Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1104562
`12/28/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92073993
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`Party
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`Correspondence
`Address
`
`Defendant
`International Golden Foods, Inc.
`
`JESSICA M MENDEZ
`GREENSFELDER HEMKER & GALE PC
`200 W MADISON STREET, SUITE 3300
`CHICAGO, IL 60106
`UNITED STATES
`Primary Email: jmendez@greensfelder.com
`Secondary Email(s): smeyer@greensfelder.com, ipdocket@greensfelder.com,
`cap@greensfelder.com
`312-419-9090
`
`Submission
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`Filer's Name
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`Filer's email
`
`Signature
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`Date
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`Motion to Suspend for Civil Action
`
`Susan Meyer
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`smeyer@greensfelder.com, ipdocket@greensfelder.com
`
`/Susan Meyer/
`
`12/28/2020
`
`Attachments
`
`IGF TTAB Motion to Suspend Cxl Proc 92073993.pdf(1493158 bytes )
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`

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`IN THE UNITED PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`
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`KONTI-RUS JOINT STOCK CO.
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`Petitioner,
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`v.
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`INTERNATIONAL GOLDEN
`FOODS, INC.
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`Registrant.
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`Registration No. 3,853,952
`Cancellation No. 92073993
`
`
`MOTION TO SUSPEND CANCELLATION PROCEEDING
`PENDING DISPOSITION OF DISTRICT COURT ACTION
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`Registrant, International Golden Foods, Inc., (“Registrant”), by its undersigned counsel,
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`
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`pursuant 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), hereby moves the Board to suspend the
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`current proceedings (the “TTAB Proceeding”) pending final disposition of the Federal District
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`Court case International Golden Foods, Inc. v. Konti-Rus Joint Stock Company¸ Case No. 20-CV-
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`7716. Registrant filed that lawsuit on December 23, 2020 in the United States District Court for
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`the Northern District of Illinois (Case No. 20-CV-7716) alleging willful trademark infringement
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`by Petitioner, Konti-Rus Joint Stock Company. Copies of the Complaint and Civil Cover Sheet
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`are attached as Exhibit 1.
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`
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`The Complaint seeks a judgment that Petitioner is engaged in Willful Trademark
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`Infringement under the Lanham Act (15 U.S.C. § 1114), Unfair Competition and False Designation
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`of Origin under the Lanham Act (15 U.S.C. § 1125), Consumer Fraud and Deceptive Trade
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`Practices in violation of the Illinois Consumer Fraud and Deceptive Business Practices Act (815
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`ILCS §505/2) and the Uniform Deceptive Practices Act as adopted by Illinois (815 ILCS §510/2),
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`and Common Law Unfair Competition and Passing Off based upon Petitioner’s use of the
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`91884.2
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`infringing mark BONJOUR on the same products as those sold by Registrant under its registered
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`BONJOUR mark.
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`The Trademark Rules provide in pertinent part as follows:
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`§ 2.117 Suspension of proceedings.
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`(a) Whenever it shall come to the attention of the Trademark Trial and Appeal Board that
`a party or parties to a pending case are engaged in a civil action or another Board
`proceeding which may have a bearing on the case, proceedings before the Board may
`be suspended until termination of the civil action or the other Board proceeding.
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`Trademark Rule 2.117(a).
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`
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`When the parties are involved in court proceedings concerning the same marks and issues,
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`the typical procedure of the Board is to suspend its administrative proceedings pending outcome
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`of the civil litigation. New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ 2d 1550,
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`1552 (TTAB 2011) (quoting 6 McCarthy on Trademarks and Unfair Competition § 32:47 (5th ed.
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`updated September 2017)).
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`
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`Here, the civil proceeding involves the same parties and the same marks as those at issue
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`in the TTAB Proceedings. Registrant International Golden Foods, Inc. filed the civil action against
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`Konti-Rus Joint Stock Company, the Petitioner in the TTAB proceedings. Registrant owns the
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`BONJOUR mark which it claims in the civil action that Petitioner is infringing. Petitioner claims
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`in the TTAB proceedings that despite Registrant’s continuous use and having timely renewed its
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`registration, that Registrant has abandoned its use of the mark. Accordingly, the parties and marks
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`in the TTAB Proceedings and the civil action are identical, such that the civil action will be
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`dispositive of the issues before the Board.
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`
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`Additionally, the issue before the Board is also at issue in the civil proceeding. Petitioner’s
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`abandonment claim will necessarily be resolved by the civil proceeding. But the civil proceeding
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`will also involve other matters and broader issues, such as Petitioner’s unauthorized use and
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`91884.2
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`2
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`infringement of the BONJOUR mark. In the civil action, Respondent is seeking, among other
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`remedies, damages and injunctive relief, which are not available to either party in the TTAB
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`Proceedings. Because the parties, marks, and issues in the civil action are the same and because
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`the outcome will be dispositive or at least impact the claims before the Board, suspension of the
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`TTAB Proceedings pending the outcome of the civil action between the parties is warranted.
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`
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`Moreover, judicial economy is served by immediately suspending all activity in the TTAB
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`Proceeding. See Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125
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`(1974). The parties have begun the discovery process in the TTAB Proceeding. Because the civil
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`action involves not only the issues currently before the Board, but also issues of infringement,
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`unfair competition, and deceptive trade practices, discovery in the civil action will involve
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`documents, depositions, and other information that is not being and will not be gathered or
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`produced in the TTAB Proceedings. Therefore, suspending the TTAB Proceeding in its entirety
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`would avoid wasted time and expenses for both the parties and the Board. See, e.g. Softbelly’s Inc.
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`v. Ty, Inc., 2002 WL 1844210, *3 (citing Other Telephone, 1818 USPQ 126-27) (“It would be a
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`waste of the Board’s and the parties’ time and resources to proceed to litigate this case at the Board
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`when the same issues” are pending in court.) Given the foregoing, an immediate suspension of the
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`proceedings is appropriate.
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`Finally, the Board has reached this conclusion in similar circumstances. In Other
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`Telephone, the Board stated that “it is clear” that a resolution in a civil action where the Plaintiff
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`seeks a determination as to the respective rights of the parties to use a mark would “directly affect
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`the resolution” of a proceeding before it. 181 USPQ 125, 126-27. In that proceeding, the moving
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`party filed a motion to suspend with only 8 days left in its testimony period. Because suspension
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`is standard practice when a civil action is pending, it did not take any testimony on reliance upon
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`91884.2
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`3
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`the Board’s eventual suspension of the proceeding. The Board granted the motion, over objection,
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`it reasoned that judicial economy was served by avoiding expensive and time-consuming
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`testimony in a Board proceeding when the pending civil action would impact, or even be
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`dispositive of, the issues before the Board. Id. The same reasoning applies here.
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`
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`WHEREFORE, based on the above argument and authority, Respondent International
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`Golden Foods, Inc. respectfully requests that the Board (1) grant this Motion; (2) suspend this
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`proceeding pending final disposition of the civil action between the parties, including suspension
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`of all outstanding discovery requests; and (3) grant such other and further relief as the Board deems
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`appropriate under the circumstances.
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`Dated: December 28, 2020
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`91884.2
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`Respectfully submitted,
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`GEENSFELDER, HEMKER, & GALE, P.C.
`
`
`
`
`
`/s/Susan Meyer
`By:
`Susan Meyer, Illinois 6226450
`
`smeyer@greensfelder.com
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` O. Koplan Nwabuoku, Ill. No 6317315
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`knwabuoku@greensfelder.com
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`200 W. Madison Street
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`Suite 3300 ATTN: TM DOCKET
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`Chicago, Illinois 60606
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`Telephone: (312) 419-9090
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`Facsimile: (312) 419-1930
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`
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`Attorneys for Registrant International Golden
`Foods, Inc.
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`4
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` I
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`CERTIFICATE OF SERVICE
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` hereby certify that on the 28th day of December, 2020, the foregoing was filed electronically
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`with the Trademark Trial and Appeal Board, served by operation of the TTAB’s electronic filing
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`system ESTTA, and mailed electronically to counsel of Record for Petitioner, Alexander S.
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`Lazouski, at al@lzlawoffice.com in compliance with TBMP § 113.04.
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`/s/ Susan Meyer
`Susan Meyer
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`91884.2
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`5
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`

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`Exhibit 1
`Exhibit 1
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`

`

`CIVIL COVER SHEET
`ILND 44 (Rev. 09/20)
`Case: 1:20-cv-07716 Document #: 1-3 Filed: 12/23/20 Page 1 of 2 PageID #:31
`The ILND 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
`INTERNATIONAL GOLDEN FOODS,
`INC., an Illinois Corporation,
`(b) County of Residence of First Listed Plaintiff
`
`DuPage County
`(Except in U.S. plaintiff cases)
`
`(c) Attorneys (firm name, address, and telephone number)
`Susan Meyer and O. Nwabuoku of Greensfelder, Hemker & Gale, P.C.
`200 W. Madison St., #3300, Chicago, IL 60606, 312-419-9090
`
`DEFENDANTS
`KONTI-RUS JOINT STOCK COMPANY,
`a Russian Joint Stock Company,
`
`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.
`Attorneys (If Known)
`
`II. BASIS OF JURISDICTION (Check one box, only.)
`1 U.S. Government
`3 Federal Question
`Plaintiff
`(U.S. Government not a party.)
`
`■
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (For Diversity Cases Only.)
`(Check one box, only for plaintiff and one box for defendant.)
`PTF DEF
`PTF
`DEF
`Incorporated or Principal Place of
` 1
`4
`Business in This State
`
`Citizen of This State
`
` 1
`
`■
`
`4
`
`2 U.S. Government
`Defendant
`
`4 Diversity
`(Indicate citizenship of parties in Item III.)
`
`Citizen of Another State
`
`2
`
`2
`
`Incorporated and Principal Place
`of Business in Another State
`
`Citizen or Subject of a
`Foreign Country
`
` 3
`
`■
`
`3 Foreign Nation
`
`5
`
`6
`
`5
`
` 6
`
`IV. NATURE OF SUIT (Check one box, only.)
`CONTRACT
`110 Insurance
`
`TORTS
`PERSONAL INJURY
`
`120 Marine
`
`130 Miller Act
`
`140 Negotiable Instrument
`150 Recovery of Overpayment
`& Enforcement of Judgment
`151 Medicare Act
`152 Recovery of Defaulted
`Student Loan
`(Excludes Veterans)
`153 Recovery of Veteran’s
`Benefits
`160 Stockholders’ Suits
`190 Other Contract
`195 Contract Product Liability
`196 Franchise
`
`REAL PROPERTY
`210 Land Condemnation
`220 Foreclosure
`230 Rent Lease & Ejectment
`240 Torts to Land
`2(cid:23)(cid:24) (cid:55)(cid:82)(cid:85)(cid:87)(cid:3)(cid:51)(cid:85)(cid:82)(cid:71)(cid:88)(cid:70)(cid:87)(cid:3)(cid:47)(cid:76)(cid:68)(cid:69)(cid:76)(cid:79)(cid:76)(cid:87)(cid:92)
`(cid:21)(cid:28)(cid:19)(cid:3)(cid:36)(cid:79)(cid:79)(cid:3)(cid:50)(cid:87)(cid:75)(cid:72)(cid:85)(cid:3)(cid:53)(cid:72)(cid:68)(cid:79)(cid:3)(cid:51)(cid:85)(cid:82)(cid:83)(cid:72)(cid:85)(cid:87)(cid:92)
`
`PRISONER PETITIONS
`510 Motions to Vacate
`Sentence
`530 General
`
`535 Death Penalty
`
`Habeas Corpus:
`540 Mandamus & Other
`55(cid:19) (cid:38)(cid:76)(cid:89)(cid:76)(cid:79)(cid:3)(cid:53)(cid:76)(cid:74)(cid:75)(cid:87)(cid:86)
`(cid:24)(cid:24)(cid:24)(cid:3)(cid:51)(cid:85)(cid:76)(cid:86)(cid:82)(cid:81)(cid:3)(cid:38)(cid:82)(cid:81)(cid:71)(cid:76)(cid:87)(cid:76)(cid:82)(cid:81)
`560 Civil Detainee -
`Conditions
`of Confinement
`
`PERSONAL INJURY
`
`530 General
`367 Health Care(cid:18)
`Pharmaceutical
`Personal Injury
`Product Liability
`368 Asbestos Personal
`Injury Product
`Liability
`
`310 Airplane
`315 Airplane Product(cid:3)(cid:47)(cid:76)(cid:68)(cid:69)(cid:76)(cid:79)(cid:76)(cid:87)(cid:92)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)
`320 Assault, Libel & Slander
`(cid:22)(cid:22)(cid:19)(cid:3) (cid:41)(cid:72)(cid:71)(cid:72)(cid:85)(cid:68)(cid:79)(cid:3) (cid:40)(cid:80)(cid:83)(cid:79)(cid:82)(cid:92)(cid:72)(cid:85)(cid:86)(cid:10)
`(cid:3) (cid:3) (cid:3) (cid:3) (cid:47)(cid:76)(cid:68)(cid:69)(cid:76)(cid:79)(cid:76)(cid:87)(cid:92)(cid:3)
`340 Marine
`345 Marine Product Liability
`350 Motor Vehicle
`355 Motor Vehicle Product
`Liability
`360 Other Personal Injury
`362 Personal Injury - Medical
`Malpractice
`
`PERSONAL PROPERTY
`
`370 Other Fraud
`
`371 Truth in Lending
`
`380 Other Personal
`Property Damage
`385 Property Damage
`Product Liability
`
`CIVIL RIGHTS
`(cid:3) (cid:23)(cid:23)(cid:19)(cid:3) (cid:50)(cid:87)(cid:75)(cid:72)(cid:85)(cid:3) (cid:38)(cid:76)(cid:89)(cid:76)(cid:79)(cid:3) (cid:53)(cid:76)(cid:74)(cid:75)(cid:87)(cid:86)
`(cid:3)441 Voting
`(cid:3)442 Employment
`443 Housing(cid:18)(cid:36)(cid:70)(cid:70)(cid:82)(cid:80)(cid:80)(cid:82)(cid:71)(cid:68)(cid:87)(cid:76)(cid:82)(cid:81)(cid:86)
`(cid:3) 445 Amer. w/(cid:3)(cid:3)Disabilities(cid:16)
`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)Employment
`(cid:3)446 Amer. w/Disabilities -
`Other
`448 Education
`
`BANKRUPTCY
`422 Appeal 28 USC 158
`423 Withdrawal
`28 USC 157
`
`FORFEITURE/PENALTY
`625 Drug Related Seizure
`of Property
`21 USC 881
`690 Other
`
`IMMIGRATION
`462 Naturalization
`Application
`463 Habeas Corpus –
`Alien Detainee
`(Prisoner Petition)
`465 Other Immigration
` Actions
`
`OTHER STATUTES
`375 False Claims Act
`376 Qui Tam (31 USC
` 3729 (a))
`400 State Reapportionment
`
`410 Antitrust
`430 Banks and Banking
`450 Commerce
`460 Deportation
`470 Racketeer Influenced
`and Corrupt
`Organizations
`480 Consumer Credit
`
`485 Telephone Consumer
`
`Protection Act (TCPA)
`490 Cable/Sat TV
`850 Securities/Commodities/
`Exchange
`890 Other Statutory Actions
`891 Agricultural Arts
`893 Environmental Matters
`895 Freedom of Information
`Act
`896 Arbitration
`899 Administrative
`Procedure
`Act/Review or Appeal of
`Agency Decision
`950 Constitutionality of
`State Statutes
`
`LABOR
`710 Fair Labor Standards
`Act
`720 Labor/Management
`Relations
`
`740 Railway Labor Act
`751 Family and Medical
` Leave Act
`790 Other Labor Litigation
`791 Employee Retirement
`Income Security Act
`
`PROPERTY RIGHTS
`820 Copyright
`830 Patent
`835 Patent - Abbreviated
`New Drug Application
`840 Trademark
`(cid:27)(cid:27)(cid:19)(cid:3)(cid:39)(cid:72)(cid:73)(cid:72)(cid:81)(cid:71)(cid:3)(cid:55)(cid:85)(cid:68)(cid:71)(cid:72)(cid:3)(cid:54)(cid:72)(cid:70)(cid:85)(cid:72)(cid:87)(cid:86)(cid:3)
`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:36)(cid:70)(cid:87)(cid:3)(cid:82)(cid:73)(cid:3)(cid:21)(cid:19)(cid:20)(cid:25)(cid:3)(cid:11)(cid:39)(cid:55)(cid:54)(cid:36)(cid:12)
`SOCIAL SECURITY
`861 HIA (1395ff)
`862 Black Lung (923)
`863 DIWC/DIWW
`(405(g))
`864 SSID Title XVI
`865 RSI (405(g))
`
`FEDERAL TAXES
`870 Taxes (U.S. Plaintiff
` or Defendant
`871 IRS—Third Party
`26 USC 7609
`
`V. ORIGIN (Check one box, only.)
`1 Original
`2 Removed from
`Proceeding
`State Court
`
`3 Remanded from
`Appellate Court
`
`4 Reinstated
`or Reopened
`
`5 Transferred
`from Another
`District
`(specify)
`VII. PREVIOUS BANKRUPTCY MATTERS (For nature of suit 422 and
`423, enter the case number and judge for any associated bankruptcy matter previously adjudicated by
`a judge of this Court. Use a separate attachment if necessary.)
`
`6 Multidistrict
`Litigation -
`Transfer
`
`8 Multidistrict
`Litigation -
`Direct File
`
`VI. CAUSE OF ACTION ( Enter U.S. Civil Statute under which you are filing and
`write a brief statement of cause.)
`15 U.S.C. § 1125. Action for Trademark Infringement.
`VIII. REQUESTED IN
`Check if this is a class action under Rule 23,
`COMPLAINT:
`F.R.CV.P.
`IX. RELATED CASE(S) IF ANY (See instructions):
`X.
`Is this a previously dismissed or remanded case?
`12/23/2020
`Date: ___________________________________________
`
`Demand $
`
`75,000.01
`
`■
`
`Judge
`
`CHECK Yes only if demanded in complaint:
`Jury Demand:
` Yes
`No
`Case Number
`No If yes, Case # Name of Judge
`/s /Susan Meyer
`Signature of Attorney of Record ______________________________________________
`
`Yes
`
`■
`
`

`

`Case: 1:20-cv-07716 Document #: 1 Filed: 12/23/20 Page 1 of 14 PageID #:1
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`IN THE UNITED STATES DISTRICT COURT FOR
`THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`
`
`INTERNATIONAL GOLDEN FOODS,
`INC.,
`an Illinois Corporation,
`
`
`
`v.
`
`KONTI-RUS JOINT STOCK
`COMPANY,
`a Russian Joint Stock Company,
`
`
`
`
`
`)
`
`)
`
`)
`
`)
`) No. 20-cv-7716
`)
`
`) JURY DEMAND
`)
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`)
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`)
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`)
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`)
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`
`COMPLAINT
`
`Plaintiff,
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`Defendant.
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`Plaintiff, International Golden Foods, Inc. (“IGF”), by and through its attorneys,
`
`Greensfelder, Hemker, & Gale, P.C., for its Complaint against Defendant, Konti-Rus Joint Stock
`
`Company. (“Konti”), alleges as follows:
`
`PRELIMINARY STATEMENT
`
`1. This is an action for trademark infringement, unfair competition, and passing off
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`under 15 U.S.C. § 1125, violation of the Illinois Consumer Fraud and Deceptive Business
`
`Practices Act and the Uniform Deceptive Trade Practices Act, 815 ILCS 505/1 et seq.; 815 ILCS
`
`510/1 et seq., and unfair competition under common law.
`
`2.
`
`Plaintiff IGF produces, imports, and distributes packaged foods that are sold in
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`supermarkets and retail establishments throughout the United States. Since at least December 1,
`
`2008, IGF has sold various packaged foods and confectionaries under its BONJOUR product line.
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`IGF owns a federal trademark registration for the word mark BONJOUR (U.S. Reg. No.
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`3853592). A true and accurate copy of IGF’s trademark registration is attached as Exhibit 1. IGF
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`has made continuous use of its mark for over 20 years. Its BONJOUR trademark registration was
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`91503.5
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`Case: 1:20-cv-07716 Document #: 1 Filed: 12/23/20 Page 2 of 14 PageID #:2
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`deemed incontestable in 2016. See Exhibit 1. In addition, IGF has developed substantial
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`consumer recognition and good will in its BONJOUR mark. IGF’s BONJOUR mark is excerpted
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`from some of its packaging below:
`
`
`
`
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`3. On or about April 17, 2020, IGF learned that Defendant Konti was selling a
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`packaged cookie product consisting of a cookie topped with a soufflé filling and coated with
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`chocolate using the identical trademark BONJOUR. Konti attempted to obtain trademark
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`registrations for the word mark KONTI BONJOUR (U.S. App. Ser. No. 88740631) and
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`BONJOUR KONTI & Design (U.S. App. Ser. No. 88740636), as shown below:
`
`
`
` The United States Patent and Trademark Office refused Konti’s trademark applications based on
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`a likelihood of confusion with IGF’s BONJOUR trademark “not only to prevent buyer confusion
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`as to the source of the goods, but to protect the registrant from adverse commercial impact due to
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`use of a similar mark by a newcomer.” A true and accurate copy of the Trademark Office record
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`refusing registration of Konti’s BONJOUR KONTI & Design (U.S. App. Ser. No. 88740636)
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`mark is attached as Exhibit 2.
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`4. After being informed of the likelihood of confusion with IGF’s BONJOUR
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`trademark, and without contacting IGF’s counsel of record, Konti filed a baseless cancellation
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`proceeding with the Trademark Trial and Appeal Board (Proceeding No. 92073993), seeking
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`cancellation of IGF’s trademark registration in an effort to misappropriate rights to IGF’s
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`BONJOUR mark.
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`91503.5
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`2
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`Case: 1:20-cv-07716 Document #: 1 Filed: 12/23/20 Page 3 of 14 PageID #:3
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`5.
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`IGF now seeks relief from this Court to enjoin Konti’s continued intentional
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`infringement of IGF’s BONJOUR trademark. Because the Trademark Office cannot issue an
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`injunction to stop Konti’s continued trademark infringement or award damages to compensate
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`IGF for Konti’s intentional trademark infringement, IGF files this Action to fully resolve the
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`Parties’ respective claims in one proceeding and contemporaneously with filing this Action, IGF
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`is requesting that the Trademark Trial and Appeal Board stay its proceeding pending resolution
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`of this litigation. Without relief from this Court, even if Konti’s trademark applications are
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`refused, Konti’s ongoing willful and intentional infringement of IGF’s trademark will continue to
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`damage IGF and cause irreparable harm to IGF’s business and reputation.
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`THE PARTIES
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`6.
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`Plaintiff, International Golden Foods, Inc. is an Illinois Corporation, with its
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`principal place of business located at 819 Industrial Drive, Bensenville, Illinois 60106, which
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`does business in Illinois and throughout the United States.
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`7. Defendant, Konti-Rus Joint Stock Company, is a Russian Joint Stock Company
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`with its principal place of business located at 13 Zolotaya St., Kursk, 305000, Russia, doing
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`business in Illinois, and throughout the United States.
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`JURISDICTION AND VENUE
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`8. This Court has subject matter jurisdiction over the subject matter of the action
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`under 15 U.S.C. §1121, 28 U.S.C. §§ 1331 and 1338(a) and (b) and has supplemental jurisdiction
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`under 28 U.S.C. § 1367 for IGF’s state law claims.
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`9. This Court also has subject matter jurisdiction pursuant to 28 USC §1332 based
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`on diversity of citizenship because the Plaintiff is an Illinois Corporation, the Defendant is a
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`foreign corporation incorporated in Russia doing business in the United States by selling the
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`infringing products throughout the United States, including in this district, and the amount in
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`controversy exceeds $75,000.00, exclusive of interest and costs.
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`10. This Court has personal jurisdiction over Defendant because the Defendant
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`conducts business in this District by selling and distributing infringing products for sale in this
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`District.
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`IGF’S BONJOUR TRADEMARK
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`11. For over thirty years, IGF has been a leader in the production, manufacturing, and
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`distribution of international food products. IGF has distributed its BONJOUR product line in the
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`United States since at least as early as 2008. After over 20 years of widespread and continuous
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`use, IGF has developed substantial goodwill and consumer recognition as the source of premium
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`quality confectionary packaged foods under the BONJOUR mark.
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`12.
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`In addition to its common law rights, IGF owns a federal trademark registration
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`for the word mark BONJOUR, Registration No. 3853592, issued on September 28, 2010, for
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`“Candies; Candy; Candy bars; Candy decorations for cakes; Candy for food; Candy with cocoa;
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`Chocolate candies; Chocolates and chocolate based ready to eat candies and snacks;
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`Confectionery made of sugar; Confectionery, namely, pastilles; Frozen confectionery; Starch-
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`based candies (ame)[sic]; Sweets” with dates of first use in commerce at least as early as
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`December 1, 2008. IGF has made continuous use of the BONJOUR marks since at least as early
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`as December 1, 2008. On March 28, 2016, the mark was deemed incontestable. See Exhibit 1.
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`IGF exclusively holds the right, title, and interest to these marks. A true and accurate copy of
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`IGF’s trademark registration is attached as Exhibit 1.
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`KONTI’S TRADEMARK INFRINGMENT
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`13. Many years after IGF adopted and registered its BONJOUR mark, Konti entered
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`the U.S. market selling directly competing packaged cookies using the identical mark BONJOUR
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`in a similar stylized font.
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`14. A comparison of the product packaging side-by-side illustrates the substantial
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`similarity between IGF’s BONJOUR products and Konti’s infringing BONJOUR products:
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`INTERNATIONAL GOLDEN FOODS
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`KONTI
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`1
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`1 The product image shown appears on Konti’s website at: http://www.konti.com/en/catalog/ukraine/product/13847
`(accessed on December 16, 2020).
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`The term BONJOUR appears in a similar cursive script font angled and underlined.
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`15. IGF’s BONJOUR product line includes different types of packaged confectionary
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`food products, including chocolate covered pastries (as shown above) that directly compete with,
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`or are highly related to, Konti’s BONJOUR products, such that consumers are likely to believe
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`that the products emanate from the same source or are otherwise affiliated or associated.
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`16. Konti filed applications to register the trademarks KONTI BONJOUR (U.S. App.
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`Ser. No. 88740631) and BONJOUR KONTI & Design (U.S. App. Ser. No. 88740636). The
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`Trademark Office refused Konti’s trademark applications based on a likelihood of confusion with
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`IGF’s BONJOUR mark. Exhibit 2. When the Trademark Office refused Konti’s trademark
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`applications, in addition to observing that “the marks are highly similar” and that the products are
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`“highly related confections and sweets,” the Examining Attorney explained that the basis for the
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`refusal was “not only to prevent buyer confusion as to the source of the goods, but to protect the
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`registrant [IGF] from adverse commercial impact due to use of a similar mark by a newcomer.”
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`Exhibit 2.
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`17. Despite adding the term KONTI to its trademark filings, images of Konti’s products
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`on retail websites and in the product catalogue for Konti’s U.S. distributor Gold Star use the
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`identical term BONJOUR without incorporating the term KONTI as shown below:
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`2
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`2 See https://russianfoods.com/products/bonjor-with-strawberry-cream?_pos=3&_sid=e15ee882a&_ss=r (accessed
`on December 16, 2020).
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`3
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`18. When the Trademark Office refused Konti’s trademark applications, the Examining
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`Attorney observed that the specimen provided to demonstrate use of the mark in commerce was
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`“digitally created or altered to include the mark or a mockup of how the mark may be displayed.”
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`Exhibit 2.
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`19.
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`In other words, the Trademark Office recognized that Konti had failed to present
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`evidence that it used the term KONTI in conjunction with BONJOUR in the marketplace. Retailer
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`product images that do not show the term KONTI incorporated on the product packaging and the
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`digitally altered specimen filed with the trademark office demonstrate that Konti uses the identical
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`mark BONJOUR without incorporating the term KONTI or any other terms that might distinguish
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`its products from IGF’s directly competing products. As a result, Konti’s use of the BONJOUR
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`3See http://www.goldstarusa.com/assets/media/images/catalog/Gold%20Star%20Catalog%202019%20Final%20Dra
`ft.pdf (accessed on December 16, 2020).
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`trademark in commerce is even more similar to IGF’s registered trademark than the digitally
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`altered version rejected by the Trademark Office.
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`20. After the Trademark Office notified Konti of IGF’s superior rights, rather than
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`taking reasonable steps to avoid confusing consumers, Konti filed a baseless proceeding
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`challenging IGF’s trademark registration in an effort to interfere with and usurp IGF’s valid and
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`superior rights in the BONJOUR mark.
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`21. Konti intentionally adopted an identical trademark and similar trade dress. At the
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`time Konti entered the market and at the time Konti applied to register the KONTI BONJOUR and
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`BONJOUR KONTI & Design marks, Konti knew, or should have known, about IGF and its prior
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`use of its BONJOUR mark for directly competing products. Konti indicates that it entered the
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`U.S. market in 2015 (as alleged in Konti’s trademark application for BONJOUR KONTI & Design
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`U.S. App. Ser. No. 88740636), 7 years after IGF began using its BONJOUR mark and 5 years
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`after IGF’s trademark registration was issued on September 28, 2010. Exhibit 1.
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`22. Because IGF’s BONJOUR mark had been registered in the United States for 5 years
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`at the time Konti entered the market, to the extent Konti did not have actual notice of IGF’s prior
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`rights, at a minimum, Konti had constructive notice based on IGF’s trademark registration.
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`23. As the Trademark Office has already indicated, Konti’s infringing product
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`packaging is likely to cause confusion and deceive potential customers as to the source of Konti’s
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`products. Konti’s confusingly similar product packaging improperly suggests that IGF has
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`manufactured, sponsored, or endorsed Konti’s products or that Konti’s products are otherwise
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`affiliated or associated with IGF.
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`24. Despite receiving clear notice of IGF’s superior rights from the Trademark Office
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`and IGF, Konti continues to infringe. Konti has not modified its packaging, removed infringing
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`products from store shelves, provided notice to consumers, or otherwise taken any reasonable
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`steps to avoid confusion.
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`25. Konti’s ongoing willful and intentional infringement of IGF’s trademark has
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`caused, and continues to cause, irreparable harm to IGF’s business and reputation for which there
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`is no adequate remedy at law.
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`COUNT I: TRADEMARK INFRINGEMENT
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`26.
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`IGF realleges and incorporates by reference paragraphs 1-25 as though fully
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`alleged herein.
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`27. Konti’s use in commerce of the trademark BONJOUR, whether combined with the
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`term KONTI or used separately, in connection with packaged food products is likely to cause
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`confusion, or to cause mistake, or to deceive consumers and mislead the relevant public as to the
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`source of its products or as to an affiliation, connection, or association between Konti or its
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`products and IGF and its products.
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`28. The foregoing conduct constitutes trademark infringement in violation of 15
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`U.S.C. § 1114.
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`29.
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`IGF has been damaged as a direct and proximate result of the acts of Konti and
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`those acting in concert with Konti in an amount in excess of $75,000 to be determined at trial.
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`30. Konti’s conduct has caused great and irreparable injury to IGF and, unless such
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`conduct is enjoined, will continue to cause, and IGF will continue to suffer, great and irreparable
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`injury for which IGF has no adequate remedy at law.
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`COUNT II: UNFAIR COMPETITION, AND FALSE DESIGNATION OF ORIGIN
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`31. IGF incorporates paragraphs 1-30 as though fully alleged herein.
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`32. Konti’s use in commerce of IGF’s trademark, alone and in combination with other
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`elements, is likely to cause confusion, or to cause mistake, or to deceive consumers and mislead
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`the relevant public as to the affiliation, connection, or association of Konti or its products with
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`IGF or its products.
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`33. Konti used IGF’s BONJOUR trademark, alone and in combination with other
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`elements, to pass off its competing products as IGF’s products.
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`34. The foregoing conduct of Konti constitutes unfair competition in violation of 15
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`U.S.C. § 1125.
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`35. Konti’s infringing conduct was deliberate, intentional, willful, and with knowledge
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`of IGF’s superior rights.
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`36.
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`IGF has been damaged as a direct and proximate result of the acts of Konti and
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`those acting in concert with Konti in an amount in excess of $75,000 to be determined at trial.
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`37. Konti’s conduct has caused great and irreparable injury to IGF, and unless such
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`conduct is enjoined, it will continue to cause, and IGF will continue to suffer, great and irreparable
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`injury for which IGF has no adequate remedy at law.
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`COUNT III: CONSUMER FRAUD AND DECEPTIVE TRADE PRACTICES
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`38. IGF incorporates paragraphs 1-37 as though fully alleged herein.
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`39. Konti has engaged in unfair or deceptive acts or practices, namely passing off
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`goods or services as those of IGF; causing a likelihood of confusion or of misunderstanding as to
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`the source, sponsorship, or approval of Konti’s goods; causing a likelihood of confusion or
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`misunderstanding as to affiliation, connection or association with IGF; and otherwise engaging in
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`conduct creating a likelihood of confusion or of misunderstanding in the minds of consumers.
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`Case: 1:20-cv-07716 Documen