Escolar Documentos
Profissional Documentos
Cultura Documentos
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Defendants.
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63072616
COMPLAINT
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Hershey), for their complaint against Urban Stash Spot Clothing, Inc. and
Jermario Fields (together, Urban Stash or defendants) for trademark and trade
dress infringement, trademark and trade dress dilution, false designation of origin
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Stash has brazenly misappropriated these trademarks (including both the JOLLY
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RANCHER word mark and logo), for use on clothing items that defendants market
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as Sponsor Shirts and Sponsor Joggers (thereby expressly stating that the
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products are sponsored or authorized by the JOLLY RANCHER brand). These same
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products also bear third party logos, some of which Urban Stash uses to glamorize
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illicit drug use and drug abuse. The products are sold alongside other products that
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bear references to illicit drug use and drug abuse. Urban Stash also markets clothing
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conceal their ongoing wrongful conduct, assuring Hershey that it only had one
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sample of the infringing products, that they had removed the JOLLY RANCHER
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trademarks from their products, and that incorrect images bearing the JOLLY
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RANCHER trademarks had been put on their website. In fact, in direct contradiction
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2.
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Act, 15 U.S.C. 1051 et seq., and parallel California statutory and common law,
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COMPLAINT
importation, distribution and sale of products that infringe and dilute the famous
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use in the United States since at least as early as 1950. Hershey Chocolate has
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United States and abroad. Under the terms of its license agreement, Hershey
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Chocolate has the right, not subject to the approval of its licensor, to sue for
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trademarks, Urban Stash has advertised, offered to sell, and sold (and continues to
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advertise, offer to sell, and sell) within the United States clothing products that bear
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exact copies of the JOLLY RANCHER trademarks. Urban Stash promotes these
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sponsored or authorized by the JOLLY RANCHER brand, when they are not.
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5.
On information and belief, Urban Stash offers its infringing and diluting
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products for sale to customers throughout the United States through its office located
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in this judicial district, as well as online through various websites and media.
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and trade dress dilution, false designation of origin, and unfair competition are
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enjoined, Hershey will suffer irreparable injury for which there is no adequate
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remedy at law.
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PARTIES
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laws of the State of Delaware, with its principal place of business in Wheat Ridge,
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63072616
COMPLAINT
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laws of the State of Delaware, with its principal place of business in Hershey,
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a corporation organized and existing under the laws of the State of California, with a
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manufacturing, advertising, and selling various apparel and other items, including the
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infringing items at issue in this lawsuit as well as a variety of other items that
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encourage and glamorize drug abuse and the use of illicit drugs.
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residing in the State of California, and is the founder and Chief Executive Officer of
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Urban Stash Spot Clothing, Inc. On further information and belief, as alleged more
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fully below, defendant Fields is personally engaged in the willfully infringing and
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The Court has subject matter jurisdiction over Hersheys federal law
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claims for trademark and trade dress infringement, trademark and trade dress
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dilution, false designation of origin, and unfair competition claims under Section 39
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of the Lanham Act, 15 U.S.C. 1121, and under 28 U.S.C. 1331 and 1338(a) &
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(b). The Court has subject matter jurisdiction over Hersheys state-law claims under
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28 U.S.C. 1367 and, because the amount in controversy exceeds $75,000 exclusive
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1332.
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63072616
COMPLAINT
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information and belief, they are present and doing business in the State of California
and this judicial district, and have distributed and offered infringing products for sale
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Urban Stash is subject to personal jurisdiction in this judicial district and because a
substantial part of the events giving rise to plaintiffs claims occurred in this judicial
district.
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have been used since at least 1950 in connection with candy and confectionery
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products. For the last nearly 20 years, JOLLY RANCHER-branded products have
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licensee of the federally registered JOLLY RANCHER trademarks and its associated
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Chocolate has sublicensed Hershey Company the right to use the JOLLY
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existing United States trademark registrations for the mark JOLLY RANCHER and
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First Use in
Commerce
Mark
Reg. No.
JOLLY RANCHER
1684586
6/1/1950
1923904
1/00/1993
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JOLLY RANCHER
3613727
10/31/2008
JOLLY RANCHER
3738162
Earphones (Class 9)
8/1/2009
JOLLY RANCHER
4220144
Cosmetics;
Fragrances (Class
3)
7/19/2006
JOLLY RANCHER
4240666
Frozen confections
(Class 30)
1/1/1998
JOLLY RANCHER
3310864
1/6/2005
JOLLY RANCHER
4355550
Flavored and
sweetened gelatins
(Class 30)
10/30/2012
JOLLY RANCHER
3289124
Chewing gum;
bubble gum (Class
30)
4/25/2007
JOLLY RANCHER
3480388
7/19/2006
JOLLY RANCHER
3480440
6/30/2007
JOLLY RANCHER
CRUNCH 'N CHEW
4010389
3/31/2011
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(The JOLLY RANCHER word mark, and the various iterations of the JOLLY
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RANCHER trademarks.)
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common law rights to the JOLLY RANCHER trademarks as a result of its licensees
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extensive, continuous, and exclusive use of the marks throughout the United States
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COMPLAINT
featuring the JOLLY RANCHER mark and logo is set forth below:
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Hershey and its licensees also use and have used the JOLLY
RANCHER trademarks in connection with shirts and other apparel, such as the items
shown here:
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In addition, Hershey and its licenses also use and have used the JOLLY
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including the goods set forth in the table of registrations above, examples of which
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pillows
nail polish
candles
headphones
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advertised and sold throughout the United States for many years, and have achieved
substantial sales. Indeed, Hersheys JOLLY RANCHER candies are one of the most
popular candy products in the country, with hundreds of millions of dollars of sales
annually in the United States alone in packaging bearing the JOLLY RANCHER
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JOLLY RANCHER trademarks throughout the United States in connection with the
JOLLY RANCHER candy products, apparel, and other products, and by virtue of the
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inherently distinctive nature of the marks, the JOLLY RANCHER trademarks have
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become famous and well known, have become distinctive of Hersheys products, and
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have come to identify and indicate the source of Hersheys products to consumers
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and the trade. The JOLLY RANCHER trademarks have developed substantial
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goodwill and an excellent reputation among actual and potential purchasers and users
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of the products.
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JOLLY RANCHER trademarks for candy and other products, and after those marks
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had become famous, Urban Stash commenced advertising and selling, in the United
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States, clothing items that bear imitations of the JOLLY RANCHER word mark and
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trademarks. As is also apparent from the photos below of the various products
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offered on its website at ussclothing.com, Urban Stash is using not only the JOLLY
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number of other well-known marks, including BIC, SPRITE, FANTA, XANAX and
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COMPLAINT
others.
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trademarks for their clothing items, these products inevitably will cause confusion
among consumers as to the origin, source, or sponsorship of defendants products.
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Not only do Urban Stashs products bear exact copies of the JOLLY
COMPLAINT
are sponsored products and that the JOLLY RANCHER trademarks (and other
brands on the products) are used with the authorization and under the sponsorship of
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tarnishing those marks. Such tarnishment will occur because Urban Stash is selling
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not only infringing JOLLY RANCHER-branded items, but also various items
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promoting and glamorizing illicit drug use and drug abuse, as shown in the Drugs
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and Yen Hoodie item and the The American Way t-shirt depicting a flag
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63072616
COMPLAINT
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34.
On the same website that they have used to sell infringing JOLLY
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RANCHER products and the above products, defendants also sell products intended
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Muppets shirt:
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COMPLAINT
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participant in the infringing and unlawful acts of defendant Urban Stash Spot
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Urban Stashs website, the merchandise was received in a package bearing the return
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address Jermario Fields, 24040 Postal Ave # 439, Moreno Valley CA 92553-3014.
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Furthermore, when counsel for plaintiffs objected to Urban Stashs sale of its
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infringing products, as set forth below, Mr. Fields responded in furtherance of Urban
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Stashs unlawful conduct, falsely stating, inter alia, that the JOLLY RANCHER
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trademarks were not being used on any items. In addition, Mr. Fields asserts on his
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unlawful conduct, in-house counsel for Hershey sent a message to Urban Stash via
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the contact form on Urban Stashs website, objecting to Urban Stashs unauthorized
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COMPLAINT
use of the JOLLY RANCHER trademarks and demanding that Urban Stash promptly
agree to cease all use of those marks and any other marks connected to Hershey.
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August 7 message, on August 11, 2015, outside counsel for Hershey sent a letter to
Urban Stash (by certified mail and by email), addressed to defendant Fields. The
August 11 letter reiterated Hersheys objections to the use of the JOLLY RANCHER
trademarks, and again requested that Urban Stash cease its unlawful conduct.
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August 11, 2015 letter from Hersheys outside counsel, which stated in its entirety,
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We only made one sample pair your logo is now took off. A review of the website
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at that time showed that the JOLLY RANCHER trademarks had been removed from
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that site.
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JOLLY RANCHER-branded clothing was still being sold by Urban Stash on eBay,
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and that Urban Stash was advertising and selling a Mystery Stash Bag on its
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website and Facebook page that included the infringing Sponsor Joggers. Urban
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Stashs website stated that a total of 50 Mystery Stash Bags were available, despite
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Mr. Fieldss prior assertion that Urban Stash had made only one pair of infringing
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joggers.
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products, and demanding that Urban Stash immediately cease all such conduct,
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confirm that it had done so, deliver over to counsel for Hershey all remaining
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received an email response from Mr. Fields that stated, in its entirety, The wrong
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pic was put up on that flyer & don't none of the sponsor joggers are shirts have jolly
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COMPLAINT
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received a second email response from Mr. Fields that stated, in its entirety, & the
mystery box just got put up there & sponsor joggers don't come in them & when our
website gets back I will have him take those pic down.
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A review of the ussclothing.com website and eBay the next day showed
that the JOLLY RANCHER trademarks had been removed from the website and
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that Urban Stash continued to advertise and sell infringing products bearing the
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the Instagram posts immediately below, including a post apparently by Urban Stash
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which shows the infringing joggers and a JOLLY RANCHER candy package:
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COMPLAINT
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45.
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issue on Instagram, Hershey arranged for outside counsel to plan an order from
Urban Stash. On October 8, 2015, counsel for plaintiffs received that order,
including a pair of Sponsor Joggers bearing the JOLLY RANCHER trademarks
and a Sponsor Shirt bearing the JOLLY RANCHER trademarks. The order was
shipped by Urban Stash in a package bearing the return address Jermario Fields,
24040 Postal Ave # 439, Moreno Valley CA 92553-3014.
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distribute, and sell infringing and unlawful products bearing the JOLLY RANCHER
trademarks.
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Urban Stashs acts are causing and will continue to cause damage and
irreparable harm to Hershey and the valuable reputation and goodwill of its licensed
marks with purchasers and consumers.
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COMPLAINT
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States Patent and Trademark Office, pursuant to Section 32 of the Lanham Act, 15
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similar to, and are colorable imitations of, the federally registered JOLLY
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cause confusion and mistake and to deceive the public as to the approval,
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have been done willfully and deliberately, and defendants have profited and been
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unjustly enriched by sales that defendants would not otherwise have made but for
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injury and damages to plaintiffs, and have caused irreparable injury to plaintiffs
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goodwill and reputation, and, unless enjoined, will cause further irreparable injury,
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By their unauthorized use of the marks and trade dress described above,
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branded products as Sponsor Shirts and Sponsor Joggers, defendants have (i)
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infringed the JOLLY RANCHER mark and the JOLLY RANCHER logo; (ii)
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engaged in false endorsement; (iii) falsely designated the origin of their products,
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and (iv) competed unfairly with plaintiffs; all in violation of Section 43(a) of the
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trade dress infringement, false endorsement, false designation of origin and unfair
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competition have been done willfully and deliberately, and defendants have profited
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and been unjustly enriched by sales that would not otherwise have been made but for
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goodwill and reputation, and, unless enjoined, will cause further irreparable injury,
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This claim is for the dilution of trademarks and trade dress, pursuant to
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The JOLLY RANCHER mark and JOLLY RANCHER logo are each
distinctive and famous within the meaning of Section 43(c) of the Lanham Act, 15
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U.S.C. 1125(c), and were distinctive and famous prior to the date of defendants
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diluting the distinctive quality of the famous JOLLY RANCHER mark and JOLLY
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RANCHER logo, in that defendants conduct is likely to create and has created an
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association between defendants marks and the famous JOLLY RANCHER mark
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and JOLLY RANCHER logo, which impairs the distinctiveness of those famous
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marks and lessens the capacity of those famous marks to identify and distinguish
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diluting the distinctive quality of the famous JOLLY RANCHER mark and JOLLY
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RANCHER logo, for the additional reason that defendants challenged marks are
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likely to cause tarnishment of the famous JOLLY RANCHER mark and JOLLY
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products and advertising that encourages and glamorizes drug abuse and the use of
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illicit drugs.
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been done willfully and deliberately, and defendants have profited and have been
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unjustly enriched by sales that defendants would not otherwise have made but for
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65.
injury and damages to plaintiffs, and have caused irreparable injury to plaintiffs
goodwill and reputation, and, unless enjoined, will cause further irreparable injury,
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reputation under Section 14247 of the California Business and Professions Code.
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The JOLLY RANCHER mark and JOLLY RANCHER logo are famous
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in the State of California within the meaning of Section 14247 of the California
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Business and Professions Code, and were famous prior to the date of defendants
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adoption and use of similar designs on packages and in advertising for their products.
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association of the JOLLY RANCHER mark and JOLLY RANCHER logo with
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Hershey.
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dilute the distinctive quality of the famous JOLLY RANCHER mark and JOLLY
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RANCHER logo by lessening the capacity of those marks to identify and distinguish
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products marketed and sold by plaintiffs under those marks and by causing
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been done willfully and deliberately and defendants have profited and been unjustly
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enriched by sales that defendants would not otherwise have made but for their
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unlawful conduct.
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72.
plaintiffs, and have caused irreparable injury to plaintiffs goodwill and reputation
and, unless enjoined, will cause further irreparable injury, for which plaintiffs have
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above, constitutes common law trademark infringement, passing off, and unfair
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infringement, passing off, and unfair competition have been done willfully and
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deliberately, and defendants have profited and have been unjustly enriched by sales
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that defendants would not otherwise have made but for their unlawful conduct.
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injury and damages to plaintiffs and have caused irreparable injury to plaintiffs
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goodwill and reputation, and, unless enjoined, will cause further irreparable injury,
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A.
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and all those in privity or active concert or participation with any of the foregoing
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products), and all those who receive actual notice by personal service or otherwise:
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and (b) any version of the JOLLY RANCHER logo, or any other
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iii.
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43(a), and 43(c) of the Lanham Act, 15 U.S.C. 1114, 1125(a), and 1125(c), to
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have caused trademark and trade dress dilution in violation of California Business
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disable all internet access to all goods, product packaging, product displays,
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requested;
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which, if sold, displayed, or used, would violate the injunction herein granted;
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E.
Ordering defendants to disable all web sites to the extent they contain
any content, the display or use of which would violate the injunction herein
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requested;
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realized by defendants from their aforesaid acts of trademark and trade dress
designation of origin, and unfair competition, and awarding treble profits pursuant to
15 U.S.C. 1117(a) on the ground that defendants engaged in its wrongful acts with
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G.
defendants acts of trademark and trade dress infringement, trademark and trade
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dress dilution, false endorsement, false designation of origin, and unfair competition,
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together with appropriate interest thereon, including three times the amount found as
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actual damages by the trier of fact to properly compensate plaintiffs for their
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H.
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and trade dress infringement, trademark and trade dress dilution, false endorsement,
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false designation of origin and unfair competition, the content, nature, form and
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I.
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defendants acts of trademark and trade dress infringement and dilution, false
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endorsement, false designation of origin, and unfair competition and advising of the
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J.
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1116(a), defendants shall serve upon plaintiffs within thirty (30) days after service
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Court may direct, a report in writing under oath setting forth in detail the manner and
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K.
L.
because of the willful and deliberate nature of defendants acts of trademark and
trade dress infringement, trademark and trade dress dilution, false endorsement, false
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M.
the trier of fact for defendants willful and knowing trademark infringement and
unfair competition, pursuant to the common law; and
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N.
Granting such other and further relief as this Court may deem just and
proper.
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JURY DEMAND
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Respectfully submitted,
KAYE SCHOLER LLP
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By: _/s/ Robert Barnes___________
Robert Barnes
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