Vous êtes sur la page 1sur 13

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 1 of 13 Page ID #:1

1
2
3
4
5
6
7
8
9
10

ULWELLING | SIDDIQUI LLP


Omar A. Siddiqui, Esq. (Bar No. 213581)
Daniel M. Josephson, Esq. (Bar No. 245895)
Brandon S. Miller, Esq. (Bar No. 288082)
695 Town Center Drive, Ste. 700
Costa Mesa, California 92626
Telephone: (714) 384-6650
Facsimile: (714) 384-6651
osiddiqui@usllp.com
djosephson@usllp.com
bmiller@usllp.com
Attorneys for Plaintiff,
GREEN CRUSH, LLC

11

UNITED STATES DISTRICT COURT

12
13
14
15
16

CENTRAL DISTRICT OF CALIFORNIA SOUTHERN DIVISION


GREEN CRUSH, LLC, a Delaware
Limited Liability Company,
Plaintiff,

COMPLAINT FOR
DECLARATORY RELIEF

17
18
19
20
21

Case No. 8:15-cv-1699

vs.
ON THE ROCKS RESTAURANTS
HOLDINGS, LLC, a Missouri Limited
Liability Company; and
DOES 1 through 10, inclusive,

[DEMAND FOR JURY TRIAL]

22
23

Defendants.

24
25

FOR ITS CLAIMS against Defendants, ON THE ROCKS RESTAURANTS

26

HOLDINGS, LLC (ROCKS, or Defendant); and DOES 1 through 10, inclusive,

27

Plaintiff GREEN CRUSH, LLC (GREEN or Plaintiff) alleges as follows:

28

1
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 2 of 13 Page ID #:2

NATURE OF THE DISPUTE

1
2

1.

GREEN is the owner of Green Crush stores, a juice bar and smoothie

purveyor operating primarily from shopping mall locations throughout Southern

California. GREEN owns and operates under the GREEN CRUSH trademark/

service mark.

6
7
8
9

2.

On or about May 7, 2013, the United States Patent Trademark Office

(USPTO) duly registered the GREEN CRUSH trademark, U.S. Trademark


Registration Number 4,330,917. On or about June 9, 2015, the USPTO duly
registered a Green Crush logo trademark consisting of the letter C in stylized pink

10
11
12
13
14
15

lettering with droplets and green leaves, U.S. Trademark Registration Number
4,752,862. A true and correct copy of the United States Trademark Certificates of
Registration for GREEN CRUSH and the stylized C are attached hereto as
Exhibit A and are incorporated herein as if set out in full by this reference.
3.

On or about February 28, 2014, Plaintiff GREEN filed a subsequent

16

trademark application, for a logo design mark for GREEN CRUSH, U.S.

17

Trademark Application Serial Number 86,208,025, currently pending before the

18

USPTO (Application). A true and correct copy of the USPTO Application is

19

attached hereto as Exhibit B and is incorporated herein as if set out in full by this

20

reference.

21

4.

On information and belief, Defendant ROCKS owns and operates a

22

chain of pizza restaurants in the Missouri and Colorado geographic areas under the

23

CRUSHED RED name.

24
25
26
27
28

5.

On information and belief, ROCKS applied for registration of its

purported CRUSHED RED mark with the USPTO on or about September 12, 2011.
The CRUSHED RED mark was registered by the USPTO on March 5, 2013 under
U.S. Trademark Registration Number 4,298,935. A true and correct copy of the
United States Trademark Certificate of Registration for CRUSHED RED is
2
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 3 of 13 Page ID #:3

attached hereto as Exhibit C and is incorporated herein as if set out in full by this

reference.

6.

On or about September 15, 2014, Defendant ROCKS filed an Opposition

to Plaintiffs Trademark Application (Serial Number 86,208,025) with the USPTO

(the Opposition).

6
7
8
9

7.

On or about March 5, 2015, Defendant ROCKS filed and served a

Petition for Cancellation (aka Petition to Cancel Registration No. 4,330,917;


Cancellation No. 92060993) of the GREEN CRUSH trademark with the USPTO
(the Petition).

10

8.

11
12
13

Plaintiff brings this action in order to obtain a declaration of non-

infringement and a declaration that no likelihood of confusion exists between the


subject marks.

14

JURISDICTION AND VENUE

15

9.

16

This Court has original jurisdiction over this action under 15 U.S.C.

17

1121 and 28 U.S.C. 1331, 1338 and 1367 in that this Complaint raises federal

18

questions under the United States Trademark Act (Lanham Act), 15 U.S.C. 1051 et

19

seq.

20

10.

An actual controversy exists as to the rights and legal relations of the

21

parties hereto, which may be adjudicated by this Court pursuant to 28 U.S. Code

22

2201(a) and 2202, and 15 U.S.C. 1125(a).

23

11.

On information and belief, the Court has personal jurisdiction over

24

Defendants because Defendants have engaged in business activities in, and directed

25

to, the State of California. On information and belief, Defendants have established

26
27
28

minimum contacts with this forum such that exercise of personal jurisdiction over
Defendants will not offend traditional notions of fair play and substantial justice.
Defendants have purposefully availed themselves of the opportunity to conduct
3
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 4 of 13 Page ID #:4

commercial activities in this forum, and reasonably knew that they could be sued in a

California court as a future consequence of such activities. This Complaint arises out

of those activities.

12.

On information and belief, venue is proper in this district under 28

U.S.C. 1391 (b) (2), in that a substantial part of the events or omissions giving rise

to Plaintiffs claims occurred in this district. On information and belief, all

Defendants are subject to personal jurisdiction in this district.

8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

PARTIES
13.

Plaintiff GREEN CRUSH, LLC is, and at all times mentioned herein

was, a Delaware Limited Liability company with its headquarters in the State of
California. It is registered with the California Secretary of State and is in good
standing.
14.

Plaintiff is informed and believes that Defendant ON THE ROCKS

RESTAURANTS HOLDINGS, LLC is a Missouri Limited Liability company, with


its headquarters in the State of Missouri.
15.

At all times relevant to the events referred to in this action, Defendant

ROCKS and DOES 1 through 10, inclusive, were agents or principals of one another.
In performing or engaging in the conduct described herein, each entity was acting
within the course and scope of its respective agency-principal relationships. Plaintiff
is informed and believes that all of the relevant conduct by Defendants was ratified
and approved by the other Defendants.
16.

Plaintiff is ignorant of the true names and capacities of Defendants,

whether individual, corporate, associate or otherwise, sued herein as DOES 1 through


10, inclusive, and therefore sues these Defendants by such fictitious names. Plaintiff
will amend this Complaint to allege their true names when ascertained. Plaintiff is
informed and believes that each of the fictitiously named Defendants is responsible in
some manner for the occurrences herein alleged.
4
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 5 of 13 Page ID #:5

FACTUAL BACKGROUND

1
2

17.

GREEN is the owner of Green Crush stores, a juice bar and smoothie

purveyor operating chiefly from shopping mall locations in the Southern California

vicinity. GREEN owns and operates under the GREEN CRUSH trademark.

18.

GREEN has been in operation for over 3+ years, and chose the GREEN

CRUSH mark in good faith based on a fanciful term it created to brand its juice and

smoothie bars and healthy beverage products. The GREEN CRUSH trademark is

8
9
10

prominently featured on, including but not limited to, GREENs store signage,
advertising, marketing materials, products, beverage containers, and website
(www.greencrush.com).

11
12
13
14
15

19.

GREEN began using the term GREEN CRUSH in commerce to refer

to itself and its products as early as June 30, 2012. In or about the summer of 2012, at
the Montebello Mall in Southern California, GREEN opened its doors for business as
a creator and seller of fresh mixed fruit/ vegetable juices and smoothies, offering such

16

beverages to its customers in its retail stores. GREEN then opened additional stores in

17

the Tyler Mall in Southern California in 2013, and Cerritos Mall in Southern

18

California in 2014. Additional Southern California locations in Ventura and Glendale

19

were opened in 2015.

20

20.

The success of GREEN has come from its unique products of fresh

21

quality fruit and vegetable juices. GREENs mission is to introduce an innovative

22

approach to a healthy lifestyle by offering a more nutritious beverage alternative.

23

GREEN generates extensive sales in Southern California and maintains a strong

24

connection with its customers.

25
26
27
28

21.

GREEN expended considerable sums of money and invested substantial

time, energy, and resources in developing a business plan to use the GREEN
CRUSH trademarks, logos, and terms derivative therefrom, as a brand. GREEN
has made significant investments and preparations with respect to its GREEN
5
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 6 of 13 Page ID #:6

CRUSH trademark and the products such mark represents, including but not limited

to: research and development of its beverages and products; developing a marketing,

publicity and distribution plan for its consumers; researching and exploring franchise

opportunities, and investing significant sums in its juice and smoothie bars throughout

Southern California.

6
7
8
9
10
11
12
13
14

22.

On or about July 9, 2012, Christina Azinian, on behalf of GREEN, filed

a use-based application to register GREEN CRUSH with the USPTO. The


application was granted. GREEN CRUSH is a federally registered trademark with
the USPTO. On or about May 7, 2013, the USPTO duly and legally issued U.S.
Trademark Registration (Number 4,330,917) for the GREEN CRUSH word mark
as it relates to fast-food restaurant services [International Class: 43]. (Exhibit A)
23.

On or about June 9, 2015, the USPTO duly registered a Green Crush

logo trademark consisting of the letter C in stylized pink lettering with droplets and

15

green leaves, U.S. Trademark Registration Number 4,752,862, as it relates to fast-

16

food restaurant services [International Class 43]. (Exhibit A)

17

24.

On or about February 28, 2014, Plaintiff GREEN filed a subsequent

18

Trademark Application, for a logo design mark for GREEN CRUSH, U.S.

19

Trademark Application Serial Number 86,208,025, currently pending before the

20

USPTO. (Exhibit B)

21

25.

The design mark Application for GREEN CRUSH was published in the

22

UPSTO Official Gazette for Opposition on or about July 29, 2014. The Opposition

23

Period was due to end on November 26, 2014.

24

26.

On or about September 15, 2014, Defendant ROCKS filed and served a

25

Notice of Opposition (Opposition No. 91218341) to Plaintiffs Trademark

26

Application with the USPTO (the Opposition) on the alleged grounds of: (a)

27

priority, and (b) likelihood of confusion between the GREEN CRUSH marks and

28

ROCKSs mark, CRUSHED RED.

6
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 7 of 13 Page ID #:7

27.

The filing of the Opposition by ROCKS was improper, unwarranted and

designed to harass, vex and annoy GREEN because there is no likelihood of

confusion between the GREEN CRUSH and CRUSHED RED marks, either as

each mark is used, or as such marks are intended to be used. ROCKS is not entitled

to oppose the GREEN CRUSH mark based upon the purported priority of the

CRUSHED RED mark.

28.

On information and belief, ROCKS applied for registration of its

purported CRUSHED RED mark with the USPTO on or about September 12,

2011. The CRUSHED RED mark was registered by the USPTO on March 5, 2013

10
11

under U.S. Trademark Registration Number 4,298,935. (Exhibit C)


29.

On or about November 24, 2014, GREEN filed and served its Answer to

12

Defendant ROCKS Notice of Opposition, denying the majority of the allegations

13

contained in the Trademark Trial and Appeals Board (TTAB) Opposition and

14

requesting dismissal with prejudice of the Opposition.

15

30.

Apparently not satisfied with its efforts to stifle and interfere with

16

GREENs business and marketing operations by filing the frivolous Opposition, on

17

or about March 5, 2015, Defendant ROCKS filed and served a Petition for

18

Cancellation (aka Petition to Cancel Registration No. 4,330,917; Cancellation No.

19

92060993) of the GREEN CRUSH trademark with the USPTO (the Petition).

20

31.

In response, GREEN filed its Answer to Petition for Cancellation on or

21

about May 15, 2015. In its Answer, GREEN denied the majority of the allegations

22

contained in the Petition and raised the affirmative defenses of: (a) standing; (b)

23

failure to state a claim for relief; (c) the equitable doctrine of laches; and (d) the

24

equitable doctrines of acquiescence and waiver.

25

32.

Based upon a prima facie review of the contested marks, it is clear that

26

CRUSHED RED is a highly descriptive (and therefore weak) mark referring to

27

crushed red pepper as is commonly used on pizza pies throughout the world. In no

28

way does, or will, the mark CRUSHED RED create a likelihood of confusion with
7
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 8 of 13 Page ID #:8

1
2

GREEN CRUSH as the source of goods or services.


33.

Plaintiff brings this action seeking, inter alia, a declaration of the rights

and obligations of the parties as hereinafter set forth and the removal of any cloud

cast over Plaintiffs marks and brand by Defendants allegations of infringement, so

that Plaintiff may proceed with its business.

6
7

FIRST CLAIM FOR RELIEF

DECLARATION OF NO LIKELIHOOD OF CONFUSION

UNDER LANHAM ACT 43(a)

10

(Against All Defendants)

11
12
13
14
15
16
17

34.

Plaintiff realleges and incorporates by this reference paragraphs 1

through 33, inclusive, of this Complaint, as though fully set forth herein.
35.

Plaintiff's GREEN CRUSH mark is based on a fanciful term GREEN

created to describe healthy beverages, and was chosen in good faith.


36.

Plaintiff's GREEN CRUSH mark is readily distinguishable from

Defendants CRUSHED RED, both visually and phonetically.


37.

Consumers of top-quality healthy beverages sold through retail store

18

outlets are generally sophisticated and would not be confused as to the source of

19

GREENs products described herein.

20

38.

There is no likelihood of consumer confusion between GREEN

21

CRUSH used as a brand for healthy beverages or other related consumer goods

22

and CRUSHED RED.

23
24
25
26
27
28

39.

An actual controversy has arisen and now exists between Plaintiff and

Defendants concerning their respective rights and duties under the Lanham Act, the
Opposition, the Petition, and as to their respective trademarks.
40.

Plaintiff contends, as stated herein, that there are insufficient grounds for

the cancellation of, or reasonable opposition to, its registered trademarks and the

8
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 9 of 13 Page ID #:9

Application. Plaintiff contends that its GREEN CRUSH mark does not, and will

not, create a likelihood of consumer confusion with Defendant ROCKs CRUSHED

RED mark.

4
5
6

41.

Plaintiff is informed and believes, and thereon alleges, that Defendants

dispute Plaintiffs contentions regarding the likelihood of consumer confusion.


42.

In light of the foregoing, pursuant to 28 U.S.C. 2201 and 2202, and

15 U.S.C. 1125(a), the Court should declare that Plaintiffs GREEN CRUSH

trademarks, including the Application mark, do not create a likelihood of consumer

confusion with ROCKs CRUSHED RED mark.

10

WHEREFORE, Plaintiff prays for judgment as set forth more fully below.

11
12

SECOND CLAIM FOR RELIEF

13

DECLARATION OF NON-INFRINGEMENT UNDER LANHAM ACT 43(a)

14
15
16
17
18
19
20
21
22
23
24
25
26
27

(Against All Defendants)


43.

Plaintiff realleges and incorporates by this reference paragraphs 1

through 42, inclusive, of this Complaint, as though fully set forth herein.
44.

Plaintiff's GREEN CRUSH mark is based on a fanciful term GREEN

created to describe healthy beverages, and was chosen in good faith.


45.

Plaintiff's GREEN CRUSH mark is readily distinguishable from

Defendants CRUSHED RED, both visually and phonetically.


46.

Consumers of top-quality healthy beverages sold through retail store

outlets are generally sophisticated and are not (and would not be) confused as to the
source of GREENs products described herein. In addition, the marks are so
dissimilar and used in such different manners that there can be no infringement of the
CRUSHED RED mark from Plaintiff's GREEN CRUSH marks.
47.

An actual controversy has arisen and now exists between Plaintiff and

Defendants concerning their respective rights and duties under the Lanham Act, the

28

9
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 10 of 13 Page ID #:10

1
2

Opposition, the Petition, and as to their respective trademarks.


48.

Plaintiff contends, as stated herein, that there are insufficient grounds for

the cancellation of, or reasonable opposition to, its registered GREEN CRUSH

trademarks, and the Application. Plaintiff contends that its GREEN CRUSH marks

does not, and will not, infringe upon any rights of Defendant ROCKS in, and/or to, its

CRUSHED RED mark.

7
8
9
10
11
12
13

49.

Plaintiff is informed and believes, and thereon alleges, that Defendants

dispute Plaintiffs contentions regarding the likelihood of consumer confusion.


50.

In light of the foregoing, pursuant to 28 U.S.C. 2201 and 2202, and

15 U.S.C. 1125(a), the Court should declare that Plaintiffs GREEN CRUSH
trademarks, including the Application mark, do not infringe Defendants
CRUSHED RED mark.
WHEREFORE, Plaintiff prays for judgment as set forth more fully below.

14
15

THIRD CLAIM FOR RELIEF

16

LACHES AND ACQUIESCENCE

17

(Against All Defendants)

18
19
20
21
22
23
24
25
26
27
28

51.

Plaintiff realleges and incorporates by this reference paragraphs 1

through 50, inclusive, of this Complaint, as though fully set forth herein.
52.

Plaintiff is informed and believes that Defendants and/or their counsel

regularly monitor the USPTO Official Gazette for possible infringing marks.
53.

Plaintiffs GREEN CRUSH mark (USPTO Registration # 4,330,917)

was published for opposition on or about February 19, 2013, and registered on May
7, 2013.
54.

Plaintiff is informed and believes that Defendant was aware of the

publication of Plaintiffs GREEN CRUSH mark, evaluated it, and after conferring
with counsel reached a conclusion that Plaintiffs GREEN CRUSH mark would

10
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 11 of 13 Page ID #:11

not cause consumer confusion with or infringe Defendants CRUSHED RED mark.
55.

Defendant ROCKS did not file any notice of opposition, or a request for

extension of time to file a notice of opposition, with respect to Plaintiffs GREEN

CRUSH Application until on or about September 15, 2014; and filed a Petition for

Cancellation of Plaintiffs registered GREEN CRUSH mark on or about March 6,

2015.

56.

Defendants allegations of trademark infringement and likelihood of

confusion (as stated in ROCKs Opposition and Petition) should be barred by the

doctrines of laches and acquiescence.

10

WHEREFORE, Plaintiff prays for judgment as set forth more fully below.

11

PRAYER FOR RELIEF

12
13
14

WHEREFORE Plaintiff respectfully prays for judgment against Defendants,


and each of them, as follows:

15

AS TO ALL CLAIMS FOR RELIEF

16
17
18

1.

For an order and declaration of the rights, duties and obligations of the

parties as follows:
a.

19

Declaring that Plaintiffs GREEN CRUSH trademarks do not


infringe Defendants CRUSHED RED mark;

20

b.

21

Declaring that Plaintiffs GREEN CRUSH trademarks do not

22

create a likelihood of consumer confusion with Defendants

23

CRUSHED RED mark;


c.

24

Declaring that any infringement claims by Defendants are barred


by the doctrines of laches and acquiescence;

25
26

2.

For attorneys fees and expenses;

27

3.

For the costs and disbursements of bringing this action;

28

11
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 12 of 13 Page ID #:12

4.

declaratory judgment; and

2
3

Such additional and further relief as may follow from the entry of a

5.

For such other and further relief as the Court deems just and proper.

4
5
6

Respectfully Submitted,

7
8

DATED: October 21, 2015

ULWELLING | SIDDIQUI LLP

9
10

By:

/s/ Omar A. Siddiqui

13

OMAR A. SIDDIQUI
DANIEL M. JOSEPHSON
BRANDON S. MILLER
Attorneys for Plaintiff,

14

GREEN CRUSH, LLC

11
12

15
16
17
18
19
20
21
22
23
24
25
26
27
28

12
COMPLAINT

Case 8:15-cv-01699 Document 1 Filed 10/21/15 Page 13 of 13 Page ID #:13

DEMAND FOR JURY TRIAL

1
2

Plaintiff GREEN CRUSH, LLC hereby enters a demand for a jury trial in this

3
4

case.

5
6

Respectfully submitted,

7
8

DATED: October 21, 2015

ULWELLING | SIDDIQUI LLP

9
10
11
12
13
14

By: _/s/ Omar A. Siddiqui____________________


OMAR A. SIDDIQUI
DANIEL M. JOSEPHSON
BRANDON S. MILLER
Attorneys for Plaintiff,
GREEN CRUSH, LLC

15
16
17
18
19
20
21
22
23
24
25
26
27
28

13
COMPLAINT