Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1295567
`
`Filing date:
`
`07/06/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92082537
`
`Party
`
`Correspondence
`address
`
`Defendant
`RC Herr LLC
`
`RC HERR LLC
`346 WILLOW AVENUE
`CAMP HILL, PA 17011
`UNITED STATES
`No email provided
`No phone number provided
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Motion to Suspend for Civil Action
`
`Bassam N. Ibrahim
`
`bassam.ibrahim@bipc.com
`
`/Bassam N. Ibrahim/
`
`07/06/2023
`
`Attachments
`
`20230706 - Motion to Suspend.pdf(870231 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA1295567
`
`Filing date:
`
`07/06/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92082537
`
`Party
`
`Correspondence
`address
`
`Defendant
`RC Herr LLC
`
`RC HERR LLC
`346 WILLOW AVENUE
`CAMP HILL, PA 17011
`UNITED STATES
`No email provided
`No phone number provided
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Motion to Suspend for Civil Action
`
`Bassam N. Ibrahim
`
`bassam.ibrahim@bipc.com
`
`/Bassam N. Ibrahim/
`
`07/06/2023
`
`Attachments
`
`20230706 - Motion to Suspend.pdf(870231 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`RE: U.S. Trademark Registration No. 5947693
`
`The Pennsylvania Dairymen’s Association, Inc.
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`-v-
`
`RC Herr LLC
`
`
`
`Registrant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Cancellation No. 92082537
`
`)
`)
`)
`)
`)
`)
`)
` )
`
`
`)
`
`
`)
`)
`_____________________________________________ )
`
` MOTION TO SUSPEND PROCEEDING IN VIEW OF PENDING CIVIL ACTION
`
`
`Registrant RC Herr LLC (“Registrant” or “Herr”) hereby moves for suspension of the
`
`above-captioned cancellation proceeding. The parties to this proceeding are also involved in a
`
`civil action, Pennsylvania Dairymen’s Association, Inc. v. RC Herr, LLC, Civil Action No. 1:23-
`
`cv-00929 (the “Civil Action”), which is currently pending in the U.S. District Court for the
`
`Middle District of Pennsylvania. A copy of the complaint is submitted herewith as Exhibit 1.
`
`Registrant therefore requests that the Board suspend this proceeding pending final determination
`
`of the Civil Action pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a).
`
`“It is the policy of the Board to suspend proceedings when the parties are involved in a
`
`civil action which may be dispositive of or have a bearing on the Board case.” Arcadia Group
`
`Brands Ltd. v. Studio Moderna SA, 99 USPQ2d 1134, 1136 (T.T.A.B. 2011) (citations omitted);
`
`see also, e.g., TBMP § 510.02(a); New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99
`
`USPQ2d 1550, 1552 (TTAB 2011) (civil action need not be dispositive of Board proceeding, but
`
`only needs to have a bearing on issues before the Board); Other Telephone Co. v. Connecticut
`
`
`
`National Telephone Co., 181 USPQ 125, 126-27 (TTAB 1974) (decision in civil action for
`
`infringement and unfair competition would have bearing on outcome of Trademark Act § 2(d)
`
`claim before Board), pet. denied, 181 USPQ 779 (Comm’r 1974).
`
`It is apparent on the face of the pleadings that the final determination of the Civil Action
`
`may have a bearing on the issues before the Board in this proceeding.1 Through its notice of
`
`cancellation, Dairymen’s seeks to assert claims for cancellation of Herr’s U.S. Reg. No. 5947693
`
`(the “Registration”) for the mark FARM SHOW MILKSHAKES and Design on grounds of
`
`priority and likelihood of confusion; dilution; and fraud on the USPTO. See 1 TTABVUE. The
`
`Civil Action involves identical parties in the same position; Dairymen’s allegations concern the
`
`same term (FARM SHOW MILKSHAKES) and the Registration; the claims sought to be pled by
`
`Dairymen’s are related to the present proceeding, including trademark infringement, unfair
`
`competition, and dilution; and a request for injunctive relief has been raised in the prayer for
`
`relief. See Exhibit 1. Moreover, Dairymen’s has identified the Civil Action as a related
`
`proceeding in the notice of cancellation. See 1 TTABVUE.
`
`Registrant, therefore, respectfully requests that the Board suspend this Cancellation
`
`proceeding pending termination of the Civil Action.
`
`
`
`
`
`
`
`1 There is no requirement that an answer be filed in either proceeding before the Board will consider suspending a
`proceeding where, as here, the Board can ascertain from the face of the complaints that the final determination of the
`Civil Action may have a bearing on the issues before the Board. See, e.g., TBMP 510.02(a); Other Telephone Co.,
`181 USPQ at 126-27.
`
`
`
`
`
`Date: July 6, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`RC Herr, LLC
`
`
`
`
`Bassam N. Ibrahim
`Laura K. Pitts
`Bryce J. Maynard
`Buchanan Ingersoll & Rooney PC
`1737 King St., Suite 500
`Alexandria, Virginia 22314-2727
`(703) 836-6620
`
`Attorneys for Opposer
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on July 6, 2023, a copy of this MOTION TO SUSPEND
`
`PROCEEDING IN VIEW OF PENDING CIVIL ACTION was served by email to the attorneys
`of Petitioner The Pennsylvania Dairymen’s Association, Inc.:
`
`
`
`
`
`
`CHARLES A. HOOKER
`HOOKER & HABIB, P.C.
`205 GRANDVIEW AVENUE, SUITE 403
`CAMP HILL, PA 17011
`UNITED STATES
`uspto@h-hpc.com
`Phone: 717-232-8771
`
`
`
`/Florence Goodman/
`Florence Goodman
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 1 of 30
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
`
`PENNSYLVANIA DAIRYMEN’S
`ASSOCIATION, INC.,
`440 Plaza Drive
`Palmyra, PA 17078,
`
`Plaintiff,
`
` Case No.
`
`v.
`
`RC HERR, LLC,
`346 Willow Ave.,
`Camp Hill, PA 17011,
`
`Defendant.
`
`COMPLAINT
`
`Plaintiff, The Pennsylvania Dairymen’s Association, Inc. (“Dairymen” or
`
`“Plaintiff”), by and through its undersigned counsel, hereby alleges as follows for
`
`its Complaint against Defendant, RC Herr, LLC (“Herr” or “Defendant”).
`
`Introduction
`
`1.
`
`This is an action for trademark infringement of Dairymen’s
`
`trademark; unfair competition; and trademark dilution under the Lanham Act, 15
`
`U.S.C. §§ 1051, et seq.; trademark dilution under Pennsylvania law; and trademark
`
`infringement and unfair competition under Pennsylvania common law.
`
`1
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 2 of 30
`
`
`
`2.
`
`Defendant, through its website, and via its tradename “Farm Show
`
`Milkshakes”, markets and advertises its milkshake product through association and
`
`use of Dairymen’s trademarks.
`
`3.
`
`Defendant does not have a license agreement or any permission by
`
`Dairymen to use Dairymen’s valuable trademarks.
`
`4.
`
`Defendant has and/or is willfully infringing Plaintiff’s trademark by
`
`branding and marketing goods via its website (farmshowmilkshakes.com) and/or
`
`its social media platforms via purported association and/or affiliation with
`
`Dairymen, and with the intent to confuse the consuming public regarding the
`
`source of its product.
`
`5.
`
`Defendant is intentionally capitalizing on Plaintiff’s name, marks, and
`
`goodwill to promote its business.
`
`6.
`
`As a result, Plaintiff brings this action for federal and state trademark
`
`infringement, unfair competition, false designation of origin and trademark
`
`dilution.
`
`The Parties
`
`7.
`
`Plaintiff is The Pennsylvania Dairymen’s Association, Inc., a
`
`Pennsylvania non-profit corporation, seeking to promote and support the dairy
`
`industry in Pennsylvania.
`
`2
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 3 of 30
`
`
`
`8.
`
`Dairymen maintains its principal place of business at 440 Plaza Drive,
`
`Palmyra, Pennsylvania 17078.
`
`9.
`
`Upon information and belief, Defendant, RC Herr, LLC, is a limited
`
`liability company organized under the laws of Pennsylvania, with its principal
`
`place of business at 346 Willow Ave., Camp Hill, Pennsylvania 17011.
`
`Jurisdiction and Venue
`
`10. This Court has original jurisdiction over this Complaint for
`
`infringement of a trademark, unfair competition, and false designation of origin
`
`pursuant to 15 U.S.C. § 1121(a), as well as 28 U.S.C. § 1331 (Federal Question
`
`Jurisdiction); 28 U.S.C. § 1337(a) (Commerce Regulations); and 28 U.S.C. §
`
`1338(b) (Trademark and Unfair Competition).
`
`11. This Court has jurisdiction over all pendant state law claims pursuant
`
`to 28 U.S.C. § 1367(a) (Supplemental Jurisdiction) because all such claims are
`
`based upon the same or substantially the same conduct by Defendant.
`
`12. Defendant is subject to personal jurisdiction in this Court, as it is a
`
`business registered in the state of Pennsylvania and transacts business in
`
`Pennsylvania.
`
`13. The Middle District of Pennsylvania is the proper venue for this
`
`action pursuant to 28 U.S.C. § 1391(b)(1) and (2), because Defendant’s principal
`
`3
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 4 of 30
`
`
`
`place of business is located in this judicial district and a substantial part of the
`
`events giving rise to this action occurred in this judicial district.
`
`Dairymen and its Protected Trademark
`
`14. Originally formed as the Crawford Count Dairy Association in 1871,
`
`Dairymen has grown into a statewide organization with a focus on supporting
`
`Pennsylvania dairy farms.
`
`15. Beginning in 1953, and continuing until present time, Dairymen has
`
`served milkshakes at the annual Pennsylvania Farm Show (“Farm Show”),
`
`benefiting agricultural scholarships, youth programs and educational programs
`
`across the Commonwealth of Pennsylvania.
`
`16. The Farm Show is the largest indoor agricultural exhibition in the
`
`United States, drawing more than 500,000 visitors on average each year from
`
`Pennsylvania and other states.
`
`17. The Dairymen’s milkshakes consistently rank as among the most
`
`popular food and/or beverage items sold during the Farm Show.
`
`18. Since 2013, Dairymen has also sold its milkshakes at various
`
`community and corporate events throughout Pennsylvania and parts of Maryland,
`
`including school sporting events, community days, and seasonal festivals.
`
`19. The proceeds raised through the sale of its milkshakes at the Farm
`
`Show and other events are the main source of funding for the Dairymen’s
`
`4
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 5 of 30
`
`
`
`philanthropic mission that provides dairy-farming promotion and agricultural
`
`education, a mobile education lab, next-generation scholarships, the PA Dairy
`
`Princess and Promotion Program, the Calving Corner, a statewide fresh-milk
`
`distribution initiative to fight hunger in Pennsylvania and more.
`
`20. Through its seventy continuous years of providing milkshakes at the
`
`Farm Show, and more recently at community events and corporate outings,
`
`Dairymen has achieved a level of fame and notoriety throughout Pennsylvania for,
`
`among other things, its “farm show milkshakes” and its support of the
`
`Pennsylvania dairy industry.
`
`21. As a result of its seven decades of being the exclusive provider of
`
`milkshakes at the Farm Show, the Dairymen’s milkshake product has been
`
`historically and colloquially referred to and otherwise known by the public as the
`
`“farm show milkshake”, with such name being associated in the minds of the
`
`consuming public with Dairymen and its milkshake product.
`
`22. Dairymen’s products, including milkshakes, are marketed and sold to
`
`consumers in connection with its trademarks.
`
`23. As such, Dairymen has developed federal and common law rights for
`
`its family of trademarks.
`
`24. Dairymen has been using PA DAIRYMEN’S ASSOCIATION and
`
`THE PENNSYLVANIA DAIRYMEN’S ASSOCIATION as a word mark
`
`5
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 6 of 30
`
`
`
`continuously, which designates Dairymen as the source, provider, licensor, or
`
`sponsor of the goods or services to which the marks are associated.
`
`25.
`
`In addition, to protect its valuable marks, Dairymen has obtained a
`
`United States Patent and Trademark Office (“USPTO”) registration for its logo at
`
`registration no. 5,689,052:
`
`(the “Dairymen Logo”).
`
`
`
`26. The Dairymen Logo registration is in full force and effect and has
`
`been since its respective date of registration. A true and correct copy of the
`
`registration certificate for this mark is attached as Exhibit “A”.
`
`27. The Dairymen Logo has obtained incontestable status under the
`
`Lanham Act, 15 U.S.C. § 1065, and is therefore conclusive evidence of the validity
`
`of that mark, of Dairymen’s registration and ownership of that mark, and of
`
`Dairymen’s exclusive right to use the mark in the United States.
`
`28.
`
`In addition to its registrations, Dairymen enjoys common law rights in
`
`the trademark PA DAIRYMEN’S ASSOCIATION and THE PENNSYLVANIA
`
`DAIRYMEN’S ASSOCIATION, through its extensive advertisement and use of
`
`6
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 7 of 30
`
`
`
`those marks in connection with its good and services throughout central
`
`Pennsylvania for decades.
`
`29. Dairymen’s rights in the Dairymen Logo, as well as its common law
`
`rights and its rights covered by registrations, are collectively referred to as the
`
`“Dairymen Marks”.
`
`30. Dairymen consistently and prominently displays and advertises the
`
`Dairymen Marks in connection with its goods and services.
`
`31. Dairymen consistently uses the Dairymen Marks in connection with
`
`various events, promotions, marketing and advertising of its mission and products,
`
`including its milkshakes.
`
`32. The general public has come to recognize and associate the Dairymen
`
`Marks with Dairymen’s mission and high-quality goods and services.
`
`33. The general consuming public has for decades also recognized the
`
`Dairymen Marks exclusively with Dairymen and its goods and services.
`
`34. The goodwill and recognition Dairymen has built in its mission,
`
`educational programs, outreach and goods and services has become associated with
`
`the Dairymen Marks.
`
`35. Dairymen, either directly or indirectly or through its licensees,
`
`advertises and sells goods and services, including milkshakes, in connection with
`
`these Marks.
`
`7
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 8 of 30
`
`
`
`36. As a result of Dairymen’s extensive advertising and promotion of its
`
`goods and services using the Dairymen Marks, and through favorable industry
`
`acceptance and recognition, the relevant consuming public have come to recognize
`
`and identify Dairymen as the source of the top-quality goods and services
`
`associated and offered in connection with those trademarks.
`
`37. Accordingly, the Dairymen Marks are assets of incalculable value as
`
`identifiers of Dairymen and its high-quality goods and services, as well as
`
`Dairymen’s extensive goodwill.
`
`Plaintiff and Defendant’s Licensing Agreement
`
`38.
`
`In 2017, Dairymen and Defendant entered into a licensing and
`
`distribution relationship wherein Defendant would market and sell Dairymen’s
`
`farm show milkshakes at events beyond the Farm Show.
`
`39. Over the course of approximately four (4) years, Dairymen provided
`
`to Defendant its farm show milkshake product for events, as well as Dairymen-
`
`branded cups with the Dairymen Logo.
`
`40. Defendant profited from its association with Dairymen, particularly
`
`with respect to its association with the “farm show milkshake” product, which was
`
`associated in the minds of the public with Dairymen long before the relationship
`
`with Defendant arose.
`
`8
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 9 of 30
`
`
`
`41.
`
`In September 2021, Dairymen terminated its agreement with
`
`Defendant to sell and market Dairymen’s products, including its farm show
`
`milkshake.
`
`42. Thereafter, on September 21, 2021, Dairymen demanded that
`
`Defendant remove all images of Dairymen’s logo and milkshakes from any
`
`promotional material and social media platforms of Defendant’s “brand”. A true
`
`and correct copy of the September 21, 2021 email is attached hereto as Exhibit
`
`“B”.
`
`Defendant’s Infringing Uses of Plaintiff’s Trademarks
`
`43. Following the termination of Dairymen’s agreement with Defendant,
`
`and even before, Defendants have engaged in a deliberate and calculated plan to
`
`trade upon the reputation and good will established by the Dairymen, in order to
`
`sell their competing milkshake product, through the unauthorized use of the
`
`Dairymen Marks and the false association of their product with the Dairymen.
`
`44. Notwithstanding that there is no affiliation or relationship between
`
`Dairymen and Defendant, and that Defendant has never sold a milkshake product
`
`at the Farm Show, Defendant markets and sells a milkshake product under the
`
`name “Farm Show Milkshake” in an effort to create the perception of an affiliation
`
`with Dairymen, and/or to otherwise pass off its milkshake product as the farm
`
`9
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 10 of 30
`
`
`
`show milkshake product sold annually at the Farm Show, and throughout the year
`
`at community and corporate events, by Dairymen.
`
`45. With complete knowledge of the Dairymen’s first-established interest
`
`in the “Farm Show Milkshake” name, and while still selling milkshakes under an
`
`agreement with the Dairymen, Defendant filed federal trademark application No.
`
`88/232,051 for the following mark, clearly including the “Farm Show Milkshake”
`
`phrase:
`
`
`
`46. The ‘051 application was filed on December 17, 2018, for
`
`“Milkshakes” and “Hats” and issued as registration No. 5,947,693 on December
`
`31, 2019.
`
`47. Defendant operates a website at the domain
`
`<farmshowmilkshakes.com>, through which Defendant operates under the
`
`tradename “FARM SHOW MILKSHAKES”, and offers, advertises, and sells
`
`milkshakes.
`
`10
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 11 of 30
`
`
`
`48. Defendant also operates various social media platforms, including
`
`INSTAGRAM, FACEBOOK, and TWITTER under its tradename “FARM SHOW
`
`MILKSHAKES”.
`
`49. Customers visiting Defendant’s website <farmshowmilkshakes.com>
`
`can navigate to portions of the website including: HOME, REQUEST A DATE,
`
`FUNDRAISERS, FIND A MILKSHAKE, ABOUT and CONTACT US, in
`
`addition to the social media platforms.
`
`50. Defendant’s website and social media platforms are and/or were using
`
`without authorization Dairymen identifiers to advertise, sell, and offer to sell what
`
`Defendant describes as “Authentic Farm Show Milkshake[s]”. 1
`
`51. Defendant’s website originally stated the following regarding its
`
`background:
`
`These milkshakes have grown their reputation for being
`thick & delicious at the Pennsylvania Farm Show in
`Harrisburg. In 2016, a group of Penn State grads with ties
`to Pennsylvania's agricultural industry, came together to
`officially form Farm Show Milkshakes to bring this
`iconic Central Pennsylvania treat to fundraisers
`throughout the mid-state.2
`
`
`
`
`1 See: https://www.facebook.com/FarmShowMilkshakes (“We bring the Authentic Farm Show Milkshake
`to an event or fundraiser near you!”). A screen shot of Defendant’s facebook page containing is attached hereto as
`Exhibit “C”.
`2 A screen shot of Defendant’s website containing the referenced description is attached hereto as Exhibit
`“D”. This screenshot was accessed via the web archive, and represents being active as late as August 11, 2022
`(https://web.archive.org/web/20220811171027/https://www.farmshowmilkshakes.com/about).
`
`11
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 12 of 30
`
`
`
`52. Defendants have recently changed their website to include the
`
`following description in lieu of the above:
`
`In 2016, a group of Penn State grads with ties to
`Pennsylvania’s agricultural industry, came together to
`officially form Farm Show Milkshakes to bring a
`GREAT milkshake to your event.
`
`53. Notwithstanding the above change, Defendant continues to include
`
`the following information on its website that falsely implies an association between
`
`its product and the product Dairymen has sold at the Farm Show for the past
`
`seventy years:
`
`54. Further, Defendant’s past and present advertising materials include a
`
`
`
`number of unauthorized uses of Dairymen identifiers.
`
`55. By way of example only, Defendant’s social media platforms include
`
`and/or included the following images:
`
`12
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 13 of 30
`
`
`
`56. Beyond falsely associating the Dairymen and the Dairymen Marks
`
`v.
`
`3
`
`with Defendant, the above photos were clearly modified to “insert” Defendant’s
`
`“Farm Show Milkshakes” logo in place of the true Dairymen trademark, creating
`
`an association which intentionally misleads consumers.
`
`57.
`
`In addition, the “Farm Show Milkshakes” website and other
`
`promotional materials of Defendant made further explicit uses of the Dairymen’s
`
`business name and Logo, including, by way of example only:
`
`
`3 See photographs and posts taken from Defendant’s Instagram page, attached hereto as Exhibit “E”. These
`images were found as late as September 29, 2022.
`
`13
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 14 of 30
`
`
`
`4
`
`5
`
`58. Additionally, Defendant’s marketing and metatag information
`
`integrated into its website blatantly attempted to associate Defendant/Farm Show
`
`Milkshakes with Dairymen by including masked Dairymen-identifying information
`
`in “white script” on a white background, highlighted in the following screen
`
`capture:
`
`
`4 This image was found at https://www.farmshowmilkshakes.com/find-a-milkshake, visited as late as
`September 29, 2022. A true and correct copy of the page is attached as Exhibit “F”.
`
` 5
`
` Moreover, Exhibit “E” contains numerous other examples of association with Dairymen.
`
`14
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 15 of 30
`
`
`
`6
`
`59. Further, the source code from the Defendant’s website included, and
`
`still includes, the following lines and information (see: view-
`
`source:https://www.farmshowmilkshakes.com/):
`
`"We are Pennsylvania's Favorite Milkshake on the move.
`Chocolate, Vanilla, & 1\/2 & 1\/2 Milkshakes now
`available in your neighborhood, and not just at the Farm Show!
`What used to only be served by the PA Dairymen's Association
`at the annual Farm Show is now appearing at events across
`Pennsylvania”
`
`and
`
`{"name":"description","value":"We are Pennsylvania's Favorite
`Milkshake on the move. Chocolate, Vanilla, & 1\/2 &
`1\/2 Milkshakes now available in your neighborhood, and not
`just at the Farm Show! What used to only be served by the PA
`
`
`6 A true and correct copy of Defendant’s website screenshot is attached as Exhibit “G” as found on:
`https://web.archive.org/web/20220815014349/https://www.farmshowmilkshakes.com/.
`
`15
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 16 of 30
`
`
`
`Dairymen's Association at the annual Farm Show is now
`appearing at events across Pennsylvania. ","property":false}],.7
`
`60. This metatag language is used by Internet search engines to locate and
`
`index website search results for end users.
`
`61. The use of such metatag language is for the specific intent of directing
`
`consumer internet searches to specific webpages.
`
`62. Here, by using metatag language that mentions the Dairymen and its
`
`milkshake product, upon information and belief, Defendant was and is attempting
`
`to have consumers searching for the Dairymen’s product directed to its own
`
`website.
`
`63. Defendant’s website and use of this information intentionally misled
`
`and misleads and confuses Dairymen customers, as well as trades upon the
`
`valuable goodwill that Dairymen has developed over decades of commercial
`
`activity.
`
`64. Defendant’s goods overlap with, or are natural extensions of, the
`
`goods and services offered by Dairymen and are directly competitive with those
`
`goods.
`
`
`7 This language demonstrates explicit association with Plaintiff, and still shows up on Defendant’s Website
`as of June 6, 2023 in the page source information at view-source:https://www.farmshowmilkshakes.com/ . Due to
`how voluminous the source code is, an entire copy of the source code has not been attached, but can be provided
`upon request from the Court.
`
`16
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 17 of 30
`
`
`
`65. Dairymen’s rights in the Dairymen Marks predate Defendant’s use of
`
`the marks.
`
`66. Dairymen has not authorized Defendant’s use in commerce, either
`
`directly or indirectly, of its valuable Dairymen Marks in connection with
`
`Defendant’s goods, marketing and advertising.
`
`67. Dairymen has no affiliation or connection with Defendant.
`
`68. Defendant’s egregious misuse of the Dairymen Marks, including the
`
`farm show milkshake name, has caused, or is likely to cause, great and irreparable
`
`injury to Dairymen, including irreparable injury to the goodwill and reputation
`
`embodied in those marks, for which Dairymen has no adequate remedy at law.
`
`69. Upon information and belief, Defendant will continue to commit the
`
`acts complained of unless permanently enjoined.
`
`70. Upon information and belief, Defendant’s acts were deliberately and
`
`intentionally carried out in bad faith, or with a reckless disregard for or willful
`
`blindness to Dairymen’s rights in the Dairymen Marks, and the farm show
`
`milkshake name, for the purpose of trading on Dairymen’s reputation embodied in
`
`those marks and diluting those marks.
`
`71. The willful nature of Defendant’s unlawful acts renders this an
`
`“exceptional case”, entitling Plaintiff to an award of statutory damages, profits,
`
`treble damages, and attorneys’ fees under at least 15 U.S.C. § 1117(a).
`
`17
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 18 of 30
`
`
`
`Defendant’s Interference With Contracts
`
`72. Defendant’s use in marketing and advertising infringes and falsely
`
`represents that they are associated and/or otherwise affiliated with Dairymen.
`
`73. Defendant’s use of its logo was designed to cause confusion among
`
`the public.
`
`74. Moreover, indicative of Defendant’s efforts to harm Dairymen and
`
`improperly solicit customers, Defendant caused one of Dairymen’s scheduled
`
`events (specifically a food truck event at Bermudian Springs School District) to be
`
`cancelled because of claims/issues raised by Defendant associated with the phrase
`
`“Farm Show Milkshakes”.
`
`75. Dairymen was scheduled to participate as a vendor at the Bermudian
`
`Springs School District on September 26, 2022.
`
`76. Upon information and belief, the School District had advertised and/or
`
`otherwise promoted the event with information that Dairymen would be present
`
`and serving its farm show milkshakes.
`
`77.
`
` Upon information and belief, Defendant contacted the School District
`
`and claimed that the District could not represent that they would have the farm
`
`show milkshake product at their event, because Defendant had the exclusive right
`
`to the farm show milkshake name.
`
`18
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 19 of 30
`
`
`
`78. Dairymen was thereafter informed by the School District that
`
`Dairymen would not be permitted to participate in the School District’s event as a
`
`direct result of the representations made by Defendant.
`
`79. Dairymen was additionally informed of an event where a customer of
`
`Dairymen’s contacted Defendant, believing it to be Dairymen, based upon the
`
`confusing association caused by Defendant’s website, seeking to have milkshakes
`
`provided at an event.
`
`80.
`
`Instead of notifying Dairymen, Defendant contracted with the
`
`customer, but thereafter canceled the contract with that customer.
`
`81. That customer then approached Dairymen as to why the event was
`
`canceled.
`
`82. On May 8, 2023, Defendant served milkshakes at an event at Fort
`
`Hunter Park under their Farm Show Milkshake logo.
`
`83. Upon information and belief, the event sponsor put up directional
`
`signs leading to Defendant’s tent, which indicated that the milkshakes were “Pa
`
`Dairymen’s Association Milkshakes”. A true and correct copy of a picture taken at
`
`the event depicting one of the directional signs is attached here as Exhibit “H” and
`
`incorporated by reference.
`
`19
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 20 of 30
`
`
`
`84. Upon information and belief, Defendant was aware that the event
`
`sponsor had posted the signs but did nothing to correct the false association of
`
`Defendant’s milkshake product with Plaintiff’s.
`
`85. At least one patron at the event asked one of the individuals operating
`
`Defendant’s tent if they were part of the Dairymen.
`
`86. The individual responded “yes”.
`
`87. Dairymen has received numerous other contacts from customers
`
`and/or potential customers regarding their confusion over Defendant’s product and
`
`whether there is an association with Plaintiff’s milkshake product.
`
`88. Defendant’s conduct evidences its continued attempts to associate
`
`with, and trade on, the goodwill and reputation of Dairymen, and the public’s
`
`actual confusion as result of Defendant’s actions.
`
`Plaintiff Will Continue To Suffer Irreparable Harm As A Result Of
`Defendant’s Actual And/Or Threatened Unlawful Conduct
`
`89. As a direct and proximate result of Defendants’ actual, threatened, and
`
`imminent conduct, Dairymen has suffered, and will continue to suffer, significant
`
`irreparable harm, as well as incalculable economic injury and loss.
`
`90. The ongoing and threatening nature of Defendants’ unlawful actions
`
`necessitates judicial intervention in the form of permanent injunctive relief to (1)
`
`prohibit Defendants from improperly soliciting and/or advertising to Dairymen’s
`
`20
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 21 of 30
`
`
`
`customers or prospects; (2) cease all use of the Dairymen Marks in any manner,
`
`including, but not limited to, advertising on Defendant’s website(s) and social
`
`media accounts; (3) remove any reference and mention to Dairymen and Dairymen
`
`Marks from Defendant’s website(s) and social media accounts; (4) cease contacts
`
`and interference with all partners, vendors, customers and events in which
`
`Dairymen is selling its products; and (5) cease usage of the phrase “Farm Show
`
`Milkshakes” as part of Defendant’s business.
`
`91. Dairymen is entitled to all remedies available under law and equity.
`
`92. On October 13, 2022, Dairymen, through its undersigned counsel,
`
`sent a cease and desist letter to Defendant (“C&D Letter”), directing that
`
`Defendant immediately cease and desist from engaging in the conduct identified
`
`herein, as more specifically set forth in the C&D Letter. A true copy of C&D
`
`Letter is attached hereto as Exhibit “I” and incorporated by reference.
`
`93.
`
`In response to the C&D Letter, Defendant made some changes to its
`
`social media platforms, but as indicated above, continues to use the Farm Show
`
`Milkshake name and logo, and continues to use Dairymen Marks to market its
`
`product and create a false association between its milkshake and the milkshake
`
`product marketed and sold by Dairymen.
`
`
`
`
`
`21
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 22 of 30
`
`
`
`COUNT I - FEDERAL TRADEMARK INFRINGEMENT UNDER THE
`LANHAM ACT (15 U.S.C. § 1114)
`
`94. Plaintiff incorporates by reference all preceding paragraphs as though
`
`expressly stated herein.
`
`95. Defendant is using the Dairymen Marks in commerce, in connection
`
`with the sale, offering for sale, distribution, and/or advertising of goods and
`
`services that do not originate with and are not sponsored by or affiliated with
`
`Plaintiff.
`
`96. Defendant is utilizing the Dairymen Marks in advertisements intended
`
`to be used in commerce upon or in connection with the sale, offering for sale,
`
`distribution, and/or advertising of goods and services that do not originate with,
`
`and are not sponsored by or affiliated with, Plaintiff.
`
`97. Defendant’s actions are likely to cause confusion, mistake, or
`
`deception as to the source of origin of the goods offered by Defendant in
`
`connection with the Dairymen Marks, in that customers and potential customers
`
`are likely to believe that those goods offered by Defendant are provided by,
`
`sponsored by, approved by, licensed by, affiliated or associated with, or in some
`
`other way legitimately connected to Plaintiff, when there is no such relationship.
`
`98. As a direct and proximate result of the likely confusion, mistake, or
`
`deception, Dairymen has suffered and will continue to suffer irreparable harm if
`
`Defendant’s conduct is not enjoined.
`
`22
`
`
`
`Case 1:23-cv-00929-CCC Document 1 Filed 06/06/23 Page 23 of 30
`
`
`
`99. The likely confusion, mistake, or deception caused by Defendant is
`
`willful and is in violation of the Lanham Act, 15 U.S.C. § 1114.
`
`COUNT II - FEDERAL UNFAIR COMPETITION &
`FALSE DESIGNATION OF ORIGIN
`
`100. Plaintiff incorporates by reference all preceding paragraphs as though
`
`expressly stated herein.
`
`101. Defendant’s use of the Dairymen Marks constitutes use of terms,
`
`nam
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
