondent alleges a date of first use of December 1, 1999. If Respondent
`
`deliberately misrepresented the date of first use in order to circumvent the earlier
`
`date of first use of the BIG ASS registration, such act could constitute fraudulent
`
`procurement of a trademark registration under 15 U.S.C. 1064(3).
`
`18. Because of the litigation described above and Respondent’s interference with
`
`Petitioner’s right to use GIANT ASS BEER, Petitioner is authorized to bring this
`
`cancellation proceeding pursuant to 15 U.S.C. §1064 since it is being damaged by
`
`the ‘266 registration.
`
`FIRST BASIS FOR CANCELLATION-DESCRIPTIVENESS
`
` 19. Petitioner reincorporates Paragraphs 1-18, as set forth herein.
`
` 20. The term “huge ass” is a merely descriptive, generic and common term for
`
`something large, and “beer” is clearly generic for beer. Therefore, because the entire
`
`mark consists of descriptive, generic and unprotectable terms, the ’266 Registration
`
`should be cancelled pursuant to 15 U.S.C. §§1064 and 1119.
`
`SECOND BASIS FOR CANCELLATION-FRAUD
`
` 21. Petitioner reincorporates Paragraphs 1-18, as set forth herein.
`
` 22. Respondent fraudulently procured the ‘266 registration by falsely claiming
`
`that it first used the mark in 1996, despite previously admitting that the mark had
`
`not been used until 1999. Therefore, the registration should be cancelled pursuant to
`
`15 U.S.C. §1064(3) and 1119.
`
` 23. Pursuant to the Lanham Act, the USPTO is authorized to cancel the ‘266
`
`registration due to its inability to serve as a proper indicator of origin, its genericness
`
`
`
`4
`
`

`

`and/or descriptiveness and because the registration was obtained by fraud.
`
`
`
`WHEREFORE, Petitioner, Labeauti, Inc. prays that U.S. Registration No. 4560266
`
`be cancelled as being merely descriptive and/or generic, and because the registration was
`
`obtained by fraud.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ kenneth l. tolar
`Kenneth L. Tolar (Bar #22641)
`Brad E. Harrigan (Bar #29592)
`TOLAR HARRIGAN & MORRIS LLC
`1055 St. Charles Avenue, Suite 208
`New Orleans, LA 70130
`(504) 571-5317
`(504) 571-5437 (facsimile)
`Email: ktolar@nolaipa.com
`
` bharrigan@nolaipa.com
`
`Attorneys for Labeauti, Inc.
`
`5
`
`

`

`Case 2:19-cv-01745-JTM-JCW Document 1 Filed 02/26/19 Page 1 of 19
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT COURT OF LOUISIANA
`
`
`
`
`NICHOLAS S. KARNO #1, Inc.
`
` Plaintiff,
`
`v.
`
`SILVER BOURBON, INC.; LABEAUTI,
`INC.; BOURBON BURLESQUE CLUB, INC;
`PAMELA J. OLANO, individually; and GUY
`W. OLANO, Jr., individually.
`
` Defendants.
`
`
`CIVIL ACTION NO.
`
`
`JUDGE:
`
`MAGISTRATE JUDGE:
`
`SECTION:
`
`
`
`
`
`
`
`
`COMPLAINT
`
`Plaintiff, Nicholas S. KARNO #1, Inc. (“NSK”) submits this Complaint against
`
`Defendants, Silver Bourbon, Inc., Labeauti, Inc., Bourbon Burlesque Club, Inc., Pamel J. Olano
`
`(“Ms. Olano”), and Guy W. Olano, Jr. (“Mr. Olano”), individually, (collectively “Defendants”)
`
`and alleges as follows:
`
`NATURE OF ACTION
`
`For more than twenty-two (22) years, locals and tourists strolling through the French
`
`Quarter in New Orleans have seen many people enjoying NSK’s world-famous HUGE ASS
`
`BEERS, BIG ASS BEERS and HALF ASS BEERS (collectively “NSK’s HUGE ASS BEERS
`
`Family of Marks”). In fact, one of the first things locals and tourists see when they step on
`
`Bourbon Street are NSK’s signs like those shown below:
`
`Exhibit 1
`
`

`

`Case 2:19-cv-01745-JTM-JCW Document 1 Filed 02/26/19 Page 2 of 19
`
`Those who follow the signs can buy a large or small beer from NSK sold in containers using its
`
`Huge Ass Beers Family of Marks. Some examples of NSK’s containers are shown below:
`
`
`
`
`
`Because of the success of NSK’s HUGE ASS BEERS Family of Marks, marks from
`
`NSK’s HUGE ASS BEERS Family of Marks have been copied and exploited by competitors;
`
`some also operating in the French Quarter. This lawsuit arises out of the most recent effort by
`
`direct competitors to trade off the goodwill obtained by NSK from over two (2) decades of its
`
`promoting, marketing, advertising, offering for sale, and selling beer using NSK’s HUGE ASS
`
`BEERS Family of Marks.
`
`Upon information and belief, on or before February 23, 2019, Defendants, at the direction
`
`
`
`Page 2 of 19
`
`

`

`Case 2:19-cv-01745-JTM-JCW Document 1 Filed 02/26/19 Page 3 of 19
`
`and authority of Mr. Olano and Ms. Olano, began using the mark GIANT ASS BEER in
`
`connection with the sale of beer. An image of Defendants use of the mark is shown below:
`
`
`
`Defendants’ egregious and blatant act of using a mark confusingly similar to NSK’s
`
`HUGE ASS BEERS Family of Marks is intended to trade off of the goodwill obtained by NSK
`
`over two (2) decades of use. Therefore, NSK is forced to file this lawsuit in order to stop
`
`Defendants’ infringement of NSK’s exclusive trademark rights in its HUGE ASS BEERS Family
`
`of Marks.
`
`THE PARTIES
`
`
`
`
`
`1.
`
`Plaintiff, Nicholas S. Karno #1, Inc., is a Louisiana corporation, with a principal
`
`office at 700 Bourbon Street, New Orleans, Louisiana 70116.
`
`2.
`
`Upon information and belief, Silver Bourbon, Inc. (“SBI”) is a Louisiana
`
`corporation doing business as “Beerfest” located at 410 Bourbon Street, New Orleans.
`
`3.
`
`Upon information and belief, Labeauti, Inc. (“LAB”) is a Louisiana corporation
`
`doing business as “Voodoo Vibes and “Sing Sing” 420 Bourbon Street and 418 Bourbon Street
`
`Page 3 of 19
`
`

`

`Case 2:19-cv-01745-JTM-JCW Document 1 Filed 02/26/19 Page 4 of 19
`
`New Orleans, respectively.
`
`4.
`
`Upon information and belief, Bourbon Burlesque Club, Inc. (“BBI”) is a Louisiana
`
`corporation doing business as “Stiletto’s” located at 325 Bourbon Street, New Orleans.
`
`5.
`
`Defendant, Pamela J. Olano (“Ms. Olano”), based on information and belief,
`
`resides in the New Orleans metropolitan area. Upon information and belief, Ms. Olano, along
`
`with Guy W. Olano, Jr., since their founding has continuously operated and controlled SBI, LAB,
`
`and BBI
`
`6.
`
`Defendant, Guy W. Olano, Jr. (“Mr. Olano”), based on information and belief,
`
`resides in the New Orleans metropolitan area. Upon information and belief, Mr. Olano, along
`
`with Ms. Olano, since their founding, has continuously operated and controlled SBI, LAB, and
`
`BBI.
`
`JURISDICTION
`
`7.
`
`This Court has jurisdiction over this action, under 15 U.S.C. § 1121(a) and 28 U.S.C.
`
`§ 1331 [actions arising under the Federal Trademark Act]; 28 U.S.C. §§ 1338(a) and (b) [acts of
`
`Congress relating to trademarks, and unfair competition claims joined therewith]; and, 28 U.S.C. §
`
`1367(a) [supplemental jurisdiction over related actions arising under state law].
`
`Upon information and belief, Defendants are domiciled within this jurisdiction.
`
`Upon information and belief, Defendants regularly conduct business in this
`
`8.
`
`9.
`
`jurisdiction.
`
`10.
`
`All claims alleged in this complaint were committed by the Defendants within this
`
`jurisdiction.
`
`VENUE
`
`
`
`
`
`11.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c).
`
`
`Page 4 of 19
`
`

`

`Case 2:19-cv-01745-JTM-JCW Document 1 Filed 02/26/19 Page 5 of 19
`
`
`
`
`
`STATEMENT OF FACTS
`
`PLAINTIFF AND THE RIGHTS AT ISSUE
`
`12.
`
`NSK and its affiliates are engaged, and have long been engaged, in the provision of
`
`bar, nightclub, and restaurant services in the New Orleans French Quarter doing business as Steak
`
`Pit, Cornet, and Prohibition (collectively “NSK Licensed Establishments”).
`
`13.
`
`NSK claims trademark rights in HUGE ASS BEERS, BIG ASS BEERS, and
`
`HALF ASS BEERS, NSK’s HUGE ASS BEERS Family of Marks.
`
`14.
`
`In December 1996, NSK began selling beers in the NSK Establishments under the
`
`trademark HUGE ASS BEERS. Throughout the United States, the NSK Establishments are
`
`known for their HUGE ASS BEERS. Beers sold under the trademark HUGE ASS BEERS are
`
`the most popular beers sold in the New Orleans French Quarter; thousands of beers are served at
`
`NSK's Establishments each year. The beers sold using NSK’s HUGE ASS BEERS Family of
`
`Marks have been featured, unsolicited, in a variety of social media outlets such as Yelp,
`
`Foursquare, NewOrleansOnline.com, Untapped.com, You Tube, and others.
`
`15.
`
`NSK owns a trademark registration for HUGE ASS BEERS in International Class
`
`032 for use with beer, registered at the U.S. Patent and Trademark Office (“USPTO”) under
`
`Registration No. 4560266. This registration is valid and subsisting, and remains in full force and
`
`effect. Copies of this registration and current status printouts of the United States Patent and
`
`Trademark Office Trademark Electronic Search System (“TESS”) for each registration are
`
`attached hereto as Exhibit A.
`
`16.
`
`Since at least as early as November 22, 2013, the NSK Establishments have also
`
`been selling beers under the trademark HALF ASS BEERS. Thousands of HALF ASS BEERS
`
`
`
`Page 5 of 19
`
`

`

`Case 2:19-cv-01745-JTM-JCW Document 1 Filed 02/26/19 Page 6 of 19
`
`have been sold each year in the French Quarter since 2013.
`
`17.
`
` NSK owns a trademark registration for HALF ASS BEERS in International Class
`
`032 for use with beer, registered at the U.S. Patent and Trademark Office (“USPTO”) under
`
`Registration No. 4560403. This registration is valid and subsisting, and remains in full force and
`
`effect. Copies of this registrations and current status printouts of the TESS for each registration
`
`are attached hereto as Exhibit B.
`
`18.
`
`Since at least as early as November 22, 2013, the NSK Establishments have also
`
`been selling beers under the trademark BIG ASS BEERS. Thousands of BIG ASS BEERS have
`
`been sold each year in the French Quarter since 2013.
`
`19.
`
`The reputations of NSK’s HUGE ASS BEERS Family of Marks have grown
`
`continuously over the past 22 years and since long prior to the acts complained of herein,
`
`consumers have recognized NSK’s HUGE ASS BEERS Family of Marks as originating
`
`exclusively from NSK’s Establishments. NSK’s HUGE ASS BEERS Family of Marks are
`
`inherently distinctive, have acquired secondary meaning, and upon information and belief, are
`
`world-famous.
`
`20.
`
`NSK undertakes significant efforts, and expends considerable sums each year, to
`
`ensure that beers using NSK’s HUGE ASS BEERS Family of Marks are not served, and cannot be
`
`purchased, at any commercial establishment that is not controlled by NSK’s directors. Thus,
`
`consumers wishing to enjoy HUGE ASS BEERS, BIG ASS BEERS, and HALF ASS BEERS
`
`may do so only at NSK’s Licensed Establishments: a) Cornet located at 700-706 Bourbon Street,
`
`b) Steak Pit located at 609 Bourbon Street, or Prohibition located at 333 Bourbon Street.
`
`21.
`
`The State of Louisiana has been, and remains, the most important market for NSK’s
`
`goods and services. Thousands of beers sold in authentic cups from NSK and its licensees using
`
`
`
`Page 6 of 19
`
`

`

`Case 2:19-cv-01745-JTM-JCW Document 1 Filed 02/26/19 Page 7 of 19
`
`NSK’s HUGE ASS BEERS Family of Marks are sold in New Orleans’ French Quarter each week.
`
`22.
`
`At no time has NSK licensed or otherwise authorized Defendants to use any of
`
`NSK’s HUGE ASS BEERS Family of Marks.
`
`DEFENDANTS’ UNLAWFUL CONDUCT
`
`23.
`
`Upon information and belief, Mr. Olano and Ms. Olano own, control and operate
`
`SBI doing business as “Beerfest” located at 410 Bourbon Street.
`
`24.
`
`Upon information and belief, Mr. Olano and Ms. Olano own, control and operate
`
`LAB doing business as “Voodoo Vibes” and “Sing Sing” located at 420 Bourbon Street and 418
`
`Bourbon Street, New Orleans, respectively.
`
`25.
`
`Upon information and belief, Mr. Olano and Ms. Olano own, control and operate
`
`BBI doing business as “Stiletto’s” 325 Bourbon Street, New Orleans.
`
`26.
`
`The Defendants’ businesses operating at 410 Bourbon
`
`Street, 420 Bourbon Street, 418 Bourbon Street, and 325 Bourbon
`
`Street shall collectively be referred to as “Defendants’ Establishments”.
`
`27.
`
`Upon information and belief, on Saturday February 23,
`
`2019, Defendants’ Establishments introduced and began selling beer
`
`served in plastic bottles affixed with labels using the mark GIANT ASS
`
`BEER (“Infringing Mark”). A picture of the infringing mark as used
`
`on the plastic bottles is shown to the right.
`
`28.
`
`Defendants’ Infringing Mark is substantially similar to NSK’s HUGE ASS
`
`BEERS Family of Marks. Instead of using “Huge”, “Big” or “Half”, Defendants’ mark uses
`
`“Giant”. “Giant” is synonymous with both “Huge” and “Big.”
`
`29.
`
`Defendants’ are using the Infringing Mark to sell beer, exactly the same use as the
`
`
`
`Page 7 of 19
`
`

`

`Case 2:19-cv-01745-JTM-JCW Document 1 Filed 02/26/19 Page 8 of 19
`
`NSK’s HUGE ASS BEERS Family of Marks.
`
`30.
`
`Defendants’ are selling beer using the Infringing Mark at locations in the French
`
`Quarter, the exact same channels of trade and consumers as NSK.
`
`31.
`
`Consumers of beer, particularly in New Orleans’ French Quarter, are likely to be
`
`confused as to the source of the beer served in the Defendants’ Establishments. Consumers are
`
`likely to believe that Defendants’ use of its Infringing Mark in connection with beer is associated
`
`with, authorized by, or endorsed by NSK.
`
`32.
`
`NSK’s HUGE ASS BEERS Family of Marks have acquired distinctiveness, and
`
`secondary meaning, as a designation for NSK’s Establishments beers, as a result of NSK’s
`
`longstanding, continuous use of its HUGE ASS BEERS Family of Marks in interstate commerce;
`
`NSK’s considerable advertising and promotional activities; unsolicited publicity, resulting from
`
`NSK’s continual use of its HUGE ASS BEERS Family of Marks with beer; and, NSK’s
`
`Establishments reputation as a “first stop” for tourists and local residents visiting the French
`
`Quarter.
`
`33.
`
`Defendants’ adoption and use of their Infringing Mark which is confusingly
`
`similar to NSK’s HUGE ASS BEERS Family of Marks in the manner above-described,
`
`constitutes federal trademark infringement, federal unfair competition, and federal false
`
`designation of origin, and gives rise to NSK’s related state law claims against Defendants for
`
`trademark infringement, trademark dilution, and unfair trade practices.
`
`34.
`
`Upon information and belief, Defendants have conducted business in the French
`
`Quarter for many years.
`
`35.
`
`NSK and Defendants have had a longstanding business relationship that has
`
`recently gone sour.
`
`
`
`Page 8 of 19
`
`

`

`Case 2:19-cv-01745-JTM-JCW Document 1 Filed 02/26/19 Page 9 of 19
`
`36.
`
`Defendants have been familiar with NSK and NSK’s HUGE ASS BEERS Family
`
`of Marks for several years.
`
`37.
`
`Defendants have sued affiliate companies of NSK and one of its directors, Billie
`
`V. Karno, for unfair competition related to property on Bourbon Street leased to Defendants by
`
`NSK’s affiliates. The lawsuit was filed in the Civil District Court for the Parish of Orleans:
`
`Pamela J. Olano, Silver Bourbon, Inc., Labeati, Inc., Bourbon Burlesque Club, Inc., Raymond
`
`Palazzolo, and Guy W. Olano, Jr. v. Billie V. Karno, Karno 410 Bourbon Real Estate, LLC, Karno
`
`327 Bourbon Real Estate, LLC, and BVK Enterprises, Inc.; Case No. 2018-5225.
`
`38.
`
`Upon information and belief, Defendants’ use of the Infringing Mark was made in
`
`retaliation to Defendants and NSK’s soured business relationship.
`
`39.
`
`Upon information and belief, Mr. Olano is a founder of all other Defendants as a
`
`“silent partner” and owner. Upon information and belief, Mr. Olano, since founding all the other
`
`Defendants, has been continuously responsible for overseeing the operations and marketing of
`
`Defendants’ goods and services, including the Defendants’ promotion and sale of beer using the
`
`Infringing Mark. Upon information and belief, Mr. Olano was personally involved in the decision
`
`to offer for sale beer using the Infringing Mark. Upon information and belief, Mr. Olano approved
`
`and authorized Defendants’ infringing actions and is a principal, driving force behind Defendants’
`
`past and continued infringement of NSK’s HUGE ASS BEERS Family of Marks.
`
`40.
`
`Defendants’ activities, as complained of herein, were and continue to be conducted
`
`willfully, in order to trade on the substantial goodwill obtained by NSK over two (2) decades,
`
`with actual knowledge that such conduct was and remains unlawful; that such conduct was and
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`remains in contravention of NSK’s rights; and that such conduct would likely confuse, mislead,
`
`and deceive an appreciable number of relevant consumers as to the source, affiliation, and
`
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`sponsorship of the goods and services emanating from Defendants and/or NSK, resulting in injury
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`to NSK’s reputation and considerable goodwill.
`
`41.
`
`Defendants’ conduct has caused, and, if allowed to continue, will continue to
`
`cause, irreparable damage to NSK’s business, reputation, and goodwill, and NSK has no adequate
`
`remedy at law.
`
`COUNT I
`
`
`FEDERAL TRADE DRESS INFRINGEMENT UNDER 32(1) OF THE LANHAM ACT,
`15 U.S.C. § 1114(1)
`
`(Against All Defendants)
`
`
`
`42.
`
`NSK repeats and re-alleges the allegations of paragraphs 1 through 41, as though
`
`fully set forth below.
`
`43.
`
`This Count, arising under Section 32(1) of The Lanham Act, 15 U.S.C. § 1114(1),
`
`is for federal trademark infringement.
`
`44.
`
`NSK and its licensees have used the trademark HUGE ASS BEERS embodied in
`
`NSK’s U.S. Trademark Registration No. 4,560,266 continuously, and in interstate commerce,
`
`since at least as early as December 1, 1996. NSK’s trademark HUGE ASS BEERS embodied in
`
`U.S. Trademark Registration No. 4,560,266 is a valid trademark identifying the source of goods,
`
`beer, provided by NSK. NSK is the senior user of the HUGE ASS BEERS trademark.
`
`45.
`
`NSK and its licensees have used the trademark HALF ASS BEERS embodied in
`
`NSK’s U.S. Trademark Registration No. 4,560,403 continuously, and in interstate commerce,
`
`since at least as early as November 22, 2013. NSK’s trademark HALF ASS BEERS embodied in
`
`U.S. Trademark Registration No. 4,560,403 is a valid trademark identifying the source of goods,
`
`beer, provided by NSK. NSK is the senior user of the HALF ASS BEERS trademark.
`
`46.
`
`NSK and its licensees have used the trademark BIG ASS BEERS continuously,
`
`
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`and in interstate commerce, since at least as early as November 22, 2013. NSK’s trademark BIG
`
`ASS BEERS is a valid trademark identifying the source of goods, beer, provided by NSK. NSK
`
`is the senior user of the BIG ASS BEERS trademark.
`
`47.
`
`NSK, and its licensees, have also invested substantial time, effort, and financial
`
`resources in the promotion of NSK’s HUGE ASS BEERS, BIG ASS BEERS and HALF ASS
`
`BEERS trademarks, in connection with the marketing, promotion, advertising, and sale of beer.
`
`48.
`
`NSK’s trademarks HUGE ASS BEERS, BIG ASS BEERS, and HALF ASS
`
`BEERS have also acquired secondary meaning in the marketplace, and are distinctive in the minds
`
`of purchasers of NSK’s beer, in that consumers have come to associate the trademarks with a single
`
`source of origin – namely, NSK, and its NSK-branded establishments. Such consumers are likely
`
`to make that same association when the trade dress is used with a competitor’s product.
`
`49.
`
`Defendants have and continue to have actual notice of the existence NSK’s
`
`exclusive trademark rights in HUGE ASS BEERS, HALF ASS BEERS, and BIG ASS BEERS.
`
`50.
`
`Defendants’ Infringing Mark, GIANT ASS BEER is confusingly similar to all of
`
`NSK’s HUGE ASS BEERS Family of Marks and NSK did not authorize or license Defendants’
`
`use of the Infringing Mark or NSK’s HUGE ASS BEERS Family of Marks.
`
`51.
`
`Defendants have created, marketed, advertised, offered for sale, and sold beer
`
`using the confusingly similar Infringing Mark with the intention of misleading, deceiving, and/or
`
`confusing consumers as to the origin of Defendants’ goods, and, with the intention of trading on
`
`NSK’s reputation and considerable goodwill.
`
`52.
`
`Defendants’ marketing, promotion, offering for sale, and sale, of beer, under the
`
`confusingly similar Infringing Mark is likely to cause, and has caused, confusion, mistake, or
`
`deception as to the source, sponsorship, or approval of Defendants’ goods by NSK. The
`
`
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`consuming public are likely to believe that Defendants’ goods originate with NSK, are licensed,
`
`sponsored, or approved by NSK, or in some way connected with or related to NSK. Defendants’
`
`infringing use of the Infringing Mark is in violation of 15 U.S.C. § 1114(1).
`
`53.
`
`Defendants’ unauthorized and infringing use of the Infringing Mark constitutes
`
`intentional and willful infringement of NSK’s rights in and to its federally registered HUGE ASS
`
`BEERS and HALF ASS BEERS trademarks in violation of 15 U.S.C. § 1114(1).
`
`54.
`
`Upon information and belief, Mr. Olano, along with Ms. Olano, since founding all
`
`the other Defendants, has been continuously responsible for overseeing the operations and
`
`marketing of Defendants’ goods and services, including the Defendants’ promotion and sale of
`
`beer using the Infringing Mark. Upon information and belief, Mr. Olano, along with Ms. Olano,
`
`was personally involved in the decision to offer for sale beer using the Infringing Mark. Upon
`
`information and belief, Mr. Olano approved and authorized Defendants’ infringing actions and is
`
`a principal, driving force behind Defendants’ past and continued infringement of NSK’s HUGE
`
`ASS BEERS Family of Marks.
`
`55.
`
`Upon information and belief, Ms. Olano, along with Mr. Olano, since founding all
`
`the other Defendants, has been continuously responsible for overseeing the operations and
`
`marketing of Defendants’ goods and services, including the Defendants’ promotion and sale of
`
`beer using the Infringing Mark. Upon information and belief, Ms. Olano, along with Mr. Olano,
`
`was personally involved in the decision to offer for sale beer using the Infringing Mark. Upon
`
`information and belief, Ms. Olano approved and authorized Defendants’ infringing actions and is
`
`a principal, driving force behind Defendants’ past and continued infringement of NSK’s HUGE
`
`ASS BEERS Family of Marks.
`
`56.
`
`As a direct and proximate result of Defendants’ trademark infringement, NSK has
`
`
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`suffered, and will continue to suffer loss of income, profits, reputation and goodwill, and
`
`Defendants’ have acquired, and will continue to unfairly acquire, income, profits, and goodwill to
`
`which they are not entitled.
`
`57.
`
` Defendants’ acts of trademark infringement will cause further, serious and
`
`irreparable injury to NSK if Defendants are not restrained from further violations of NSK’s rights.
`
`58.
`
`Pursuant to 15 U.S.C. § 1116(a), NSK is entitled to an order, preliminarily and
`
`permanently enjoining Defendants from further acts of trademark infringement.
`
`59.
`
`Pursuant to 15 U.S.C. § 1117(a), NSK is entitled to recover from Defendants the
`
`damages sustained as a result of Defendants’ aforesaid acts. NSK is unable to ascertain, at present,
`
`the full extent of the monetary damages it has suffered thereby.
`
`60.
`
`Defendants’ aforesaid conduct was intentional and willful. Accordingly, NSK is
`
`entitled to an award of treble damages against Defendants under 15 U.S.C. § 1117(a).
`
`61.
`
`Defendants’ aforesaid acts make this an exceptional case, under 15 U.S.C. §
`
`1117(a)(3), warranting an award of NSK’s attorneys’ fees and costs.
`
`COUNT II
`
`
`FEDERAL UNFAIR COMPETITION
`
`(Against All Defendant)
`
`
`
`62.
`
`NSK repeats and re-alleges the allegations of paragraphs 1 through 61, as though
`
`fully set forth below.
`
`63.
`
`This Count, arising under Section 43(a) of The Lanham Act, 15 U.S.C. §1125(a), is
`
`for federal unfair competition.
`
`64.
`
`NSK’s HUGE ASS BEERS Family of Marks have become uniquely associated with
`
`NSK, and identify NSK’s flagship goods to the public.
`
`
`
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`65.
`
`Defendants’ unauthorized use, and threatened continued use, of the GIANT ASS
`
`BEER mark which is confusingly similar to NSK’s HUGE ASS BEERS Family of Marks, in
`
`connection with a competing beer, as alleged herein, constitutes use of a false designation of origin
`
`and false or misleading representation in interstate commerce, which wrongly and falsely
`
`designates, describes, and represents the origin of Defendants’ goods as originating from or being
`
`connected with NSK, and is likely to cause confusions, or to cause mistake, or deceive as to
`
`Defendants’ affiliation, connection, or association with NSK, or as to the origin, sponsorship, or
`
`approval of Defendants’ goods by NSK in violation of Section 43(a) of The Lanham Act, 15
`
`U.S.C. § 1125(a).
`
`66.
`
`Upon information and belief, Mr. Olano, along with Ms. Olano, since founding all
`
`the other Defendants, has been continuously responsible for overseeing the operations and
`
`marketing of Defendants’ goods and services, including the Defendants’ promotion and sale of
`
`beer using the Infringing Mark. Upon information and belief, Mr. Olano, along with Ms. Olano,
`
`was personally involved in the decision to offer for sale beer using the Infringing Mark. Upon
`
`information and belief, Mr. Olano approved and authorized Defendants’ infringing actions and is
`
`a principal, driving force behind Defendants’ past and continued infringement of NSK’s HUGE
`
`ASS BEERS Family of Marks.
`
`67.
`
`Upon information and belief, Ms. Olano, along with Mr. Olano, since founding all
`
`the other Defendants, has been continuously responsible for overseeing the operations and
`
`marketing of Defendants’ goods and services, including the Defendants’ promotion and sale of
`
`beer using the Infringing Mark. Upon information and belief, Ms. Olano, along with Mr. Olano,
`
`was personally involved in the decision to offer for sale beer using the Infringing Mark. Upon
`
`information and belief, Ms. Olano approved and authorized Defe