Hutzler v. Brite Concepts - Tomato Saver trademark complaint.pdf

8/10/2019 Hutzler v. Brite Concepts - Tomato Saver trademark complaint.pdf

1/18

dS 44C/SDNY

REV. 4/2014

CIVIL COVER SHEET

ganfrCTfvicgjbfi

he JS-44 civilcover sheet and the information contained herein neither replace nor supplement the filing

pleadings or other

papers as

required by law,

except as

provided by local rules of court. This form, approved by

the

Judicial Conference of the United States in Septemberlj^4, isj^quired fjf%lo|ltieClerk of Court forjhe purpose of

initiating the civil

docket sheet.

PLAINTIFFS

HUTZLER MANUFACTURING COMPANY,

INC.

;r1w4, isjjteuired fgranroWhe ClerkofCourtfc

1 4 C f o

nCCCMnAMTC ^Jr

EFEN NTS

BRITE CONCEPTS INC. AND LAMI

PRODUCTS,

INC.

ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER

Turner P. Smith, Esq., Curtis, Mallet-Prevost, Colt & Mosle LLP

10 1 Pa rk Avenue

New

York, NY

10178

ATTORNEYS (IF KNOWN)

CAUSE OF ACTION CITE THEU.S.CIVIL

STATUTE

UNDER WHICH

YOU

ARE

FILING AND

WRITE A

BRIEF STATEMENT

OFCAUSE;

(DO NOTCITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)

Counterfeiting/Trademark Infringement-15 U.S.C. 1114; Unfair Competition 15 U.S.C.

1125

Has

this

action, case, or

proceeding,

or one essentially the same

been

previously filed in SDNY atany time? NdIresEuyAgB^rev

If yes was this

case

Vol.

[x]

Invol.

Dismissed No

Yes \x\ If yes give date 08/22/2014

&

Case No

THIS

AN INTERNATIONAL

ARBITRATION CASE?

No

0 YeS Q

PL CE

AN[x] INONEBOXONLY

TORTS

CONTRACT PERSONAL INJURY

[

]110

INSURANCE

[ ] 310 AIRPLANE

I ]120

MARINE

[ ] 315 AIRPLANE PRODUCT

[ 1130

MILLER AC T

LIABILITY

[ ]140

NEGOTIABLE

[ ] 320 ASSAULT, LIBEL&

INSTRUMENT

SLANDER

[ ]150 RECOVERY OF [ ]

330

FEDERAL

OVERPAYMENT

8,

EMPLOYERS'

ENFORCEMENT

LIABILITY

OF

JUDGMENT

[ ] 340 MARINE

[ ] 151

MEDICARE ACT

[ ] 345 MARINE PRODUCT

[

1152

RECOVERY

OF LIABILITY

DEFAULTED

[ ] 350 MOTOR VEHICLE

STUDENT LOANS

[ ] 355 MOTOR VEHICLE

(EXCLVETERANS)

PRODUCT LIABILITY

[ ]153

RECOVERY

OF

[ ]360 OTHER PERSONAL

OVERPAYMENT

INJURY

OF VETERAN'S

[ ]362 PERSONAL INJURY -

BENEFITS

ME D

MALPRACTICE

[

]160

STOCKHOLDERS

SUITS

[ 1190

OTHER

CONTRACT

[

1195

CONTRACT

PRODUCT ACTIONSUNDER STATUTES

LIABILITY

( ]196 FRANCHISE CIVIL RIGHTS

[ ] 44 0 OTHER CIVILRIGHTS

REAL

PROPERTY

(Non-Prisoner)

[ ]441 VOTING

[ 1210

LAND

[ ]

442

EMPLOYMENT

CONDEMNATION

[ ]443 HOUSING/

[ ] 220

FORECLOSURE

ACCOMMODATIONS

[ ]230 RENT LEASE

&

[ ] 445 AMERICANS WITH

EJECTMENT

DISABILITIES -

[

]240

TORTS

TO LAND

EMPLOYMENT

[

1245

TORT PRODUCT

[ ]446 AMERICANSWITH

LIABILITY

DISABILITIES -OTHER

[

]290

ALL OTHER

REAL PROPERTY

[ ] 448 EDUCATION

Checkifdemandedin complaint

CHECK

IF

THIS

IS A

CLASS ACTION

UNDER

F.R.C.P.

23

NATURE OF

SUIT

PERSONAL INJURY

[ J367 HEALTHCARE/

PHARMACEUTICAL PERSONAL

INJURY/PRODUCT

LIABILITY

[ ] 365 PERSONAL INJURY

PRODUCT

LIABILITY

[ ]368 ASBESTOS PERSONAL

INJURY

PRODUCT

LIABILITY

PERSONAL PROPERTY

[ ]

370

OTHER FRAUD

[ ] 371 TRUTH INLENDING

FORFEITURE/PENALTY

[ ] 625 DRUG RELATED

SEIZURE OF PROPERTY

21 USC

881

[ ]

690

OTHER

[ ]380 OTHER PERSONAL

LABOR

PROPERTY DAMAGE

[ ] 385 PROPERTY DAMAGE

PRODUCT LIABILITY

PRISONER

PETITIONS

[ ]

463

ALIEN DETAINEE

[ ] 510 MOTIONS TO

VACATE

SENTENCE

28 USC 2 2 5 5

[ ]530 HABEAS CORPUS

[ ]

535

DEATH PENALTY

[ ] 540 MANDAMUS & OTHER

PRISONER

CIVIL

RIGHTS

[ ] 550 CIVILRIGHTS

[ ] 555 PRISON CONDITION

[ ] 560 CIVILDETAINEE

CONDITIONS OF CONFINEMENT

[ ]

710

FAIR LABOR

STANDARDS ACT

[ ] 720 LABOR/MGMT

RELATIONS

[ ] 740 RAILWAY LABOR ACT

[ I 751 FAMILYMEDICAL

LEAVEACT (FMLA)

[ ] 790 OTHER LABOR

LITIGATION

[ ] 7 91 EMPL RET INC

SECURITY

AC T

IMMIGRATION

] 462 NATURALIZATION

APPLICATION

] 465 OTHER IMMIGRATION

ACTIONS

ACTIONS

UNDER

STATUTES

BANKRUPTCY

[ ] 422 APPEAL

28 USC 1 5 8

[ ]

423

WITHDRAWAL

28 USC

157

PROPERTY RIGHTS

[ ]

820

COPYRIGHTS

[ ] 830 PATENT

H 840 TRADEMARK

SOCIAL

SECURITY

[ ]861 HIA(1395ff)

[ ]862 BLACKLUNG (923)

[ ]

863

DIWC/DIWW(405(g))

[ ] 864 SSID TITLE XVI

[ ] 865 RSI (405(g))

FEDERAL

TA X

SUITS

[ ] 870 TAXES (U.S. Plaintiff or

Defendant)

[ ]871 IRS-THIRD PARTY

26 US C 7609

ltd

14 Civ.

4297

OTHERSTATUTES

[ 1375 FALSECLAIMS

[ J400 STATE

REAPPORTIONME

[ ] 410 ANTITRUST

[ ] 430 BANKS &BANKIN

[ ] 450 COMMERCE

[ ] 460 DEPORTATION

[ ] 470 RACKETEER INFL

ENCED

& CORRU

ORGANIZATION A

(RICO)

[

]480

CONSUMER CRED

[ ] 490 CABLE/SATELLIT

[ ] 850 SECURITIES/

COMMODITIES/

EXCHANGE

[ ] 890 OTHER STATUTO

ACTIONS

[ ] 891 AGRICULTURALA

] 893 ENVIRONMENTAL

MATTERS

]895 FREEDOM OF

INFORMATION AC

] 896 ARBITRATION

] 899 ADMINISTRATIVE

PROCEDURE

ACT/REV

APPEAL OF AGENCY

D

[ ]950 CONSTITUTIONA

STATE STATUTES

DEMAND

OTHER

DO

YOyjCLAjM THIS

CASE IS RELATED TO

A

CIVIL

CASE

NOW

PENDING

IN S.D.N.Y

JUDGE DOCKET NUMBER

Check Y

only

ifdemanded in

complaint

JURY DEMAND: YES

NOTE:

Youmust also submitat the timeof filing the Statement of Relatedness form (Form


2/18

PLACE

Nx

IN ONEBOXONLY ORIGIN

S 1 Original [_| 2

Removed from L 1

3

Remanded

Q 4

Reinstated or

LJ 5

Transferred from fj

6

Multidistrict fj

7

Appeal to

Di

Proceeding state

Court

from

Reopened

Specify

District

Litigation Judge from

a. all

parties represented Appellate

| | b. At

least

one

party Is

pro

se.

PLACEANxINONEBOXONLY

BASIS OFJURISDICTION

IF

DIVERSITY,

INDICATE

1

U.S.

PLAINTIFF

2

U.S. DEFENDANT [x]

3

FEDERAL QUESTION

4

DIVERSITY

ITIZ NSHIP

BELOW.

(U.S. NOT A

PARTY)

CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITYCASES ONLY)

(Place an [X]in one

box

for Plaintiff

and one box

for

Defendant)

Magistrate J

Judgment

PTF DEF

CITIZEN OF THIS STATE [ ] 1 [ ] 1

CITIZEN OF ANOTHER STATE [ ]2 [ ]2

CITIZEN O R S U BJ EC T

OF A

FOREIGN

C O U N T R Y

PTF

DE F

[ ] 3 [ ] 3

PT F

DE F

INCORPORATED

and PRINCIPAL P LACE [ ] 5 [ ]

OF BUSINESS IN

ANOTHER

STATE

INCORPORATED or PRINCIPAL PLACE [ ]4 [ ]4

OF

BUSINESS IN THIS STATE

PLAINTIFF(S)

ADDRESS(ES)

AND COUNTY(IES)

Hutzler Manufacturing

Company,

Inc.

4

Grace

Way

Canaan, CT 06018

FORE IGN NATION [ ] 6 [ ]6

DEFENDANT(S) ADDRESS(ES) AND

COUNTY(IES)

Brite Concepts Inc.

1043 Grand

Avenue 101 , Saint

Paul,

Minnesota 55105-3002

LaMi

Products,

Inc.

860 Welsh

Road,

Huntingdon Valley, PA 19006

DEFENDANT(S)

ADDRESS

UNKNOWN

REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH

REASONABLE

DILIGENCE, TO ASCERTAIN

RESTOENCE

ADDRESSES

OF THE FOLLOWING DEFENDANTS:

Checkone: THIS ACTION SHOULD BE

ASSIGNED

TO:

WHITE PLAINS |x] MANHATTAN

(DO NOT check either

box

if this a

PRISONER

PETITION/PRISONER CIVIL RIGHTS

COMPLAINT.)

DATE

12/3/2014

SIGNATUKB-SF

ffotfttH iX

OF

RECORD ADMITTED

TO

PRACTICE

IN

THIS DISTRICT

[ ] NO

[Xj YES

DATE ADMITTED

MoPJ

Yr.

1981 )

RECEIPT Attorney Bar Code TS 8052

Magistrate

Judge

is to

be designated

by the Clerk of the Court.

Magistrate Judge

Ruby J. Krajick, Clerk of Court by.

, Deputy Clerk, DATED.

UNITED

STATES

DISTRICT

COURT (NEWYORK

SOUTHERN)

is

so

Designated.


3/18

UNITED STATES

DISTRICT

COURT

SOUTHERN

DISTRICT

OF NEW

YOR

P . J H

.14_CVY

9556

HUTZLER MANUFACTURING COMPANY, INC.

Plaintiff,

-against-

BRITE

CONCEPTS

INC.

AND LAMI PRODUCTS, INC.,

Defendants.

x

PlaintiffHutzler ManufacturingCompany, Inc. ( Hutzler''), for its complaint

against defendants Brite Concepts Inc. ( Brite Concepts ) andLaMi Products, Inc. ( LaMi )

alleges as follows:

N A T U R E O F T H E A C T I O N

1. This is a civil action for injunctive relief and damages for counterfeiting and

trademark infringement under Section 32(1)

of

the Lanham Act (15 U.S.C. 1114(1)), unfair

competition under Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)), and for common

law trademark infringement, unfair competition, and tortious interference under New York law.

T H E P A R TI E S

2. Plaintiff Hutzler is a corporation organized and existing under the laws of

the State of New York. Hutzler does business in this judicial district.

3. On information and belief, defendant Brite Concepts is a corporation

organized and existingunderthe lawsof the state ofDelaware, with a principal place of

business inMinnesota. On information and belief, Brite Concepts imports and distributes the

products at issue in this judicial district.

20392642

C O M P L A I N T

14

Civ.

rvti

cr

C O

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CD

r

1 3

p

CT

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C o

-?


4/18

4. On information and belief, defendant LaMi is a corporation organized and

existing under the laws

of

the state of Pennsylvania. On information and belief, LaMi imports

and distributes the products at issue in this judicial district.

J U R IS D IC T IO N A N D

V E N U E

5. This Court has jurisdiction over the subject matter

of

this action pursuant to

15 U.S.C. 1221 and 28

U.S.C.

1331, 1338,

and 1367.

6. This Court has personal jurisdiction over defendants because defendants

continuously and systematically conduct business within the State

of

New York.

7. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b) and

1400(b) because on information and belief, defendants have engaged in the complained-of acts

of infringement in this judicial district.

P R E L IM I N A R Y S T A T EM E N T

8. This is an action to enforce and protect Hutzler 's valuable intellectual

property rights. Plaintiff is a manufacturer and distributor of housewares; the products at issue

in this case are plastic containers, used for storing and preserving fruits, that bear the

TOMATO

SAVER mark. Defendants Brite Concepts and LaMi have adopted Hutzler's exact trademark

to identify what can only be described as a knock-off food storage container. Defendants'

conduct constitutes trademark infringement, counterfeiting, unfair competition, and tortious

inter ference

with

business.

F A C T U A L

B A C K G R O U N D

Hutz le r s Business

9. Hutzler, a manufacturer and distributor of housewares, has been family

owned and operated since 1938.

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10. Since its inception, Hutzler has been a pioneer in the housewares industry.

For example, in the 1960s, Hutzler began molding cooking and serving utensils with

MeLaMine, the highest quality plastic available. In the 1970s, Hutzler pioneered the

manufacture of fiberglass-reinforced nylon utensils. In the 1980s, Hutzler began manufacturing

unique, innovative baking gadgets.

11. Over the past decade, the housewares industry has seen a major shift in

structure. There has been tremendous consolidation among retailers and many of the smaller

players have gone out of business. Many of Hutzler's customers have also become its

competitors in the direct importation of products. While Hutzler was one of the first in the

industry to secure the sourcing

of

products overseas, today many

of

Hutzler's customers have

the same ability due to globalization. This has caused Hutzler to take strategic steps and make

targeted investments to move up the innovation ladder in order to compete.

12. In particular, Hutzler has had to develop new and unique products itself (or

innovate in the use of packaging), instead of relying on its manufacturing partners or selling

knock-off products, as many importers now do. Hutzler now focuses on designing products

that are unique in features and/or design, and it has taken steps to protect these innovations

through the use

of

utility and design patents and through its use of trademarks to identify the

source of its goods. Nearly all of the company's revenue growth comes from new products.

13. In 2005, Hutzler introduced a line of products used for storing and

preserving various types of produce. This line

of

plastic products is called the Food Saver

Line. The Food Saver Line contains an array

of

food storage containers, including the Tomato

Saver. The

Tomato

Saver bears the TOMATO SAVER

mark.


6/18

14. Designing these products was not an easy task. Each product had its

own

design challenges and the design process itselfwas an expensive and time-consuming

endeavor. A great deal

of

time and money was spent working with product development

consultants and 3D designers/model-makers. Each product went through numerous iterations

before arriving at its final design. The process took between six and twelve months for each

Food Saver product.

15. Hutzler's Food Saver Line has quickly become the company's most popular

product line. The products in Hutzler 's Food Saver Line sell for between 2.99 and 3.99 each.

Sales of products in the Food Saver Line represent approximately 25 percent

of

Hutzler's

domestic sales, and the Tomato Saver is one of Hutzler's best-selling products.

Hut zl er s

T O M A T O

S A V E R T r a d e m a r k

16. On May 18, 2010, Hutzler filed a trademark application with the PTO for the

trademark

TOMATO SAVER

fo r In ternat ional

Class 021

for

Containers

for

household

or

kitchen use; Containers for household use; Household containers for foods; Plastic storage

containers for household or domestic use; Plastic storage containers for household use; Portable

plastic containers for storing household and kitchen goods; Servingware for serving food.

17. On December 7, 2010, the

PTO

issued Registration No. 3,886,427 for the

TOMATO SAVER trademark

(the

TOMATO SAVERMark ) with Hutzler as

the owner.

Attached hereto as Exhibit 1 is a true and correct copy of the registration certificate for the

TOMATO SAVER Mark. Hutzler is the owner of the entire right, title, and interest in and to

the

TOMATO SAVER

Mark wh ich is

in

full force and effect.

18. Hutzler also owns valid common law trademark rights in TOMATO

SAVER. By virtue of its adoption and continuous use in commerce since 2007, Hutzler's

4


7/18

TOMATO SAVER trademark has become firmly established in the minds

of

actual and

potential customers nationwide as distinctly identifying Hutzler's plastic storage containers,

and this occurred long before Brite Concepts and LaMi began selling their plastic storage

container products. Hereinafter, Hutzler's federal and common law

TOMATO

SAVER

trademarks are individually and collectively referred to as Hutzler's

TOMATO

SAVER

Trademarks.

Defendants

Acts

o f Counterfei t ing, Trademark Infringement ,

Unfa ir Compet i t ion , and

Tortious

Interference

W i t h

Business

19. As explained in more detail below, defendants have engaged in acts

of

trademark infringement, counterfeiting, unfair competition, and tortious interference with

business. Defendants have misappropriated Hutzler's protected trademarks to exploit the good

will and reputation of Hutzler with the intent to sow confusion between the two companies'

products. These acts of infringement also constitute counterfeiting, unfair competition, and

tortious

interference

with

business .

20. On information and belief, defendant Brite Concepts imports household

products manufactured from Asia into North America, where it distributes them.

21. On information and belief, defendant LaMi is a distributor and a clip-strip/

J hook supplier of household products. On information and belief, LaMi bought the products

bearing the infringing TOMATO SAVER Trademarks from Brite Concepts, and distributed

them to stores in this judicial district, including A&P, Waldbaum's, Pathmark, and SuperFresh

Supermarkets. In addition, LaMi distributed products bearing the infringing TOMATO

SAVER Trademarks to Tops Markets, LLC. Hutzler has also sold its Tomato Saver products to

these stores.

-5 -


8/18

22. Brite Concepts and LaMi have branded their tomato container with the

TOMATO SAVER t rademark.

23. Brite Concepts and LaMi are not affiliated with Hutzler and have never been

licensed or otherwise authorized by Hutzler to use its TOMATO SAVER Trademarks.

24. Brite Concepts' and LaMi's misappropriation of Hutzler's TOMATO

SAVER Trademarks commenced over four years after Hutzler began using its Trademarks and

after Hutzler had obtained a federal registration for its Mark on the Principal Register. That

registration provides Hutzler with nationwide exclusive use to that Mark and any confusingly

s imi la r t rademarks .

25. Finally, Brite Concepts and LaMi knowingly, willfully, and wrongfully

interfered with the relationship between Hutzler and its customers by selling or offering to sell

containers bearing infringing trademarks to Hutzler's customers either (a) without notifying

such customers that the infringing containers infringed certain trademark registrations held by

Hutzler, or (b) falsely representing that such infringing containers did not infringe such

trademarks.

T h e Part ies History

26. In or about April of 2014, Hutzler learned that Brite Concepts and LaMi

were selling a knock-off version of Hutzler's Tomato Saver, which was labelled with Hutzler's

protected

TOMATO

SAVER Trademarks.

27. On April 30, 2014, Hutzler sent a cease and desist letter to Brite Concepts,

demanding that Brite Concepts stop selling the infringing version of the Tomato Saver.

28. On May 9, 2014, Michael G. Sehl, the President of Brite Concepts, stated via

electronic mail that he received Hutzler's cease and desist letter, and that Brite Concepts would

-6-


9/18

immediately cease and desist any further use of the TOMATO SAVER designation on both

packaging and on its website.

29. On

May

9, 2014, Hutzler responded to Mr.

Sehl's

email, demanding an

accounting for all past sales of any products bearing the TOMATO SAVER Trademarks.

30. On May 27, 2014, Hutzler sent another cease and desist letter to Brite

Concepts, demanding that Brite Concepts stop selling the infringing version of the Tomato

Saver .

31. On May 27, 2014, Hutzler sent a cease and desist letter to LaMi, demanding

that LaMi stop selling the infringing version of the Tomato Saver.

32. On or about June 6, 2014, Brite Concepts responded to Hutzler 's May 27,

2014 letter, stating that it would cease using the mark TOMATO

SAVER on food storage

containers.

33. In addition, LaMi verbally indicated that it would recall its products

containing the infringing TOMATO SAVER mark from Tops Markets, LLC.

Defendants

Act ions

W i l l

Cause

a Likel ihood

o f

Con fus ion

34. Brite Concepts' and LaMi's actions have caused a likelihood of consumer

confusion or mistake, and have misled and deceived consumers, as to the source, origin,

connection, affiliation, sponsorship, or approval of Brite Concepts' and LaMi's goods, and

have diverted sales intended for Hutzler to Brite Concepts' and LaMi's competing goods.

35. Brite Concepts' and

LaMi's

unauthorized sales, marketing, and advertising

using Hutzler's protected

TOMATO SAVER

Trademarks has misled consumers into

mistakenly believing that Brite Concepts' and LaMi's goods are owned, authorized, or

approved by, or affiliated with Hutzler.

-7-


10/18

36. First, Hutzler 's Trademarks are strong and are therefore entitled to

protection. Second, Brite Concepts' and LaMi's infringing marks are identical in appearance,

sound, and meaning to Hutzler's Trademarks. Third, Hutzler's products and Brite Concepts'

and LaMi's products directly compete with each other. Fourth, consumer confusion has

occurred and will occur if Brite Concepts and LaMi continue to use their infringing marks.

Fifth, Brite Concepts and LaMi adopted their infringing marks in bad faith in order to exploit

the good will and reputation

of

Hutzler with the intent to sow confusion between the two

companies' products. Sixth, Brite Concepts' and and

LaMi's

products are clearly inferior to

Hutzler's and are more cheaply manufactured than Hutzler's. Finally, because these products

are priced so inexpensively, consumers are generally less careful in making a purchase, and are

more likely to be confused by identical marks.

37. As a result of Brite Concepts ' and LaMi's conduct, Brite Concepts and LaMi

have profited because of their use of trademarks that infringe upon Hutzler's Trademarks.

38. As a result of Brite Concepts' and LaMi's conduct, Brite Concepts and LaMi

have been unjustly enriched because

of

their use

of

trademarks that infringe Hutzler's

Trademarks .

C O U N T I

Federal Counter fe i t ing

-

T OM A TO S AV E R

39. Hutzler incorporates by reference as though fully set forth herein the

allegations contained in paragraphs 1 through 37 above.

40. Hutzler continues to use its TOMATO SAVER federally registered

trademark in connection with its advertising and sale of plastic storage containers.

41. Brite Concepts and LaMi have used their infringing Tomato Saver

trademark in a manner that is identical to, or substantially indistinguishable from, Hutzler's


11/18

TOMATO SAVER federally registered trademark, registered on the Principal Register

of

the

PTO in advertising and sale of plastic storage containers.


LaMi's

use of their infringing Tomato Saver trademark

has caused and will cause a likelihood of confusion, mistake, and deception with Hutzler's

federally registered TOMATO SAVER trademark on the Principal Register by creating the

false and misleading impression that Brite Concepts' and LaMi's goods are connected with or

affiliated with, or sponsored, approved, or authorized by Hutzler.

43. Brite Concepts and LaMi have engaged in bad faith in the adoption and use

of their infringing Tomato Saver trademark.

44. Brite Concepts' and LaMi's intentional and willful use of their Tomato

Saver trademark which is identical to and indistinguishable from Hutzler's TOMATO SAVER

Trademark constitutes counterfeiting in violation of Section 32 of the Lanham Act (15 U.S.C.

1114(l)(a)).

45. Hutzler has been damaged by Brite Concepts' and LaMi's counterfeiting

of

it s

TOMATO

SAVER

trademark,

in an amount to be determined at

trial.

C O U N T II

Federal

and Common Law Trademark

Infringement;

Federal Unfair

Competi t ion

- T OM A TO S AV E R



47. Hutzler owns a valid federal trademark registration for TOMATO SAVER,

and continues to use its TOMATO SAVER federally registered trademark in connection with

its advertising and sale of plastic storage containers.


LaMi's

use of their infringing Tomato Saver mark is

identical or nearly identical to Hutzler's TOMATO

SAVER

Trademarks.


12/18

49. Brite Concepts' and LaMi's use of their infringing TOMATO SAVER mark

for plastic storage containers is similar in appearance, sound, and meaning to Hutzler's

TOMATO SAVER Trademarks for plastic storage containers.

50. Brite Concepts' and LaMi's use of their infringing Tomato Saver mark for

plastic storage containers creates the same or nearly the same commercial impression as to one

or more of Hutzler's TOMATO SAVER Trademarks for plastic storage containers.

51. Hutzler 's products and Brite Concepts' and

LaMi's

products directly

compete with each other. In addition, Hutzler, Brite Concepts, and LaMi solicit some of the

same customers and use the same or similar channels of trade to advertise their products.

52. Brite Concepts and LaMi adopted their infringing Tomato Saver mark in bad

faith in order to exploit the good will and reputation ofHutzler with the intent to sow confusion

between the two companies' products.

53. Brite Concepts' and LaMi's products are clearly inferior to Hutzler's and are

more cheaply manufactured than Hutzler's.

54. Because low cost plastic containers are priced inexpensively, purchasers are

generally not careful in making a purchase. They are more likely to be confused by similar

marks.

55. On information and belief, Brite Concepts and LaMi knew about Hutzler

prior to their first use

of

their infringing Tomato Saver mark.

56. Brite Concepts' and LaMi's use of Hutzler's identical TOMATO SAVER

Trademarks has caused and will cause a likelihood of confusion, mistake, and deception by

creating the false and misleading impression that Brite Concepts' and LaMi's goods are

connected with or affiliated with, or sponsored, approved, or authorized by Hutzler.

-10-


13/18

57. Brite Concepts' and LaMi's intentional and willful use of their infringing

Tomato Saver

trademark,

that are identical

to Hutzler's TOMATO SAVER

Trademarks,

will

cause a likelihood of confusion, mistake, and deception by confusing consumers as to the

source of the products, and constitutes infringement in violation of Section 32

of

the Lanham

Act

(15

U.S.C.

1114(1 )(a)).

58. Brite Concepts' and LaMi's intentional and willful use

of

trademarks that are

identical, nearly identical, or similar to Hutzler's TOMATO SAVER Mark constitutes unfair

competition in violation of Section 43(a)

of

the Lanham Act (15 U.S.C. 1125(a)).

59. As a direct result of Brite Concepts' and LaMi's conduct, Hutzler has

suffered damages and Brite Concepts and LaMi have obtained profits and have been unjustly

enr iched.

60. Hutzler has been damaged by Brite Concepts' and LaMi's infringement and

unfair competition of its TOMATO SAVER Trademarks, in an amount to be determined at

trial.

C O UN T III

Unfai r Compe ti tion



62. Hutzler is the exclusive owner

of

the TOMATO

SAVER

Trademarks, which

are

a ff ix ed t o t he

Tomato Saver .

63. Hutzler has created the

Tomato

Saver through extensive time, labor, skill,

and money.

64. On information and belief, after seeing Hutzler's commercial success, Brite

Concepts and LaMi used Hutzler's Trademarks in competition with Hutzler, gaining an unfair

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14/18

advantage, because Brite Concepts and LaMi bore little or no burden

of

expense of

development.

65. By creating a product essentially identical to Hutzler 's in name, Brite

Concepts and LaMi have misappropriated a commercial advantage belonging to Hutzler.

66. By taking and using Hutzler's protected trademark to compete against

Hutzler, Brite Concepts and LaMi have misappropriated a commercial advantage belonging to

Hutzler .

67. Brite Concepts and LaMi have also engaged in bad faith misappropriation of

the labors of Hutzler which has caused and is likely to cause confusion, or to deceive

purchasers as to the origin of the goods.

68. Brite Concepts' and LaMi's actions have caused significant commercial

damage to Hutzler.

69. Brite Concepts' and LaMi's acts have been intentional, willful, and in

conscious disregard of Hutzler's rights, entitling Hutzler to the remedies provided under New

York law.

C O U N T I V

Tort ious

In terference

W i t h Business



71.

On

information and belief, at the t ime it sold

or

offered for sale their

containers bearing the infringing Tomato Saver mark, Brite Concepts and LaMi knew that

Hutzler was selling the Tomato Saver bearing the TOMATO SAVER Trademarks to customers

wi th in t he Un it ed States.

-12-


15/18

72.

On

information

and

belief, at the t ime it sold

or

offered for sale

th e

containers bearing the infringing Tomato Saver trademark, Brite Concepts and LaMi had notice

and actual knowledge that the TOMATO SAVER Trademarks were subject to trademark

registrations issued to Hutzler by the PTO.

73. On information and belief, Brite Concepts and LaMi knowingly, willfully,

and wrongfully interfered with the relationship between Hutzler and its customers by selling or

offering to sell containers bearing infringing trademarks to Hutzler's customers either

(a) without notifying such customers that the infringing containers infringed certain trademark

registrations held by Hutzler, or (b) falsely representing that such infringing containers did not

infringe such trademarks.

74. Brite Concepts and LaMi, through their tortious actions, directly and

proximately harmed Hutzler by causing Hutzler's customers to cease doing business with

Hutzler .

-13-


16/18

WHEREFORE,

plaintiffHutzler demands judgment against defendants Brite

Concepts and LaMi as follows:

(1) Adjudging that defendants' use

of

the TOMATO SAVER name constitutes

counterfeiting;

(2) Adjudging that defendants' counterfeiting was willful and deliberate, and

deeming this case exceptional under 35 U.S.C. 285;

(3) Adjudging that defendants' use of the TOMATO SAVER name constitutes

trademark infringement and unfair competition;

(4) Adjudging that defendants' trademark infringement and unfair competition

was willful and deliberate, and deeming this case exceptional under 35 U.S.C. 285;

(5) Adjudging defendants to have engaged in unfair competi tion with Hutzler;

(6) Adjudging defendants to have tortiously interfered with Hutzler 's business;

(7) Ordering that defendants expressly abandon any trademark, trade name, or

business name filings or registrations that comprise or include the terms TOMATO SAVER which

it

has made or secured;

(8) Awarding Hutzler statutory damages in connection with Counts I and II for

defendants' intentional and willful violation of 15 U.S.C. 1114(l)(a) pursuant to 15 U.S.C.

1117;

(9) Awarding Hutzler statutory damages in connection with Count II for

defendants' intentional and willful violation of 15U.S.C. 1125(a) pursuant to 15U.S.C. 1117;

(10) Awarding Hutzler damages in connection with Counts II through IV in an

amount to

be

determined

at

trial;

14


17/18

(11) Awarding Hutzler its costs and reasonable attorneys' fees pursuant to

15

U.S.C.

1117;

(12) Awarding such other and further relief as the Court deems just and proper

under the ci rcumstances.

New York, New York

December 3, 2014

Respectfully submitted,

CURTIS, MALLET-PREVOST,

COLT

&

MOSLE LLP

By:.

duuuvi

c^>fe-

Turner

P.

Smith (TS

8052)

Michael R. Graif (MG 4795)

Nicole M. Mazanit is (NM 1983)

101 Park Avenue

New York,

New

York 10178

(212)

696-6000

Attorneys

r

Plaintiff

-15-


18/18

Mttit< states*

of

^mer,w

VII * SHmteb g>tatetf patent anb {Erafcetnark Office

^

Reg. No. 3,886,427

Registered

Dec. 7,2010

Int

C I.: 2 1

T R A D E M A R K

P R I N C I P A L R E G I S T E R

Director

ot the L'nited

States 1'utcnt

mid

f imlcnuirkOffice

Tomato S aver

HUTZLERMANUFACTURING CO., INC. (NEWYORKCORPORATION)

4 GRACE WAY

CANAAN,

CT

06018

FOR:

CONTAINERS FOR

HOUSEHOLD

OR

KITCHEN

USE; CONTAINERS

FOR

HOUSEHOLD

USE; HOUSEHOLD CONTAINERS FOR FOODS; PLASTIC STORAGE CONTAINERS

FOR

HOUSEHOLD OR DOMESTIC USE; PLASTIC STORAGE CONTAINERS FOR

HOUSEHOLD

USE; PORTABLE PLASTIC CONTAINERS FOR STORING HOUSEHOLD AND KITCHEN

GOODS; SERVINGWARE FOR SERVING FOOD, IN CLASS 21 (U.S. CLS. 2, 13, 23, 29, 30,

33,40 AND

50).

FIRST USE

3-1-2007;

IN

COMMERCE 3-1-2007.

THE

MARK

CONSISTS

OF

STANDARD CHARACTERS WITHOUT

CLAIM TO ANY

PAR

TICULAR

FONT, STYLE,

SIZE, OR

COLOR.

NO CLAIM IS MADE TO THE EXCLUSIVE

RIGHT TO USE

TOMATO , APART FROM

THE MARKAS

SHOWN.

SER.

NO.

85-041,326, FILED 5-18-2010.

SARA

BENJAMIN,

EXAMININGATTORNEY

Hutzler v. Brite Concepts - Tomato Saver trademark complaint.pdf

Documents

Transcript of Hutzler v. Brite Concepts - Tomato Saver trademark complaint.pdf