Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1273714
`
`Filing date:
`
`03/22/2023
`
`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
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`Filer's email
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`Signature
`
`Date
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`Attachments
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`Defendant
`Crunchy Tobacco Inc
`
`CRUNCHY TOBACCO INC
`P. O. BOX 6028
`ARLINGTON, VA 22206
`UNITED STATES
`Primary email: crunchytobacco@gmail.com
`703-593-3511
`
`Motion to Suspend for Civil Action
`
`Michael C. Whitticar
`
`mikew@novaiplaw.com
`
`/Michael C. Whitticar/
`
`03/22/2023
`
`Amended Motion to Dismiss with Exhibits Registration No 6682380.pdf(2098153
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`__________________________________________
`:
`:
`:
`:
`:
`: Registration No.: 6682380
`:
`:
`
`NATHAN M. KIGHT,
`
`
`
`
`Petitioner,
`
`
`v.
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`
`
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`Cancellation No.: 92081574
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`ESTTA Tracking Number for
`Petition: ESTTA1265293
`
`:
`
`
`CRUNCHY TOBACCO, INC.,
`:
`
`
`
`
`
`
`
`:
`
`
`
`Respondent.
`
`
`_________________________________________ :
`
`
`AMENDED MOTION TO DISMISS, STAY OR SUSPEND
`
`
`
`Respondent respectfully submits this amended motion to dismiss, stay or suspend
`
`Petitioner’s Petition for failure to state a claim on which may be granted, or in the alternative, to
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`stay or suspend this proceeding pending resolution of the related case now pending the United
`
`States District Court for the District of Colombia.
`
`
`
`Mr. Kight’s Petition is due to be dismissed for failure to state a claim based on improper
`
`group pleading. Group pleading which fails to specify the conduct or rights of the relevant
`
`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
`
`pleading); Jien v. Perdue Farms, Inc. 2020 U.S. Dist. LEXIS 169582, fn. 9 (D. Md. 2020)
`
`(“Averages are more or less another form of inappropriate group pleading, lumping the parties
`
`together” without specifying the conduct or rights of the separate parties).
`
`Mr. Kight personally and individually is the registrant and Petitioner. Funnels, LLC is a
`
`separate legal and commercial entity. However, the Petition repeatedly refers to Petitioner as “it”
`
`
`
`1
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`

`

`and “its,” failing to distinguish between use or other conduct by Mr. Kight, and use or other
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`conduct by the LLC, Funnels, LLC. See Petition §§ 4-5, 13-14, 16, 24-25, 30.
`
`
`
`Petitioner’s petition and registration improperly list the petitioner as Nathan M. Kight,
`
`d/b/a Funnels, LLC. This is improper because an LLC is a different and separate legal and
`
`commercial entity from its owner. See Exs. A and B. An individual person can “do business as”
`
`or “d/b/a” a brand name or trade name, but he cannot “do business as” or “d/b/a” a separate legal
`
`and commercial entity such as a corporation or an LLC. Neither Mr. Kight nor Funnels, LLC is
`
`registered as a d/b/a or fictitious name of the other. (Exs. A & B). Neither of them is registered as
`
`a fictitious name of any other person or entity. And neither of them has registered any fictious
`
`names for himself or itself. (Exs. A & B). This is because logic and Maryland Law do not permit
`
`one legal and commercial person or entity to be registered as the fictitious nae or d/b/a of a
`
`separate and distinct legal and commercial person and entity. That would be nonsense. Thus,
`
`both the petition and registration are improper, and Mr. Kight’s Petition fails to state a claim on
`which relief may be granted. See TMEP § 803.02(a) (individuals can register as a d/b/a of a
`corporation or company only when allowed under relevant state law).
`
`
`
`For the foregoing reasons, Mr. Kight’s petition is due to be dismissed for failing to state a
`
`claim on which relief may be granted.
`
`
`
`In addition, a related case is now pending in the United States District Court for the
`
`District of Colombia (Case No. 1:21-cv-03189-CKK: Kight v. Crunchy Tobacco). Infringement
`
`and validity of the parties’ marks is currently at issue and being litigated in that case. See Ex. C:
`
`Answer to Counterclaim (Defense No. 1). Therefore, in the interests of justice and judicial
`
`economy, this case and proceedings on Plaintiff’s petition should be stayed pending litigation
`
`and completion of the D.C. District Court civil action.
`
`
`
`2
`
`

`

`This proceeding should be stayed and suspended in favor of the previously filed and
`
`pending Federal District Court case. See TBMP § 510.02(a) (“the Boards policy to suspend in
`
`favor of a civil action has not changed” and “judicial economy is usually served by suspension”).
`
`
`
`
`
`Respectfully Submitted This 22nd Day of March, 2023:
`
`By: /s/ Michael C. Whitticar
`
` Counsel
`
`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
`Email: mikew@novaiplaw.com
`Counsel for Respondent Crunchy Tobacco, Inc.
`
`
`
`ESTTA/ECF FILING CERTIFICATE
`
`
`
`
`I hereby certify that on this 22nd Day of March, 2023, I caused the foregoing motion to
`
`dismiss or stay to be served by email and transmitted through the TTAB’s ESTTA case filing
`
`system to the following counsel of record:
`
`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
`
`
`
`
`3
`
`

`

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`/s/ Michael C. Whitticar
` Michael C. Whitticar
`
`4
`
`

`

`3/22/23, 3:17 PM
`
`Register Your Business Online | Maryland.gov
`
`Ex. A
`
`FUNNELS LLC: W13977780
`
`A Notice
`
`x
`
`
`
`Please be aware of an ongoing scam in which newly registered businesses are being instructed to send
`additional paymentin order to obtain a Certificate of Status. Any 3rd party solicitation from a company
`attempting to represent the ‘Maryland Secretary of State’ via mail or email should befully vetted before
`submitting additional payment.
`
`If you applied for a 2-month extension prior to April 17th, the NEW deadlineto file an Annual Report is June
`15th. Please go HEREto file your Annual Report. A2-month extension requestforfiling the Annual Report may be
`filed here,
`
`Department ID Number.
`W13977780
`
`Business Name:
`
`FUNNELS LLC
`
`Principal Office: @
`9215 SIST AVENUE
`
`COLLEGE PARK MD 20740
`
`Resident Agent: @
`NATHAN M KIGHTII
`
`8512 58TH AVENUE
`
`BERWYN HEIGHTS MD 20740
`
`Status:
`
`REVIVED
`
`Good Standing:
`THIS BUSINESSIS IN GOOD STANDING
`
`Business Type:
`DOMESTIC LLC
`
`Business Code:
`
`20 ENTITIES OTHER THAN CORPORATIONS
`
`Date of Formation/ Registration:
`02/25/2011
`
`State of Formation:
`MD
`
`Stock Status:
`
`N/A
`
`Close Status:
`
`N/A
`
`https://egov.maryland.gov/BusinessExpress/EntitySearch/Business
`
`1/2
`
`

`

`3/22/23, 3:11 PM
`
`Register Your Business Online | Maryland.gov
`
`A Notice
`
`x
`
`Please be aware of an ongoing scam in which newly registered businesses are being instructed to send
`additional paymentin orderto obtain a Certificate of Status. Any 3rd party solicitation from a company
`attempting to represent the ‘Maryland Secretary of State’ via mail or email should befully vetted before
`submitting additional payment.
`
`If you applied for a 2-month extension prior to April 17th, the NEW deadline to file an Annual Report is June
`15th. Please go HEREto file your Annual Report. A 2-month extension requestforfiling the Annual Report may be
`
`filed here.
`
`Business Name:
`
`Funnels LLC
`
`Searchby:
`
`@ Business Name
`© DepartmentID
`
`4 businesses found.
`
`Department ID
`
`Business Name
`
`W13977780
`
`W21225933
`
`D22673024
`
`W18729137
`
`FUNNELS LLC
`
`FUNNELS OUTLET LLC
`
`FUNNELS THAT CONVERT,INC.
`
`THE FUNNELSUITE, LLC
`
`Status
`
`Revived
`
`Forfeited
`
`Incorporated
`
`Forfeited
`
`¥% dees not shav Nathan M Kight JE
`
`Privacy - Terms
`
`https://egov.maryland.gov/BusinessExpress/EntitySearch
`
`

`

`3/22/23, 3:12 PM
`
`Register Your Business Online | Maryland.gov
`
`A Notice
`
`x
`
`
`
`Please be awareof an ongoing scam in which newly registered businessesare being instructed to send
`additional paymentin order to obtain a Certificate of Status. Any 3rd party solicitation from a company
`attempting to represent the ‘Maryland Secretary of State’ via mail or email should be fully vetted before
`submitting additional payment.
`
`If you applied for a 2-month extensionprior to April 17th, the NEW deadlineto file an Annual Report is June
`15th. Please go HEREtofile your Annual Report. A 2-month extension requestforfiling the Annual Report may be
`filed here.
`
`Business Name:
`
`Nathan M Kight II
`
`Search by:
`
`@ Business Name
`© DepartmentID
`
`4 The business name you entered was not found. Tryyour search again.
`
`» Log in or create a user account to create a new businessfiling using this name.
`
`Privacy - Terms
`
`https://egov.maryland.gov/BusinessExpress/EntitySearch
`
`1
`
`

`

`3/22/23, 3:18 PM
`
`A Notice
`
`Register Your Business Online | Maryland.gov cr. $3
`
`x
`
`
`
`Please be aware of an ongoing scam in which newly registered businesses are being instructed to send
`additional paymentin order to obtain a Certificate of Status. Any 3rd party solicitation from a company
`attempting to represent the ‘Maryland Secretary of State’ via mail or email should befully vetted before
`submitting additional payment.
`
`If you applied for a 2-month extension prior to April 17th, the NEW deadlineto file an Annual Report is June
`15th. Please go HEREto file your Annual Report. A 2-month extension requestforfiling the Annual Report may be
`filed here.
`
`Business Name:
`
`Nathan Kight
`
`Searchby:
`
`@ Business Name
`© Department ID
`
`4. The business nameyou entered was not found. Tryyoursearch again.
`
`» Log in or create a user account to create a new businessfiling using this name.
`
`Privacy - Terms
`
`https://egov.maryland.gov/BusinessExpress/EntitySearch
`
`1/1
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 1 of 18
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLUMBIA
`
`Ex. C
`
`FUNNELS,LLC,etal.,
`
`Plaintiff,
`
`v.
`
`CRUNCHY TOBACCO,INC.,
`
`Defendant.
`
`:
`: Civil Action No. 21-cv-03189 CKK
`
`PLAINTIFFS’ ANSWER TO DEFENDANT’S COUNTERCLAIM
`
`COMENOW,Plaintiffs and Counterclaim Defendants Nathan M. Kight and Funnels,
`
`LLC,by counsel, and respectfully submit their Answer and Defenses to
`
`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-03189-CKK Document 26 Filed 11/09/22 Page 2 of 18
`
`and domiciliary of the State of Maryland. Plaintiffs deny that “Kight has ... participated in [any]
`
`tortious conduct of Funnels, LLC”, and further deny that any tortious conduct has occurred on
`
`behalfof Plaintiffs.
`
`COMPLAINT:
`
`3.
`
`Funnels, LLC is a Maryland LLCwith its 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
`proper in this Court because Kight and Funnels subjected themselves to
`jurisdiction here by filing 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. Denied in part. Plaintiffs admit jurisdiction and venue over Kight,
`
`Funnels and Crunchy’s counterclaim are properin this Court because Kight and Funnels
`
`subjected themselvesto jurisdiction here by filing their original complaint here. Plaintiffs deny
`
`that they sell 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 samenucleusof operative facts,
`as Plaintiffs’ claims, and whicharise in substantial part under federal
`
`2
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 3 of 18
`
`statutes including the Lanham Actand 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 are citizens 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 amountin controversy
`
`exceeds $75,000, none of Funnels' members or ownersare citizens or domiciliaries of Virginia,
`
`complete diversity of citizenship exists, and this Court also has diversity jurisdiction over this
`
`Counterclaim. Plaintiffs deny that the amountin controversy stems from this Counterclaim, but
`
`instead, stems from Plaintiff's original Complaint.
`
`COMPLAINT:
`
`FACTS
`
`7.
`
`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-lawrights in each of these marks, andin the closely related and
`similar mark “CRUNCHY FUNNEL.” Crunchyhas been usingits
`CRUNCHY FUNNEL and CRUNCHYFUNNELmarks in interstate
`commerce, and in commercial advertising and promotion,since at least 2015.
`Crunchy has been 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
`
`ANSWER:
`
`Admitted only that the registrations were issued. Denied that they are valid or
`
`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 consumersassociated with Crunchy.
`
`ANSWER:
`
`Denied due to lack ofsufficient knowledge and information.
`
`COMPLAINT:
`
`9.
`
`Crunchy’s family of Crunchy marks, andits rights therein, are senior to and
`predate the alleged trademark use and rights of Kight and Funnels.
`
`ANSWER:
`
`Denied. Defendant’s family of Crunchy marks do not predate trademark use and rights
`
`of Plaintiffs’ marks.
`
`COMPLAINT:
`
`10.‘
`
`In addition, Crunchy ownsandhasa 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
`FUNNELproductsis substantially similar to, and in fact nearly identicalto,
`the copyrighted design logo on Crunchy’s CRUNCHY FUNNELproducts
`and packaging.
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 5 of 18
`
`ANSWER:
`
`Denied dueto lack of sufficient knowledge and information.
`
`COMPLAINT:
`
`11.
`
`The copycat and counterfeit logo and trademark on Kight’s and Funnels’
`CRUNCHY FUNNELproductsis substantially similar to, and in fact nearly
`identical to, the trademark on Crunchy’s CRUNCHY FUNNELtobacco
`products and packaging.
`
`ANSWER:
`
`Denied that Plaintiffs have a copycat and counterfeit logo and trademark. Admitted that
`
`Crunchy’s use of CRUNCHY FUNNELis substantially similar to, and in fact nearly identical to
`
`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
`
`created counterfeit, knock-off, copycat CRUNCHY FUNNELtobaccoproducts.
`
`COMPLAINT:
`
`13.
`
`In addition, to unfairly compete with Crunchy, and to expand their own sales
`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-03189-CKK Document 26 Filed 11/09/22 Page 6 of 18
`
`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 13, with regard to baseless and unwarranted allegations and accusations
`
`of criminal activity, which Plaintiffs did not commit.
`
`COUNT I: FEDERAL TRADEMARK INFRINGEMENT
`
`COMPLAINT:
`
`14.
`
`Crunchy incorporates by reference all prior paragraphs to this Counterclaim
`as though fully set forth herein.
`
`ANSWER:
`
`Plaintiff incorporates by referencesits foregoing responses to Paragraphs 1 through 14 of
`
`Defendant’s Counterclaim as though expressly set forth herein.
`
`COMPLAINT:
`
`15.
`
`Kight and Funnels havewillfully 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 FUNNELlogo and packagingto
`the same distributors and customers, in the same geographic area (Virginia,
`Maryland and DC) where Crunchy advertises andsellsits original, prior,
`senior tobacco products under Crunchy’soriginal, senior and prior
`substantially similar and almost identical CRUNCHY FUNNEL and
`CRUNCHYFUNNELtrademarks.
`
`ANSWER:
`
`Denied. Plaintiffs deny the aboveallegations and assert that they have notwillfully and
`
`intentionally infringed the Crunchy family of marks, and have notcreated counterfeit, copycat,
`6
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 7 of 18
`
`knock-off CRUNCHY FUNNELlogosor packaging.
`
`COMPLAINT:
`
`16.
`
`This conduct by Kight and Funnels constitutes trademarkinfringementin
`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 andin 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
`
`infringed. Also, there has never been any typeof intent, much less specific intent, on behalf of
`
`Plaintiff to injure Defendantfinancially and in its business.
`
`COMPLAINT:
`
`18.
`
`The trademark infringement by Kight and Funnelsis therefore an
`exceptional case 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
`
`Denied. Plaintiffs deny the above allegations and assert that there has been no act of
`
`willful and intentional infringement on the part of Plaintiffs with regard to Defendant’s
`
`intellectual property, if any intellectual property even exists, and therefore, Defendants have no
`
`standing to collect treble damagesor attorneys’ fees from Plaintiff.
`
`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
`which there is no adequate remedy at law because, amongother reasons, Crunchy
`has been denied the ability to control the quality of goods and products associated
`with its trademarks.
`
`ANSWER:
`
`Denied dueto lack of sufficient knowledge and information.
`
`COUNT II: 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 ] through 20 of
`
`Defendant’s Counterclaim as though expressly set forth herein.
`
`COMPLAINT:
`
`21.
`
`Kight and Funnels havewillfully and intentionally falsely advertised and
`passed off 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 samedistributors and customers, in the same
`
`8
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 9 of 18
`
`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.
`
`Thefalse advertising, passing off and unfair competition committed by Kight
`and Funnelsis willful and exceptional, was commenced with actual
`knowledge of Crunchy’s superior rights and marks, and was engagedin with
`the specific intent to injure Crunchy financially andin its business.
`
`ANSWER:
`
`Denied. There has been nofalse advertising, passing off, or unfair competition
`
`committed by Plaintiffs.
`
`COMPLAINT:
`
`24.=‘The false advertising, passing off and unfair competition committed by Kight
`and Funnelsis therefore an exceptional case of willful and intentional
`misconduct, permitting Crunchy to recover treble damages and attorneys’
`9
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 10 of 18
`
`fees from Kight and Funnels under the Lanham Act.
`
`ANSWER:
`
`Denied. There has been no false advertising, passing off, or unfair competition
`
`committed by Plaintiffs, and therefore, there has been no misconduct, willful, intentional, or
`
`otherwise, and therefore, Defendant has no standing to recover and damages, muchlesstreble
`
`damagesorattorneys’ 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 theability to
`control the quality of goods and products associated with its trademarks.
`
`ANSWER:
`
`Plaintiffs deny the above allegations andassert that they have notfalsely advertised or
`
`unfairly competed with Defendant, and also has no knowledge of Defendant’s ability of being
`
`able to control the quality of goods and products associated with its trademarks.
`
`
`COUNT UI: STATE AND DC LAW FALSE ADVERTISING AND UNFAIR
`COMPETITION
`
`COMPLAINT:
`
`26.
`
`Crunchyincorporatesby referenceall prior paragraphs to this Counterclaim
`as though fully set forth herein.
`
`ANSWER:
`
`Plaintiff incorporates by referencesits foregoing responses to Paragraphs | through 26 of
`
`Defendant’s Counterclaim as though expressly set forth herein.
`
`10
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 11 of 18
`
`COMPLAINT:
`
`27.
`
`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 FUNNELtrademark,tobacco
`products and packaging to the samedistributors and customers, in the same
`geographic area (Virginia, Maryland and DC) where Crunchyadvertises 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 no false advertising, passingoff, or unfair competition
`
`committed by Plaintiffs
`
`COMPLAINT:
`
`29.
`
`Thefalse advertising, passing off and unfair competition committed by Kight
`and Funnelsis willful and exceptional, was commenced with actual
`knowledge of Crunchy’s superior rights and marks, and was engagedin with
`the specific intent to injure Crunchyfinancially andin its business.
`
`ANSWER:
`
`Denied. There has been no false advertising, passing off, or unfair competition
`
`11
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 12 of 18
`
`committed by Plaintiffs
`
`COMPLAINT:
`
`30.
`
`The false advertising, passing off and unfair competition committed by Kight
`and Funnelsis therefore an exceptional case of willful and intentional
`misconduct, permitting Crunchy to recover punitive damages, multiple
`damagesand attorneys’ fees from Kight and Funnels underthe laws of
`Maryland, Virginia and the 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 number31, 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 Crunchyandto interfere with its business.
`
`ANSWER:
`
`12
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 13 of 18
`
`Denied. There has been no false advertising, passing off, or unfair competition
`
`committed by Plaintiffs
`
`COMPLAINT:
`
`33.
`
`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, amongother 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 due to lack of sufficient knowledge and information. Plaintiffs are not privy to
`
`the relationships between Defendantandits distributors and retailers, and also is not aware of
`
`any unfair competition on behalf of Plaintiffs.
`
`COUNT IV: FEDERAL COPYRIGHT INFRINGEMENT
`
`COMPLAINT:
`
`34.
`
`Crunchy incorporates by referenceall prior paragraphs to this Counterclaim
`as though fully set forth herein.
`
`ANSWER:
`
`Plaintiff incorporates by references its foregoing responses to Paragraphs | 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-03189-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 samedistributors and customers, in the same geographic area (Virginia,
`Maryland and DC) where Crunchyadvertises 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 conduct constituting Copyright infringement in
`
`violation of the 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 Crunchyfinancially and in its business.
`
`ANSWER:
`
`Denied. Plaintiffs deny the above allegations andassert that there has been noact of
`
`willful and exceptional infringementon the part 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
`
`havesuperiorrights or copyright, and did not the specific intent to injure Crunchy financially and
`
`in its business.
`
`14
`
`

`

`Case 1:21-cv-03189-CKK Document 26 Filed 11/09/22 Page 15 of 18
`
`COMPLAINT:
`
`38.
`
`The Copyright infringement by Kight and Funnels is 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 and assert 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 recoverstatutory
`
`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 and assert that they have not counterfeited
`
`or otherwise infringed on any of Defendant’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 whoclaimsto 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 of trademarks, 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), have all received their trademark registrations at
`
`the USPTO on March8, 2022 or March 29, 2022, respectively. Plaintiff's mark for “Funnels”
`
`wasregistered at the USPTO on December31, 2019, which predatesall registrations of the
`
`“CRUNCH”family of trademarks. Therefore, Defendant does not have valid trademark
`
`registrations, and Plaintiffs respectfully request cancellation of Defendant’s trademark
`
`registrations.
`
`2.
`
`Plaintiffs’ Federal Trademark Predates Defendant’s Federal Trademark —
`
`Asstated 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