Heritage Distilling - 12 Trademark Complaint PDF

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 1 of 25
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UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF WASHINGTON
9 HERITAGE DISTILLING COMPANY, a

Washington corporation,
10
Plaintiff,
11
vs.
12
WHITE RIVER DISTILLERS, LLC, a
13 Washington limited liability company,
14
Defendant.
15
) No.
)
) COMPLAINT
)
)
) JURY DEMAND
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)
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JURISDICTION
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1.
This is an action for federal trademark infringement, unfair competition, and false
17
designation of origin, and arises under the trademark laws of the United States, namely, 15
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U.S.C. 1114, 1116-17, 1121, and 1125(a), and related causes of action under the laws of the
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State of Washington and common law arising from the wrongful use by Defendant of Plaintiffs
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trademarks and trade names as described below. This Court has jurisdiction pursuant to 15
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U.S.C. 1121, 28 U.S.C. 1331 and 1338(a) and (b).
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2.
This Court has supplemental jurisdiction pursuant to 28 U.S.C. 1367(a) with
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respect to claims arising under the laws of the State of Washington in that such claims are so
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related to the claims under the trademark laws of the United States that they form part of the
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same case or controversy under Article III of the United States Constitution.
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COMPLAINT -- 1
MILLER NASH GRAHAM &

DUNN LLP
Pier 70, 2801 Alaskan Way ~ Suite 300

Seattle, Washington 98121-1128
(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
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2
VENUE
3.
Venue is vested in this Court pursuant to 28 U.S.C. 1391(b) in that the asserted
3 claims arose within the district and that this Defendant, or its agents, conducts business, resides,
4 or may be found within this district.
5
6
PARTIES
4.
Plaintiff Heritage Distilling Company is a corporation duly organized and
7 existing under the laws of the State of Washington. Its principal place of business is located in
8 Gig Harbor, Washington.
9
5.
Defendant White River Distillers, LLC is a limited liability company duly
10 organized and existing under the laws of the State of Washington. Its principal place of business
11 is located in Enumclaw, Washington.
12
13
FACTS
6.
Plaintiff is a craft distillery engaged in selling spirits, distilled spirits and liquors
14 under the federally registered trademark BATCH NO. 12 and design mark BATCH NO. 12,
15 which consists of the number 12 prominently displayed with the words BATCH NO. in smaller
16 print over it (together, the Heritage 12 marks). The federally registered design mark is
17 displayed below:
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7.
On February 3, 2014, Plaintiff filed a U.S. federal trademark application to
26 register the mark BATCH NO. 12 in International Class 033 for distilled spirits and spirits. It
COMPLAINT -- 2

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
1 subsequently obtained a federal trademark registration for the mark on October 6, 2015
2 (Registration No. 4,827,815). A copy of the registration certificate for BATCH NO. 12 is
3 attached hereto as Exhibit A.
Plaintiff has used the mark continuously in commerce in
4 connection with distilled spirits and spirits since at least as early as June 2014.
5
8.
On May 2, 2014, Plaintiff filed a U.S. federal trademark application to register the
6 design mark BATCH NO. 12 in International Class 033 for distilled spirits and spirits. It
7 subsequently obtained a federal trademark registration for the mark on October 6, 2015
8 (Registration No. 4,828,034). A copy of the registration certificate for the BATCH NO. 12
9 design mark is attached hereto as Exhibit B. Plaintiff has used the mark continuously in
10 commerce in connection with distilled spirits and spirits since at least as early as June 2014.
11
9.
Plaintiff provides its spirits, distilled spirits and liquors under the Heritage 12
12 marks throughout the State of Washington through major retailers such as Trader Joes, Costco,
13 Safeway, Albertsons, Fred Meyer, QFC, Walgreens, independent IGA stores, U.S. Navy
14 exchange stores on base, and other on-premise and off-premise retailers. Plaintiff also sells its
15 spirits, distilled spirits and liquors under the Heritage 12 marks in interstate commerce, including
16 in Oregon, Montana, and Wyoming, with the explicit approval and authorization of state-owned
17 liquor store systems, and in California and Washington, D.C., through distributors and direct
18 retailers. Plaintiff is in negotiations with brokers and distributors to sell its spirits, distilled spirits
19 and liquors under the Heritage 12 marks in Nevada, New York, New Jersey, Maryland,
20 Delaware, Virginia and Texas. Plaintiff further offers its products under the Heritage 12 marks
21 online to individual consumers from certain states.
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10.
Plaintiff expends considerable time and expense to market its spirits, distilled
23 spirits and liquors under the Heritage 12 marks through social media, television, and broadcast
24 radio, and web streaming services. These advertisements are national, and Plaintiffs broadcast
25 radio ads are run daily throughout Washington on multiple radio stations, and every Sunday on
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COMPLAINT -- 3

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
1 sports network radio broadcasts throughout Washington, Idaho, Oregon, Alaska and British
2 Columbia, Canada.
3
11.
As a result of Plaintiffs expenditure of considerable time and expense in
4 continuously and aggressively marketing its spirits and liquors in connection with its distinctive
5 Heritage 12 marks, the consuming public has come to recognize all alcoholic beverages sold in
6 connection with the Heritage 12 marks as originating from, approved or sponsored by, or
7 otherwise associated with Plaintiff.
8
12.
Defendant filed an application for federal registration of the mark 12 SPIRITS on
9 May 5, 2014. A true and correct copy of Defendants trademark application is attached hereto as
10 Exhibit C. The application is still pending with the U.S. Patent and Trademark Office.
11
13.
In June 2014, Defendant began offering spirits for sale in the greater Seattle area
12 and elsewhere in the Pacific Northwest branded with a label shown below featuring a trademark
13 (the White River 12 Mark) that is very similar to Plaintiffs. A comparison of Defendants
14 labels (left) and Plaintiffs labels (right) is included in the chart below:
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Defendants Labels
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featuring the White River 12 Mark

COMPLAINT -- 4
Plaintiffs Labels

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
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14.
Plaintiff has priority in its Heritage 12 marks by virtue of the filing dates of its
12 federal trademark applications, which predate Defendants first use of the White River 12 mark
13 in commerce or any other date upon which Defendant can rely for priority purposes.
14
15.
Plaintiff has informed Defendant of Plaintiffs priority of rights in the Heritage 12
15 marks. Plaintiff has demanded that Defendant cease and desist from using marks or labels in any
16 manner that are likely to cause consumers to mistakenly believe that Defendant is associated
17 with or authorized by Plaintiff.
18
16.
As of the date of this filing, Defendant has not responded to this demand and its
19 product continues to feature confusingly similar marks and labels.

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17.
Defendants continued use of the White River 12 mark is likely to cause
21 confusion among consumers.

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18.
In fact, actual confusion has resulted from Defendants use of the White River 12
23 mark, which is confusingly similar to Plaintiffs Heritage 12 mark. For example, on multiple
24 occasions consumers have referenced Heritage through social media, at least once to complain
25 about the quality of its products, when in fact the consumers had instead purchased or consumed
26 Defendants products sold under the White River 12 mark.
COMPLAINT -- 5

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
19.
Such confusion irreparably harms Plaintiff and Plaintiffs business reputation,
2 particularly where, as with social media, it results in false negative publicity for Plaintiffs
3 products. Defendants use of the White River 12 mark is also likely to cause a decline in the
4 sales of Plaintiffs products, as a result of both individuals inadvertently purchasing Defendants
5 product under the mistaken belief that it is being offered by Plaintiff and individuals choosing
6 not to purchase Plaintiffs product because of negative impressions that arose from experience
7 with Defendants products.
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CAUSES OF ACTION
First Cause of Action Federal Trademark Infringement, 15 U.S.C. 1114
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20.
Plaintiff re-alleges and incorporates by this reference the allegations contained in
11 Paragraphs 1 through 19 above.

12
21.
Defendants spirits and liquors, offered in connection with the White River 12
13 mark, are sold in, and/or otherwise affect interstate commerce, to the same consuming public and
14 travel through the same trade channels as the distilled spirits, spirits and liquors that Plaintiff
15 offers for sale in connection with its registered Heritage 12 marks.
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22.
Defendants spirits and liquors have been sold in the same and similar retail
17 outlets as Plaintiffs, and Defendants spirits and liquors compete with Plaintiffs distilled spirits,
18 spirits and liquors.
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23.
In selling its spirits and liquors under the White River 12 mark, Defendant is
20 willfully and knowingly infringing and will continue to further infringe the rights of Plaintiff and
21 its federally registered Heritage 12 marks in violation of 15 U.S.C. 1114, as a result of the
22 continued, unauthorized use of Defendants White River 12 mark, with the intention of deceiving
23 and misleading the consuming public, and by wrongfully trading on Plaintiffs goodwill and
24 reputation.
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24.
Defendants use of the White River 12 mark is likely to cause confusion or
26 mistake or deception of purchasers as to the source, origin, sponsorship, affiliation, approval or

COMPLAINT -- 6

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
1 connection of Defendant and its goods, in that purchasers and others are likely to believe that
2 Plaintiff authorizes or licenses Defendants products or that Defendants business affiliated with
3 the White River 12 mark is associated with Plaintiff.
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25.
Defendants use of the White River 12 mark has caused actual confusion by
5 leading customers to associate Defendants products with those of Plaintiff, to the detriment of
6 Plaintiffs reputation and sales.
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26.
By its wrongful acts, Defendant has caused irreparable injury and damage, which
8 cannot now be accurately computed, to Plaintiff and to the goodwill associated with Plaintiffs
9 registered marks. Unless restrained by the Court, Defendant is likely to continue to do so.
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27.
As a result of the foregoing, Plaintiff has and will suffer damages in an amount to
11 be proven at trial. Consistent with 15 U.S.C. 1117(a), among other remedies, Plaintiff is
12 entitled to recover its damages, Defendants profits, and the cost of this suit.
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Second Cause of Action False Designation of Origin (Federal), 15 U.S.C. 1125

28.

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29.
Defendants use of the White River 12 mark in connection with the promotion
17 and distribution of its spirits and liquors in commerce has caused and is likely to continue to
18 cause confusion, mistake and deception among the consuming public as to the origin,
19 sponsorship, and/or approval of the Defendants spirits and liquors.
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30.
As a result of Defendants intentional and wrongful acts, purchasers are likely to
21 purchase Defendants goods in connection with the White River 12 mark instead of Plaintiffs
22 services in connection with the Heritage 12 marks, thereby injuring Plaintiff by diverting sales to
23 Defendant. Purchasers are also likely to confuse Defendants goods with those of Plaintiff.
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31.
Plaintiff has no control over the quality of the goods sold by Defendant and,
25 because of the confusion as to the origin, sponsorship or approval of the Defendants goods
26 engendered by Defendant, Plaintiffs extensive and valuable goodwill is at the mercy of
COMPLAINT -- 7

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
1 Defendant, and Plaintiff has suffered and will continue to suffer irreparable harm should such
2 conduct be allowed to occur.
3
32.
Such acts by Defendant are willful and deliberate, designed specifically to trade
4 upon the valuable goodwill of Plaintiff. Defendants acts constitute a false representation and a
5 false designation of origin in violation of 15 U.S.C. 1125(a).
6
33.
By its wrongful acts, Defendant has and will cause great harm and damage to
7 Plaintiff, which cannot now be assessed or computed and, unless restrained by the Court, has and
8 will continue to cause irreparable injury and damage to Plaintiff and to the goodwill associated
9 with the Heritage 12 marks.
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34.
Because Plaintiff filed a U.S. federal trademark application to register its Heritage
11 12 marks on February 3, 2014 and May 2, 2014, prior to Defendants use of the White River 12
12 mark in June of 2014, Defendant knew or should have known that it had no legal basis to use the
13 White River 12 mark in connection with Defendants spirits or liquors. The filing of a federal
14 trademark application for a mark that matures into a registration creates a constructive first use
15 date, and therefore puts all others on notice on the owners priority of rights in the mark.
16 Defendant also should have been aware that Plaintiff filed an application for approval of its
17 liquor label using the Heritage 12 marks earlier than Defendant.
Despite this knowledge,
18 Defendant willfully violated 15 U.S.C. 1125(a).

19
35.
As a result of Defendants willful Lanham Act violations, Plaintiff requests the
20 Court enter judgment for three times Plaintiffs damages, together with reasonable attorneys
21 fees pursuant to 15 U.S.C. 1117(b).
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Third Cause of Action Unfair Competition (Washington Common Law)

36.

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37.
Defendants conduct of marketing, distributing and selling its spirits and liquors
26 in connection with its White River 12 mark, which are colorable, confusing and deceptive
COMPLAINT -- 8

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
1 variants of Plaintiffs Heritage12 marks, are calculated to and are likely to confuse, deceive and
2 mislead the consuming public into believing that Defendants goods originate with, are
3 associated with, are authorized by, or are otherwise related to Plaintiff.
4
38.
Plaintiff believes that Defendant, with full knowledge of the favorable notoriety,
5 acclaim and popularity of Plaintiffs spirits and liquors sold both previously and currently in
6 connection with the Heritage 12 marks, intends to trade on the goodwill associated with
7 Plaintiffs marks.
8
39.
Defendants conduct constitutes unfair competition, palming off, unjust
9 enrichment, and misappropriation of rights and goodwill of Plaintiff and the Heritage12 marks
10 and, unless enjoined by this Court, will result in the unjust enrichment of Defendant.
11
40.
For these reasons, the passing off spirits and liquors under the colorable,
12 confusingly and deceptively similar of variant the Heritage12 marks, unless enjoined has and
13 will continue to irreparably injure Plaintiff, and to damage Plaintiff in an amount to be proven at
14 trial.
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Fourth Cause of Action Washington State Consumer Protection Act (RCW 19.86)
41.

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42.
Defendant has intentionally advertised and sold its spirits and liquors under the
19 White River 12 mark so as to pass off its goods as those of Plaintiff, to cause confusion and
20 deceive purchasers as to the source, sponsorship, approval or certification of, or the affiliation,
21 connection or association with Defendants goods, and to obtain the acceptance of Defendants
22 goods based on the reputation and goodwill of Plaintiff and its high quality goods sold in
23 connection with its Heritage 12 marks.
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43.
Defendants actions have and will continue to cause confusion, mistake and
25 deception among the purchasing public as to the source of Defendants goods.
Further,
26
COMPLAINT -- 9

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
1 Defendants actions are likely to deceive others into believing that Defendants spirits and
2 liquors are sponsored by, approved by, or affiliated with Plaintiff.
3
44.
Defendants unauthorized use of marks that are confusingly similar to Plaintiffs
4 registered marks constitutes an unfair or deceptive act or practice and an unfair method of
5 competition in the conduct of trade or commerce, which is and will be injurious to the public
6 interest, in violation of the Washington State Unfair Business Practices Consumer Protection
7 Act, RCW 19.86.020, et seq. This statute also applies to the present cause pursuant to the
8 principles of Nordstrom v. Tampourlos, 107 Wn.2d 735 (1987), which provides that unfair trade
9 name infringement violates the Washington State Unfair Business Practices Consumer
10 Protection Act.
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45.
As a result of these acts of infringement, deception, and unfair competition,
12 Plaintiff has and will continue to suffer great injury and damage in an amount to be proven at
13 trial. Plaintiff also will continue to suffer irreparable injury to its reputation and goodwill unless
14 restrained by this Court, which cannot be adequately remedied at law.
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PRAYER FOR RELIEF
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WHEREFORE, Plaintiff prays this Court grant the following relief against Defendant:
17
1.
For a preliminary and permanent injunction enjoining Defendant, its agents,
18 servants, employees, successors, and assigns, and all others acting in concert or participating
19 with it as follows:
20
a.
From infringing Plaintiffs registered Heritage 12 marks (U.S. Trademark
21 Registration Nos. 4,827,815 and 4,828,034) in violation of 15 U.S.C. 1114 through the display
22 of any confusingly similar mark in connection with spirits or liquors by requiring the removal of
23 all such marks from Defendants signs, labels, products, vehicles, stationery, business cards,
24 invoices, packaging, containers, advertising, store and restaurant displays, uniforms,
25 merchandise, website, social media accounts or feeds, or any other business equipment or
26 marketing materials, or otherwise infringing Plaintiffs registered trademarks;
COMPLAINT -- 10

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
b.
From falsely representing affiliation with Plaintiff and falsely designating
2 the origin of Defendants spirits and liquors in violation of 15 U.S.C. 1125(a) through the
3 display of any confusingly similar mark in connection with spirits or liquors by requiring the
4 removal of all such marks from Defendants signs, labels, products, vehicles, stationery, business
5 cards, invoices, packaging, containers, advertising, store and restaurant displays, uniforms,
6 merchandise, website, social media accounts or feeds, or any other business equipment or
7 marketing materials, or otherwise falsely representing affiliation with Plaintiff or falsely
8 designating Plaintiff as the origin of Defendants goods;
9
c.
From causing confusion, mistake and deception among the purchasing
10 public as to the source or affiliation of Defendants spirit and liquors in violation of the
11 Washington Consumer Protection Act through the display of any confusingly similar mark in
12 connection with spirits and liquors by requiring the removal of all such marks from Defendants
13 signs, labels, bottles, vehicles, stationery, business cards, invoices, packaging, containers,
14 advertising, store and restaurant displays, uniforms, merchandise, website, social media accounts
15 or feeds, or any other business equipment or marketing materials, or otherwise unfairly
16 competing with Plaintiff.
17
2.
For an order directing Defendant to file with the Court and serve on Plaintiff an
18 affidavit setting forth in detail the manner and form in which Defendant has complied with the
19 terms of the injunction, in accordance with 15 U.S.C. 1116.
20
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3.
For an order directing that Defendant account for and pay over to Plaintiff:
a.
All profits derived by Defendant from its acts of trademark infringement
22 and unfair competition in accordance with 15 U.S.C. 1117, 15 U.S.C. 1125, and the laws of
23 the State of Washington;
24
b.
Damages (including treble damages) by reason of Defendants acts of
25 infringement and competition in accordance with 15 U.S.C. 1117, 15 U.S.C. 1125, and the
26 laws of the State of Washington.
COMPLAINT -- 11

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
4.
That Plaintiff be awarded its reasonable attorneys fees and costs pursuant to 15
2 U.S.C. 1117 and RCW 19.86.090, or as otherwise provided by law; and

3
5.
Such other further relief as the Court deems just and proper.
4
5
DATED this 15th day of December, 2015.
6
MILLER NASH GRAHAM & DUNN LLP
By: s/Daniel J. Oates

Daniel J. Oates, WSBA# 39334
Email: dan.oates@millernash.com
Vanessa L. Wheeler, WSBA# 48205
Email: Vanessa.wheeler@millernash.com
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Attorneys for Plaintiff
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COMPLAINT -- 12

DUNN LLP

(206) 624-8300/Fax: (206) 340-9599
618115-2100/70064868.5
Exhibit A
Exhibit B
Exhibit C
PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2014)
Trademark/Service Mark Application, Principal Register

Serial Number: 86271980
Filing Date: 05/05/2014
The table below presents the data as entered.

Input Field
SERIAL NUMBER
Entered
86271980
MARK INFORMATION
*MARK
12 SPIRITS
STANDARD CHARACTERS
YES
USPTO-GENERATED IMAGE
YES
LITERAL ELEMENT
12 SPIRITS
MARK STATEMENT
The mark consists of standard characters,

without claim to any particular font, style,
size, or color.
REGISTER
Principal
APPLICANT INFORMATION
*OWNER OF MARK
WHITE RIVER DISTILLERS, LLC
*STREET
25714 SE 400th Street
*CITY
Enumclaw
*STATE
(Required for U.S. applicants)
Washington
*COUNTRY
United States
*ZIP/POSTAL CODE
(Required for U.S. applicants only)
98022
LEGAL ENTITY INFORMATION

TYPE
limited liability company
STATE/COUNTRY WHERE LEGALLY

ORGANIZED
Washington
GOODS AND/OR SERVICES AND BASIS INFORMATION

INTERNATIONAL CLASS
033
*IDENTIFICATION
ALCOHOLIC BEVERAGES, EXCEPT

BEER, NAMELY, WHISKEY, GIN,
VODKA AND DISTILLED SPIRITS
FILING BASIS
SECTION 1(b)
ATTORNEY INFORMATION
NAME
John S. Hale
ATTORNEY DOCKET NUMBER
TMB-7774
FIRM NAME
GIPPLE & HALE
STREET
6718 Whittier Avenue, Suite 200
CITY
McLean
STATE
Virginia
COUNTRY
United States
ZIP/POSTAL CODE
22101
PHONE
7034481770 x301
FAX
7034487780
EMAIL ADDRESS
gipple.hale@verizon.net
AUTHORIZED TO COMMUNICATE VIA EMAIL
Yes
CORRESPONDENCE INFORMATION
NAME
John S. Hale
FIRM NAME
GIPPLE & HALE
STREET
CITY
McLean
STATE
Virginia
COUNTRY
United States
ZIP/POSTAL CODE
22101
PHONE
7034481770 x301
FAX
7034487780
EMAIL ADDRESS
gipple.hale@verizon.net
AUTHORIZED TO COMMUNICATE VIA EMAIL
Yes
FEE INFORMATION
NUMBER OF CLASSES

FEE PER CLASS
325
*TOTAL FEE DUE
325
*TOTAL FEE PAID
325
SIGNATURE INFORMATION
SIGNATURE
/John S. Hale/
SIGNATORY'S NAME
John S. Hale
SIGNATORY'S POSITION
Attorney of record, Virginia bar member
DATE SIGNED
05/05/2014

PTO Form 1478 (Rev 9/2006)
OMB No. 0651-0009 (Exp 12/31/2014)
Trademark/Service Mark Application, Principal Register

Filing Date: 05/05/2014
To the Commissioner for Trademarks:

MARK: 12 SPIRITS (Standard Characters, see mark)
The literal element of the mark consists of 12 SPIRITS.
The mark consists of standard characters, without claim to any particular font, style, size, or color.
The applicant, WHITE RIVER DISTILLERS, LLC, a limited liability company legally organized under
the laws of Washington, having an address of
25714 SE 400th Street
Enumclaw, Washington 98022
United States
requests registration of the trademark/service mark identified above in the United States Patent and
Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051
et seq.), as amended, for the following:
International Class 033: ALCOHOLIC BEVERAGES, EXCEPT BEER, NAMELY, WHISKEY,
GIN, VODKA AND DISTILLED SPIRITS
Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company
or licensee the mark in commerce on or in connection with the identified goods and/or services. (15
U.S.C. Section 1051(b)).
The applicant's current Attorney Information:

John S. Hale of GIPPLE & HALE
McLean, Virginia 22101
United States
The attorney docket/reference number is TMB-7774.
The applicant's current Correspondence Information:
John S. Hale
GIPPLE & HALE
McLean, Virginia 22101
7034481770 x301(phone)
7034487780(fax)
gipple.hale@verizon.net (authorized)

A fee payment in the amount of $325 has been submitted with the application, representing payment for 1
class(es).
Declaration
The signatory believes that: if the applicant is filing the application under 15 U.S.C. Section 1051(a), the
applicant is the owner of the trademark/service mark sought to be registered; the applicant or the
applicant's related company or licensee is using the mark in commerce on or in connection with the
goods/services in the application, and such use by the applicant's related company or licensee inures to the
benefit of the applicant; the specimen(s) shows the mark as used on or in connection with the
goods/services in the application; and/or if the applicant filed an application under 15 U.S.C. Section
1051(b), Section 1126(d), and/or Section 1126(e), the applicant is entitled to use the mark in commerce;
the applicant has a bona fide intention to use or use through the applicant's related company or licensee the
mark in commerce on or in connection with the goods/services in the application. The signatory believes
that to the best of the signatory's knowledge and belief, no other person has the right to use the mark in
commerce, either in the identical form or in such near resemblance as to be likely, when used on or in
connection with the goods/services of such other person, to cause confusion or mistake, or to deceive. The
signatory being warned that willful false statements and the like are punishable by fine or imprisonment,
or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize
the validity of the application or any registration resulting therefrom, declares that all statements made of
his/her own knowledge are true and all statements made on information and belief are believed to be true.
Declaration Signature
Signature: /John S. Hale/ Date: 05/05/2014
Signatory's Name: John S. Hale
Signatory's Position: Attorney of record, Virginia bar member
RAM Sale Number: 86271980
RAM Accounting Date: 05/06/2014
Internet Transmission Date: Mon May 05 16:43:46 EDT 2014
TEAS Stamp: USPTO/BAS-XXX.XXX.XXX.XXX-20140505164346
164445-86271980-5001fda941b92abdfeaf1839
2a2ff4afd399f9d8fa430aaa2b86ec9921319b57
c70-CC-3845-20140505164029236238

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Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 1 of 25

UNITED STATES DISTRICT COURT

9 HERITAGE DISTILLING COMPANY, a

This Court has supplemental jurisdiction pursuant to 28 U.S.C. 1367(a) with

MILLER NASH GRAHAM &

Pier 70, 2801 Alaskan Way ~ Suite 300

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 2 of 25

Plaintiff Heritage Distilling Company is a corporation duly organized and

Defendant White River Distillers, LLC is a limited liability company duly

On February 3, 2014, Plaintiff filed a U.S. federal trademark application to

MILLER NASH GRAHAM &

Pier 70, 2801 Alaskan Way ~ Suite 300

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 3 of 25

Plaintiff has used the mark continuously in commerce in

MILLER NASH GRAHAM &

Pier 70, 2801 Alaskan Way ~ Suite 300

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 4 of 25

As a result of Plaintiffs expenditure of considerable time and expense in

Defendant filed an application for federal registration of the mark 12 SPIRITS on

featuring the White River 12 Mark

MILLER NASH GRAHAM &

Pier 70, 2801 Alaskan Way ~ Suite 300

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 5 of 25

Plaintiff has informed Defendant of Plaintiffs priority of rights in the Heritage 12

19 product continues to feature confusingly similar marks and labels.

Defendants continued use of the White River 12 mark is likely to cause

21 confusion among consumers.

MILLER NASH GRAHAM &

Pier 70, 2801 Alaskan Way ~ Suite 300

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 6 of 25

Such confusion irreparably harms Plaintiff and Plaintiffs business reputation,

First Cause of Action Federal Trademark Infringement, 15 U.S.C. 1114

Plaintiff re-alleges and incorporates by this reference the allegations contained in

11 Paragraphs 1 through 19 above.

Defendants use of the White River 12 mark is likely to cause confusion or

26 mistake or deception of purchasers as to the source, origin, sponsorship, affiliation, approval or

MILLER NASH GRAHAM &

Pier 70, 2801 Alaskan Way ~ Suite 300

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 7 of 25

Second Cause of Action False Designation of Origin (Federal), 15 U.S.C. 1125

Plaintiff re-alleges and incorporates by this reference the allegations contained in

15 Paragraphs 1 through 27 above.

As a result of Defendants intentional and wrongful acts, purchasers are likely to

MILLER NASH GRAHAM &

Pier 70, 2801 Alaskan Way ~ Suite 300

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 8 of 25

Despite this knowledge,

18 Defendant willfully violated 15 U.S.C. 1125(a).

As a result of Defendants willful Lanham Act violations, Plaintiff requests the

Third Cause of Action Unfair Competition (Washington Common Law)

Plaintiff re-alleges and incorporates by this reference the allegations contained in

24 Paragraphs 1 through 35 above.

MILLER NASH GRAHAM &

Pier 70, 2801 Alaskan Way ~ Suite 300

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 9 of 25

Defendants conduct constitutes unfair competition, palming off, unjust

Plaintiff re-alleges and incorporates by this reference the allegations contained in

17 Paragraphs 1 through 40 above.

25 deception among the purchasing public as to the source of Defendants goods.

MILLER NASH GRAHAM &

Pier 70, 2801 Alaskan Way ~ Suite 300

Case 2:15-cv-01980-BAT Document 1 Filed 12/15/15 Page 10 of 25