Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1273082
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`Filing date:
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`03/20/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`92081574
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`Party
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`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
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`Signature
`
`Date
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`Defendant
`Crunchy Tobacco Inc
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`CRUNCHY TOBACCO INC
`P. O. BOX 6028
`ARLINGTON, VA 22206
`UNITED STATES
`Primary email: crunchytobacco@gmail.com
`7035933511
`
`Motion to Dismiss - Rule 12(b)
`
`Michael C. Whitticar
`
`mikew@novaiplaw.com
`
`/Michael C. Whitticar/
`
`03/20/2023
`
`Attachments
`
`Motion to Dismiss or stay TTAB petition with Exhibit A.pdf(1334314 bytes )
`
`
`
`ESTTA Tracking number:
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`ESTTA1273082
`
`Filing date:
`
`03/20/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92081574
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Crunchy Tobacco Inc
`
`CRUNCHY TOBACCO INC
`P. O. BOX 6028
`ARLINGTON, VA 22206
`UNITED STATES
`Primary email: crunchytobacco@gmail.com
`7035933511
`
`Motion to Dismiss - Rule 12(b)
`
`Michael C. Whitticar
`
`mikew@novaiplaw.com
`
`/Michael C. Whitticar/
`
`03/20/2023
`
`Attachments
`
`Motion to Dismiss or stay TTAB petition with Exhibit A.pdf(1334314 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`__________________________________________
`:
`:
`:
`:
`:
`: Cancellation No.: 92081574
`:
`:
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`NATHAN M. KIGHT,
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`
`
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`Petitioner,
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`v.
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`ESTTA Tracking Number for
`Petition: ESTTA1265293
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`CRUNCHY TOBACCO, INC.,
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`Respondent.
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`_________________________________________ :
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`MOTION TO DISMISS OR STAY
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`
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`Respondent respectfully submits this motion to dismiss Petitioner’s Petition for failure to
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`state a claim on which may be granted, or in the alternative, to stay this proceeding pending
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`resolution of the related case now pending the United States District Court for the District of
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`Colombia.
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`
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`Mr. Kight’s Petition is due to be dismissed for failure to state a claim based on improper
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`group pleading. Group pleading which fails to specify the conduct or rights of the relevant
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`parties is insufficient, and such a petition or complaint is due to be dismissed. Plusgrade L.P. v.
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`Endava Inc., 20230 U.S. Dist. LEXIS 39114 ** 7-8 (S.D.N.Y. 2023); Magruder v. Halliburton
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`Co., 359 F. Supp. 2d 452, 466 (N.D. Tex. 2018) (“management” constitutes insufficient group
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`pleading); Jien v. Perdue Farms, Inc. 2020 U.S. Dist. LEXIS 169 582 * fn. 9 (D. Md. 2020)
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`(“Averages are more or less another form of inappropriate group pleading, lumping the parties
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`together” without specifying the conduct or rights of the separate parties).
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`Mr. Kight personally and individually is the registrant and Petitioner. Funnels, LLC is a
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`separate legal and commercial entity. However, the Petition repeatedly refers to Petitioner as “it”
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`1
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`
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`and “its,” failing to distinguish between use or other conduct by Mr. Kight, or use or other
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`conduct by the LLC, Funnels, LLC. See Petition §§ 3-5, 13-14, 16, 24-25 and 30.
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`
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`Petitioner’s petition and registration improperly lists the petitioner as Nathan M. Kight,
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`d/b/a Funnels, LLC. This is improper because an LLC is a different and separate legal and
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`commercial entity from its owner. An individual person can “do business as” or “d/b/a” a brand
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`name or trade name, but he cannot “do business as” or “d/b/a” a separate legal and commercial
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`entity such as a corporation or an LLC. Thus, both the petition and registration are improper, and
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`Mr. Kight’s Petition fails to state a claim on which relief may be granted.
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`For the foregoing reasons, Mr. Kight’s petition is due to be dismissed for failing to state a
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`claim on which relief may be granted.
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`
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`In addition, a related case is now pending in the United States District Court for the
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`District of Colombia (Case No. 1:21-cv-03189-CKK: Kight v. Crunchy Tobacco). Infringement
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`and validity of the parties’ marks is currently at issue and being litigated in that case. See Ex. A:
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`Answer to Counterclaim (Defense No. 1). Therefore, in the interests of justice and judicial
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`economy, this case and proceedings on Plaintiff’s petition should be stayed pending litigation
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`and completion of the D.C. District Court civil action.
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`
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`Respectfully Submitted This 20th Day of March, 2023:
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`By: /s/ Michael C. Whitticar
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` Counsel
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`Michael C. Whitticar, Esq. (VSB No. 32968)
`NOVA IP LAW, PLLC
`155 Broadview Avenue, Suite 200
`Warrenton, VA 20186
`Tel: (571) 386-2980
`Fax: (855) 295-0740
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`2
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`Email: mikew@novaiplaw.com
`Counsel for Respondent Crunchy Tobacco, Inc.
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`ESTTA/ECF FILING CERTIFICATE
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`I hereby certify that on this 20th Day of March, 2023, I caused the foregoing motion to
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`dismiss or stay to be served by email and transmitted through the TTAB’s ESTTA case filing
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`system to the following counsel of record:
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`Lev Ivan Gabriel Iwashko
`DC Bar No. 1022054
`The Iwashko Law Firm, PLLC
`1250 Connecticut Ave., NW
`Suite 700
`Washington, DC 20036
`Tel: 202-441-5043
`Lev@iwashkoLaw.com
`AttorneyLev@gmail.com
`Attorney for the Petitioner
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`/s/ Michael C. Whitticar
` Michael C. Whitticar
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`3
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`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page 1 of1s8
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLUMBIA
`
`°
`
`FUNNELS,LLC,et al.,
`
`Plaintiff,
`
`Vv.
`
`CRUNCHY TOBACCO,INC.,
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`Defendant.
`
`:
`: Civil Action No. 21-cv-03189 CKK.
`
`PLAINTIFFS’ ANSWER TO DEFENDANT’S COUNTERCLAIM
`
`COME NOW,Plaintiffs and Counterclaim Defendants Nathan M. Kight and Funnels,
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`LLC,by counsel, and respectfully submit their Answer and Defenses to
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`Defendant’s/Counterclaim Plaintiff's Counterclaim ,as follows:
`
`COMPLAINT:*
`
`PARTIES
`
`1.
`
`Crunchyis a Virginia corporation with its principal place of business in
`Arlington, Virginia.
`
`ANSWER:
`
`Admitted.
`
`COMPLAINT:
`
`2.
`
`Nathan Kightis a resident, citizen and domiciliary of the State of Maryland.
`Kight has directed, supervised and personally participated in the tortious
`conduct of Funnels, LLC which is described in this Complaint.
`
`ANSWER:
`
`Admitted in Part. Denied in Part. Plaintiffs admit that Nathan Kight is a resident, citizen
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page 2 of 18
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`and domiciliary of the State of Maryland. Plaintiffs deny that “Kight has ... participated in [any]
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`tortious conduct of Funnels, LLC”, and further deny that any tortious conduct has occurred on
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`behalf of Plaintiffs.
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`COMPLAINT:
`
`3.
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`Funnels, LLC is a Maryland LLC withits principal place of business in
`Maryland. Kightis believed alleged to be the sole member and managerof
`Funnels, LLC.
`
`ANSWER:
`
`Admitted.
`
`COMPLAINT:
`
`JURISDICTION AND VENUE
`
`4.
`
`Jurisdiction and venue over Kight, Funnels and Crunchy’s counterclaim are
`properin this Court because Kight and Funnels subjected themselves to
`jurisdiction here byfiling their original complaint here. In addition, Kight
`and Funnels regularly sell substantial quantities of their infringing tobacco
`products and packagingin the District of Columbia.
`
`ANSWER:
`
`Admitted in part. Deniedin part. Plaintiffs admit jurisdiction and venue over Kight,
`
`Funnels and Crunchy’s counterclaim are proper in this Court because Kight and Funnels
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`subjected themselves to jurisdiction here byfiling their original complaint here. Plaintiffs deny
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`that theysell infringing products and packaging.
`
`COMPLAINT:
`
`5.
`
`This Court has ancillary, supplemental, diversity and federal question
`jurisdiction over Crunchy’s Counterclaim, which arises from the same
`transactions and occurrences, and from the same nucleusof operativefacts,
`as Plaintiffs’ claims, and which arise in substantial part under federal
`
`2
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page 3 of 18
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`statutes including the Lanham Act and the Copyright Act. 28 U.S.C. §§ 1121,
`1333, 1338 and 1367.
`
`ANSWER:
`
`Admitted.
`
`COMPLAINT:
`
`6.
`
`The amountin controversy exceeds $75,000, and none of Funnels' members
`or owners arecitizens or domiciliaries of Virginia. Therefore, complete
`diversity of citizenship exists, and this Court also has diversity jurisdiction
`over this Counterclaim.
`
`ANSWER:
`
`Admitted in Part. Denied in Part. Plaintiffs admit that the amount in controversy
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`exceeds $75,000, none of Funnels' members or owners are citizens or domiciliaries ofVirginia,
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`complete diversity of citizenship exists, and this Court also has diversity jurisdiction over this
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`Counterclaim. Plaintiffs deny that the amountin controversy stems from this Counterclaim, but
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`instead, stems from Plaintiffs original Complaint.
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`COMPLAINT:
`
`FACTS
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`7.
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`Crunchyis the ownerof valid and subsisting United States Trademark
`registrations for the “CRUNCHY”family of trademarks. These include:
`CRUNCHYFUNNEL(Reg. No. 6,662,925), CRUNCHY TOBACCO (Reg.
`No. 6,662,926), CRUNCHY SPRINKLE(Reg. No. 6,662,927), and DARK
`CRUNCHY FUNNEL(Reg. No. 6,682,380). In addition, Crunchy has
`common-law rights in each of these marks, and in the closely related and
`similar mark “CRUNCHY FUNNEL.” Crunchyhas been usingits
`CRUNCHY FUNNEL and CRUNCHYFUNNEL marks in interstate
`commerce, and in commercial advertising and promotion,since at least 2015.
`Crunchyhasbeen using the rest of the CRUNCHY family marks
`(CRUNCHY TOBACCO, CRUNCHY SPRINKLE and DARK CRUNCHY
`FUNNEL)in interstate commerce, and in commercial advertising and
`promotion,since at least 2010.
`
`3
`
`
`
`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 4 of 18
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`ANSWER:
`
`Admitted only that the registrations were issued. Denied that they are valid or
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`enforceable.
`
`COMPLAINT:
`
`8.
`
`Through extensive sales, use and advertising of the Crunchy family of marks
`in Maryland, Washington DC and Virginia, Crunchy has acquired common-
`law rights in each of the Crunchy marks, which have acquired distinctiveness
`and which distributors and consumers associated with Crunchy.
`
`ANSWER:
`
`Denied due to lack of sufficient knowledge and information.
`
`COMPLAINT:
`
`9.
`
`Crunchy’s family of Crunchy marks, andits rights therein, are senior to and
`predate the alleged trademarkuse and rights of Kight and Funnels.
`
`ANSWER:
`
`Denied. Defendant’s family of Crunchy marks do not predate trademark use and rights
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`of Plaintiffs’ marks.
`
`COMPLAINT:
`
`10.
`
`‘In addition, Crunchy ownsand has a United States federal copyright
`registration (Reg. No. VA0002316533) and valid copyrights in the graphic
`logo on the front of the CRUNCHY FUNNELpackages (the “Crunchy
`Copyright”), which Kight and Funnels have knockedoff intentionally and in
`bad faith with an exact copy of Crunchy’s CRUNCHY FUNNELlogo and
`packaging. The copycat packaging of Kight’s and Funnels’ CRUNCHY
`FUNNEL products is substantially similar to, and in fact nearly identical to,
`the copyrighted design logo on Crunchy’s CRUNCHY FUNNELproducts
`and packaging.
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page 5 of 18
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`ANSWER:
`
`Denied due to lack of sufficient knowledge and information.
`
`COMPLAINT:
`
`11.
`
`The copycat and counterfeit logo and trademark on Kight’s and Funnels’
`CRUNCHY FUNNELproducts is substantially similar to, and in fact nearly
`identical to, the trademark on Crunchy’s CRUNCHY FUNNELtobacco
`products and packaging.
`
`ANSWER:
`
`Deniedthat Plaintiffs have a copycat and counterfeit logo and trademark. Admitted that
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`Crunchy’s use of CRUNCHY FUNNELis substantially similar to, and in fact nearly identical to
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`Plaintiffs’ trademarks.
`
`COMPLAINT:
`
`12.
`
`Since the introduction of Crunchy’s popular CRUNCHY FUNNELtobacco
`product, Kight and Funnels have, intentionally and in bad faith, introduced
`their own counterfeit, knock-off, copycat CRUNCHY FUNNELtobacco
`products, the trademark and packaging of which are nearly identical to
`Crunchy’s trademarked and copyrighted CRUNCHY FUNNELtrademark
`and packaging. (Ex. A).
`
`ANSWER:
`
`Denied. Denied. Plaintiffs deny the above allegations andassert that they have not
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`created counterfeit, knock-off, copycat CRUNCHY FUNNELtobacco products.
`
`COMPLAINT:
`
`13.
`
`In addition, to unfairly compete with Crunchy, and to expand their ownsales
`and distribution at the expense of Crunchy’s, Kite and Funnels haveillegally
`sold to distributors, retailers and consumers underthetable, for cash, and
`
`5
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/U9/22 Page 6 of 18
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`without charging, collecting or reporting sales or tobacco taxes, in violation
`of state and federal tobacco sales taxation laws and regulations.
`
`ANSWER:
`
`Denied. Additionally, Plaintiffs caution Defendant of the impropriety presented in the
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`above complaint number 13, with regard to baseless and unwarranted allegations and accusations
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`of criminal activity, which Plaintiffs did not commit.
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`COUNT I: FEDERAL TRADEMARK INFRINGEMENT.
`
`COMPLAINT:
`
`14.
`
`Crunchy incorporates by reference all prior paragraphsto this Counterclaim
`as though fully set forth herein.
`
`ANSWER:
`
`Plaintiff incorporates by references its foregoing responses to Paragraphs | through 14 of
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`Defendant’s Counterclaim as though expressly set forth herein.
`
`COMPLAINT:
`
`15.
`
`Kight and Funnels have willfully and intentionally infringed the Crunchy
`family of marks, including especially CRUNCHYFUNNEL and CRUNCHY
`FUNNEL,bycreating, purchasing, selling and advertising its own
`counterfeit, copycat, knock-off CRUNCHY FUNNELlogoand packaging to
`the same distributors and customers, in the same geographic area (Virginia,
`Maryland and DC) where Crunchy advertises andsells its original, prior,
`senior tobacco products under Crunchy’s original, senior and prior
`substantially similar and almost identical CRUNCHY FUNNEL and
`CRUNCHYFUNNELtrademarks.
`
`ANSWER:
`
`Denied. Plaintiffs deny the above allegations and assert that they have not willfully and
`
`intentionally infringed the Crunchy family of marks, and have not created counterfeit, copycat,
`
`6
`
`
`
`Case 1'21-cv-U3189-CKK Document 26 Filed 11/U9/22 Page / of 18
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`knock-off CRUNCHY FUNNELlogosor packaging.
`
`COMPLAINT:
`
`16.
`
`This conduct by Kight and Funnels constitutes trademark infringementin
`violation of the federal Lanham Act.
`
`ANSWER:
`
`Denied. Plaintiffs have not performed any type of trademark infringementin violation of
`
`the federal Lanham Act.
`
`COMPLAINT:
`
`17.
`
`The trademarkinfringement by Kight and Funnelsis willful and exceptional,
`was commenced and committed with actual knowledge of Crunchy’s
`superior rights and trademarks, and was engaged in with the specific intent
`to injure Crunchyfinancially and in its business.
`
`ANSWER:
`
`Denied. Plaintiff did not infringe on any of Defendant’s intellectual property, if such
`
`intellectual property even exists, and therefore could not have willfully nor exceptionally
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`infringed. Also, there has never been any type of intent, muchless specific intent, on behalf of
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`Plaintiff to injure Defendantfinancially andin its business.
`
`COMPLAINT:
`
`18.
`
`The trademark infringement by Kight and Funnelsis therefore an
`exceptionalcase of willful and intentional infringement, permitting Crunchy
`to recover actual damages, treble damages and attorneys’ fees from Kight
`and Funnels under the Lanham Act.
`
`ANSWER:
`
`
`
`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 8 of 18
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`Denied. Plaintiffs deny the above allegations and assert that there has been noact of
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`willful and intentional infringement onthe part of Plaintiffs with regard to Defendant’s
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`intellectual property, if any intellectual property even exists, and therefore, Defendants have no
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`standingto collect treble damages or attorneys’ fees from Plaintiff.
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`COMPLAINT:
`
`19.
`
`The counterfeiting and infringement by Kight and Funnels has caused,is causing,
`and (unless enjoined) will continue to cause irreparable harm to Crunchy for
`whichthere is no adequate remedy at law because, among other reasons, Crunchy
`has been denied theability to control the quality of goods and products associated
`with its trademarks.
`
`ANSWER:
`
`Denied due to lack of sufficient knowledge and information.
`
`COUNT UJ: FEDERAL FALSE ADVERTISING AND UNFAIR COMPETITION
`
`COMPLAINT:
`
`20.
`
`Crunchyincorporates by reference all prior paragraphs to this Counterclaim
`as though fully set forth herein.
`
`ANSWER:
`
`Plaintiff incorporates by references its foregoing responses to Paragraphs 1 through 20 of
`
`Defendant’s Counterclaim as though expressly set forth herein.
`
`COMPLAINT:
`
`21.
`
`~+Kight and Funnels have willfully and intentionally falsely advertised and
`passedoff its products as being those of Crunchy, and unfairly competed
`with Crunchy, by creating, purchasing, selling and advertising its own
`counterfeit, copycat, knock-off CRUNCHY FUNNEL trademark, tobacco
`products and packaging to the same distributors and customers, in the same
`
`8
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page ¥ of 138
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`geographic area (Virginia, Maryland and DC) where Crunchyadvertises and
`sells its original, prior, senior trademarks and tobacco products, including
`especially the CRUNCHY FUNNEL and CRUNCHYFUNNEL marks.
`
`ANSWER:
`
`Denied. There has been no false advertising, passing off, or unfair competition
`
`committed by Plaintiffs
`
`COMPLAINT:
`
`22.
`
`This conduct by Kight and Funnels constitutes false advertising, passing off
`and unfair competition in violation of the federal Lanham Act.
`
`ANSWER:
`
`Denied. Denied. There has been nofalse advertising, passing off, or unfair competition
`
`committed by Plaintiffs.
`
`COMPLAINT:
`
`23.
`
`The false advertising, passing off and unfair competition committed by Kight
`and Funnels is willful and exceptional, was commenced with actual
`knowledge of Crunchy’s superior rights and marks, and was engaged in with
`the specific intent to injure Crunchy financially andin its business.
`
`ANSWER:
`
`Denied. There has been no false advertising, passing off, or unfair competition
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`committed by Plaintiffs.
`
`COMPLAINT:
`
`24.
`
`Thefalse advertising, passing off and unfair competition committed by Kight
`and Funnels is therefore an exceptional case of willful and intentional
`misconduct, permitting Crunchy to recover treble damages and attorneys’
`
`9
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`
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`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 10 of 18
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`fees from Kight and Funnels under the Lanham Act.
`
`ANSWER:
`
`Denied. There has been no false advertising, passing off, or unfair competition
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`committed by Plaintiffs, and therefore, there has been no misconduct, willful, intentional, or
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`otherwise, and therefore, Defendant has no standing to recover and damages, muchlesstreble
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`damagesor attorneys’ fees.
`
`COMPLAINT:
`
`25.
`
`Thefalse advertising, passing off and unfair competition committed by Kight
`and Funnels has caused, is causing, and (unless enjoined) will continue to
`cause irreparable harm to Crunchy for which there is no adequate remedy at
`all because, among other reasons, Crunchy has been denied the ability to
`control the quality of goods and products associated with its trademarks.
`
`ANSWER:
`
`Plaintiffs deny the aboveallegations and assert that they have not falsely advertised or
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`unfairly competed with Defendant, and also has no knowledge of Defendant’sability of being
`
`able to control the quality of goods and products associated with its trademarks.
`
`COUNT II: STATE AND DC LAW FALSE ADVERTISING AND UNFAIR
`COMPETITION
`
`COMPLAINT:
`
`26.
`
`Crunchyincorporates by reference all prior paragraphs to this Counterclaim
`as though fully set forth herein.
`
`ANSWER:
`
`Plaintiff incorporates by references its foregoing responses to Paragraphs 1 through 26 of
`
`Defendant’s Counterclaim as though expressly set forth herein.
`
`10
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page 11 of18
`
`COMPLAINT:
`
`27.
`
`Kight and Funnels havewillfully and intentionally falsely advertised and
`passedoff its products as being those of Crunchy, and unfairly competed
`with Crunchy, by creating, purchasing,selling and advertising its own
`counterfeit, copycat, knock-off CRUNCHY FUNNELtrademark, tobacco
`products and packaging to the same distributors and customers, in the same
`geographic area (Virginia, Maryland and DC) where Crunchy advertises and
`sells its original, prior, senior trademarks and tobacco products, including
`especially the CRUNCHY FUNNEL and CRUNCHYFUNNELmarks.
`
`ANSWER:
`
`Denied. There has been nofalse advertising, passing off, or unfair competition
`
`committed by Plaintiffs
`
`COMPLAINT:
`
`28.
`
`This conduct by Kight and Funnels constitutes false advertising, passing off
`and unfair competition in violation of the laws of Maryland, Virginia and the
`District of Columbia.
`
`ANSWER:
`
`Denied. There has been nofalse advertising, passing off, or unfair competition
`
`committed by Plaintiffs
`
`COMPLAINT:
`
`29.=‘Thefalse advertising, passing off and unfair competition committed by Kight
`and Funnels is willful and exceptional, was commenced with actual
`knowledge of Crunchy’s superior rights and marks, and was engaged in with
`the specific intent to injure Crunchy financially andin its business.
`
`ANSWER:
`
`Denied. There has been nofalse advertising, passing off, or unfair competition
`
`11
`
`
`
`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 12 of 18
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`committed by Plaintiffs
`
`COMPLAINT:
`
`30.
`
`The false advertising, passing off and unfair competition committed by Kight
`and Funnels is therefore an exceptional case of willful and intentional
`misconduct, permitting Crunchy to recover punitive damages, multiple
`damages and attorneys’ fees from Kight and Funnels underthe laws of
`Maryland, Virginia andthe District of Columbia.
`
`ANSWER:
`
`Denied. There has been no false advertising, passing off, or unfair competition
`
`committed by Plaintiffs
`
`COMPLAINT:
`
`31.
`
`In addition, to unfairly compete with Crunchy, and to expand their own sales
`and distribution at the expense of Crunchy’s, Kight and Funnels have
`illegally sold to distributors, retailers and consumers underthe table, for
`cash, and without charging, collecting or reporting sales or tobacco taxes, in
`violation of state and federal tobacco sales taxation laws and regulations.
`
`ANSWER:
`
`Denied. Additionally, Plaintiffs caution Defendant of the impropriety presented in the
`
`above complaint number 31, with regard to baseless and unwarranted allegations and accusations
`
`of criminal activity, which Plaintiffs did not commit.
`
`COMPLAINT:
`
`32.
`
`Kight and Funnels have engagedin this unfair competition, false advertising
`and passingoff intentionally, willfully and with the intention to damage and
`harm Crunchyand to interfere with its business.
`
`ANSWER:
`
`12
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page 13 of 18
`
`Denied. There has been nofalse advertising, passing off, or unfair competition
`
`committed by Plaintiffs
`
`COMPLAINT:
`
`33.
`
`The false advertising, passing off and unfair competition committed by Kight
`and Funnels has caused, is causing, and (unless enjoined) will continue to
`cause irreparable harm to Crunchy for which there is no adequate remedy at
`all because, among other reasons, Crunchy has been denied the ability to
`control the quality of goods and products associated with its trademarks, and
`its relationships with distributors and retailers are being harmed and
`destroyed.
`
`ANSWER:
`
`Denied dueto lack of sufficient knowledge and information. Plaintiffs are not privy to
`
`the relationships between Defendantandits distributors andretailers, and also is not aware of
`
`any unfair competition on behalf of Plaintiffs.
`
`COUNT IV: FEDERAL COPYRIGHT INFRINGEMENT
`
`COMPLAINT:
`
`34.|Crunchyincorporates by reference all prior paragraphs to this Counterclaim
`as though fully set forth herein.
`
`ANSWER:
`
`Plaintiff incorporates by references its foregoing responses to Paragraphs 1 through 34 of
`
`Defendant’s Counterclaim as though expressly set forth herein.
`
`COMPLAINT:
`
`35.
`
`Kight and Funnels havewillfully and intentionally infringed the Crunchy
`
`13
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page 14 of 18
`
`Copyright by creating, purchasing, selling and advertising its own
`counterfeit, copycat, knockoff CRUNCHY FUNNELlogo and packaging to
`the same distributors and customers, in the same geographic area (Virginia,
`Maryland and DC) where Crunchy advertises andsells its original, prior,
`senior tobacco products underits substantially similar and almostidentical
`copyrighted logo.
`
`ANSWER:
`
`Denied.
`
`COMPLAINT:
`
`36.
`
`This conduct by Kight and Funnels constitutes Copyright infringementin
`violation of the federal Copyright Act.
`
`ANSWER:
`
`Denied. Plaintiffs did not engage in any conductconstituting Copyright infringementin
`
`violation ofthe federal Copyright Act.
`
`COMPLAINT:
`
`37.
`
`The copyright infringement by Kight and Funnels is willful and exceptional,
`was commenced and committed with actual knowledge of Crunchy’s
`superior rights and copyright, and was engaged in with the specific intent to
`injure Crunchy financially andin its business.
`
`ANSWER:
`
`Denied. Plaintiffs deny the above allegations andassert that there has been no act of
`
`willful and exceptional infringementon thepart of Plaintiffs with regard to Defendant’s
`
`intellectual property, if any intellectual property even exists, and therefore, Plaintiffs did not
`
`have actual knowledge of Crunchy’s superior rights and copyright, because Defendant did not
`
`have superior rights or copyright, and did not the specific intent to injure Crunchy financially and
`
`in its business.
`
`14
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page 15 of 18
`
`COMPLAINT:
`
`38.
`
`The Copyright infringement by Kight and Funnelsis therefore an
`exceptional case of willful and intentional infringement, permitting Crunchy
`to recover statutory damages, treble damages and attorneys’ fees from Kight
`. and Funnels under the Copyright Act.
`
`ANSWER:
`
`Denied. Plaintiffs deny the above allegations andassert that there is no exceptional case
`
`of willful and intentional infringementon the part of Plaintiffs with regard to Defendant’s
`
`intellectual property, if any intellectual property even exists, and therefore, there is no legal
`
`recourse for any type of recovery for Defendant, and Defendants cannot recover statutory
`
`damages, treble damages, and/or attorney’s fees from Plaintiffs.
`
`COMPLAINT:
`
`39.
`
`The counterfeiting and copyright infringement by Kight and Funnels has
`caused,is causing, and (unless enjoined) will continue to cause irreparable
`harm to Crunchy for which there is no adequate remedyatall.
`
`ANSWER:
`
`Denied. Plaintiffs deny the above allegations andassert that they have not counterfeited
`
`or otherwise infringed on any ofDefendant’s intellectual property, if any intellectual property
`
`even exists, and therefore, they have not caused any harm, muchless irreparable harm.
`
`DEFENSES AND AFFIRMATIVE DEFENSES
`
`1.
`
`Contesting the Registration of the “CRUNCHY”family of Trademarks —
`
`Newly registered trademarks, typically those registered for 5 or less years, can be contested by a
`
`trademark owner whoclaims to have been damagedbythe registration. Here, the “CRUNCHY”
`
`15
`
`
`
`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 16 of 18
`
`family oftrademarks, including CRUNCHYFUNNEL(Reg.No. 6,662,925), CRUNCHY
`
`TOBACCO (Reg. No.6,662,926), CRUNCHY SPRINKLE(Reg. No. 6,662,927), and DARK
`
`CRUNCHY FUNNEL(Reg.No. 6,682,380), haveall received their trademark registrations at
`
`the USPTO on March 8, 2022 or March 29, 2022, respectively. Plaintiff's mark for “Funnels”
`
`was registered at the USPTO on December31, 2019, which predates all registrations ofthe
`
`“CRUNCH”family of trademarks. Therefore, Defendant does not have valid trademark
`
`registrations, and Plaintiffs respectfully request cancellation ofDefendant’s trademark
`
`registrations.
`
`2.
`
`Plaintiffs’ Federal Trademark Predates Defendant’s Federal Trademark —
`
`As stated above, the earliest registration date for any of Defendant’s trademarks was March8,
`
`2022, while Plaintiffs’ trademark was registered at the USPTO on December31, 2019, which
`
`predatesall registrations of the “CRUNCH”family of trademarks. Therefore, Defendant cannot
`
`bring action against Plaintiff for Federal Trademark Infringement.
`
`3.
`
`Plaintiffs’ Common Law Trademark Predates Defendant’s Common Law
`
`Trademarks — Plaintiffs’ first use in commerce of the Funnels mark predates Defendant’sfirst
`
`use in commerce of the “CRUNCHY”family of marks. Therefore, Defendant cannotbring
`
`action against Plaintiff for Common Law Trademark Infringement.
`
`4.
`
`Laches — Defendant claims to have been using this mark since 2010, but failed to
`
`bring about suit against Plaintiff. In fact, Plaintiff filed the original complaint against Defendant,
`
`so it is unknown whether a complaint would ever have been filed by Defendant, and therefore,
`
`Defendant should be precluded from doingso.
`
`5.
`
`Unclean Hands -— It appears that Defendantdid notfile its federal trademark
`
`applications until well after the registration of Plaintiff's actual federal registrationofits
`
`16
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page l1/ otis
`
`trademark, and therefore, it appears that Defendantis attempting to now enforce unenforceable
`
`marks against Plaintiff, based on an oversight at the USPTO.
`
`Dated: November 9, 2022
`
`NATHAN M.KIGHT and FUNNELS, LLC
`
`Respectfully submitted,
`
`by: /s/Lev Ivan Gabriel Iwashko
`Counsel For Plaintiffs
`Lev Ivan Gabriel Iwashko
`DC Bar No. 1022054
`The Iwashko Law Firm, PLLC
`1250 Connecticut Ave., NW
`Suite 700
`Washington, DC 20036
`Tel: 202-441-5043
`Lev@iwashkoLaw.com
`AttorneyLev@gmail.com
`
`17
`
`
`
`Case 1:21-cv-U3189-CKK Document 26 Filed 11/09/22 Page 18 of 18
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLUMBIA
`
`FUNNELS,LLC,etal.,
`
`Plaintiffs,
`
`v.
`
`CRUNCHY TOBACCO,INC.,
`
`Defendant.
`
`Nmeeeeeeeeeeee”
`
`Civil Action No, 21-cv-03189 CKK
`
`CERTIFICATE OF SERVICE
`
`I, Lev Ivan Gabriel Iwashko,certify that, on this 9 day of November 2022, a copy ofthe
`
`foregoing Plaintiff’s Answer to Defendant’s Counterclaim was filed on the Electronic Case
`
`Filing (“ECF”) system and a copy was served on Defendant’s Counsel, Michael C. Whitticar,
`
`through the ECF.
`
`Respectfully submitted,
`
`/s/Lev Ivan Gabriel Iwashko
`Lev Ivan Gabriel Iwashko
`DC Bar No. 1022054
`The Iwashko Law Firm, PLLC
`1250 Connecticut Ave., NW
`Suite 700
`Washington, DC 20036
`Tel: 202-441-5043
`Lev@iwashkoLaw.com
`AttorneyLev@gmail.com
`Attorneyfor Plaintiffs
`
`
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