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Eat 'N Park v. Chicago American - Complaint
Eat 'N Park v. Chicago American - Complaint
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COMPLAINT
AND NOW come Plaintiffs, Eatn Park Hospitality Group, Inc. and EPR Holdings, Inc.,
together (Eatn Park), by their counsel, and aver the following for their Complaint against
Defendant Chicago American Sweet & Snacks, Inc. (Chicago American):
1.
Eatn Park Hospitality Group, Inc. is a corporation organized and existing under
the laws of the Commonwealth of Pennsylvania, with its principal place of business at 285 East
Waterfront Drive, P.O. Box 3000, Pittsburgh, Pennsylvania 15230. EPR Holdings, Inc. is a
corporation organized and existing under the laws of the State of Delaware, with its principal
place of business at 801 West Street, 2nd Floor, Wilmington, Delaware 19801.
2.
principal place of business at 3501 Southport Avenue #274, Chicago, Illinois 60657.
3.
competition arising under the Federal Trademark Act of 1946, as amended, commonly known as
the Lanham Act, 15 U.S.C. 1051 et seq., and the statutes and common law of the
Commonwealth of Pennsylvania.
4.
This Court has jurisdiction over the subject matter and parties of this action
pursuant to 28 U.S.C. 1331, 1332(a) and 1338(a) and (b), and under the principle of
supplemental jurisdiction pursuant to 28 U.S.C. 1367.
5.
Venue is proper in this judicial district under 28 U.S.C. 1391(b) and (c) and
1400(b) because Chicago American is subject to personal jurisdiction in this judicial district.
6.
Eatn Park has been selling its distinctive smiling face cookie since 1985. The
smiling face cookie is extensively used by Eatn Park in its advertising, and is strongly
associated by the public with Plaintiff Eatn Park. The Eatn Park smiling face cookie is featured
as a prominent part of the Eatn Park restaurant signage and logo. The image of the smiling face
cookie is the symbol of Eatn Park. The cookie is sold at the Eatn Park restaurant locations and
throughout the United States from the website www.smileycookie.com.
7.
Eatn Park has been selling its smiling face cookie since 1987 under the
trademark SMILEY.
advertising, and its strongly associated by the public with Plaintiff Eatn Park.
8.
Eatn Park is the owner of the smiling face design trademark, which is registered
for baked goods: namely, cookies under United States Trademark Registration No. 1,809,410.
A copy of this registration is attached hereto as Exhibit A. The right of Eatn Park to use this
trademark is incontestable pursuant to 15 U.S.C. 1065.
9.
Eatn Park is the owner of the trademark SMILEY, which is registered for
sugar cookie having raised design of a smiling face sold in restaurants for consumption on or
off the premises under United Stated Trademark Registration No. 2,108,164, and for pancakes
Copies of these
registrations are attached hereto as Exhibits B and C, respectively. The right of Eatn Park to use
these trademarks is incontestable pursuant to 15 U.S.C. 1065.
10.
Chicago American sells and offers for sale smiling face cookies, under the name
Smileys which include a design that is confusingly similar to the registered trademark of
Eatn Park. Chicago Americans Smileys cookies are directly competitive products to the
Eatn Park SMILEY smiling face cookies.
11.
Chicago Americans use of its confusingly similar smiling face design and the
Smileys word mark for the sale of cookies is intended and is likely to foster market confusion
that Chicago Americans products originate, are sponsored by, or are otherwise affiliated with
Eatn Park because of the similarity of the design used by Chicago American to the registered
smiling face trademark of Eatn Park, as well as the similarity of the word mark Smileys to
the registered trademark SMILEY.
12.
Unless the relief requested herein by Eatn Park is granted, Eatn Park will suffer
further serious, immediate, and irreparable harm, including, but not limited to, customer
confusion, dilution, and loss of goodwill.
COUNT I
(Trademark Infringement Under 15 U.S.C. 1114)
13.
Eatn Park repeats and realleges the averments contained in paragraphs 1 through
The registered smiling face design trademark for cookies is the sole and exclusive
Eatn Park has never authorized Defendant to use the smiling face design
16.
Upon information and belief, Chicago American has, without the consent of Eatn
Park, used its confusingly similar design in connection with its sale of cookies and has caused
such products to enter interstate commerce, including, inter alia, this judicial district.
17.
Upon information and belief, Chicago American has promoted, marketed, and
sold cookies in conjunction with its smiling face design with the knowledge and belief that such
unauthorized use in commerce has caused and is likely to cause confusion, or to cause mistake,
or to deceive the purchasers of Eatn Park products that such products are baked, endorsed,
sponsored, authorized, recommended, or warranted by Eatn Park.
18.
Upon information and belief, Chicago Americans use of its infringing smiling
face design in interstate commerce has caused or is likely to cause confusion, or to cause
mistake, or to deceive the purchasers of cookies to mistakenly believe that such products are
manufactured, sponsored, endorsed, authorized, recommended, or warranted by Eatn Park.
19.
Chicago Americans conduct violates Section 32(1) of the Lanham Act, 15 U.S.C.
1114(1).
20.
Eatn Park has been, and is likely to continue to be, irreparably harmed and
Eatn Park has also been, and is likely to continue to be, irreparably harmed and
occasion that its customers believe that the products of Chicago American are baked, sponsored,
authorized, endorsed, recommended, or warranted by Eatn Park.
COUNT II
(Trademark Infringement Under 15 U.S.C. 1114)
22.
Eatn Park repeats and realleges the averments contained in paragraphs 1 through
The registered trademark SMILEY for cookies is the sole and exclusive property
of Eatn Park.
24.
Eatn Park has not authorized Defendant to use the SMILEY trademark or any
Upon information and belief, Chicago American has, without the consent of Eatn
Park, used the Smileys trademark in connection with its sale of cookies and has caused such
products to enter interstate commerce, including, inter alia, this judicial district.
26.
Upon information and belief, Chicago American has promoted, marketed, and
sold cookies in conjunction with the Smileys trademark with the knowledge and belief that
such unauthorized use in commerce has caused and is likely to cause confusion, or to cause
mistake, or to deceive the purchasers of Eatn Park products that such products are baked,
endorsed, sponsored, authorized, recommended, or warranted by Eatn Park.
27.
Upon information and belief, Chicago Americans use of its infringing Smileys
trademark in interstate commerce has caused or is likely to cause confusion, or to cause mistake,
or to deceive the purchasers of cookies to mistakenly believe that such products are
manufactured, sponsored, endorsed, authorized, recommended, or warranted by Eatn Park.
28.
Chicago Americans conduct violates Section 32(1) of the Lanham Act, 15 U.S.C.
1114(1).
29.
Eatn Park has been, and is likely to continue to be, irreparably harmed and
Eatn Park has also been, and is likely to continue to be, irreparably harmed and
Eatn Park repeats and realleges the averments contained in paragraphs 1 through
The distinctive smiling face trademark and the SMILEY trademark, and the
public recognition thereof, and the public association thereof with Eatn Park are protected under
Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
33.
Eatn Park has never authorized Chicago American to use the smiling face
trademark, the SMILEY trademark or any other mark confusingly similar thereto in connection
with Chicago Americans sale of cookies or otherwise.
34.
Upon information and belief, Chicago American has, without the consent of Eatn
Park, used its smiling face design and the SMILEY trademark in connection with its sale of
cookies and has caused such products to enter interstate commerce.
35.
Upon information and belief, Chicago American has promoted, marketed, and/or
sold cookies in conjunction with the smiling face design and the SMILEY trademark with the
knowledge and belief that such unauthorized use in commerce has caused and is likely to cause
confusion, or to cause mistake, or to deceive, the purchasers of Chicago Americans products
that such products are baked, endorsed, sponsored, or authorized by Eatn Park, or that such
products are recommended or warranted by Eatn Park.
36.
registered smiling face design and registered SMILEY trademark in commerce has caused and
is likely to cause confusion, or to cause mistake, or to deceive, the purchasers of cookies to
believe mistakenly that such products are baked, sponsored, endorsed, or authorized by Eatn
Park or connected in some way with Eatn Park, or that such products are recommended or
warranted by Eatn Park.
37.
Registration No. 1,809,410. Chicago Americans Smileys word mark is confusingly similar
to United States Registration Nos. 2,108,164 and 3,310,195. The use of this design and word
mark by Chicago American is even more confusing because they are used on identical goods.
38.
competition and violates Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
39.
Eatn Park has been, and is likely to continue to be, irreparably harmed and
damaged by Chicago Americans acts of false designation of origin and unfair competition if
Chicago American is not restrained, in that Eatn Park has suffered and is likely to suffer a loss
of sales and profits each time its customers believe that Chicago Americans products are
manufactured or endorsed by Eatn Park, and Eatn Park has no adequate remedy at law.
40.
Eatn Park also has been, and is likely to continue to be irreparably harmed and
Eatn Park repeats and realleges the averments contained in paragraphs 1 through
Eat n Park is the exclusive owner of its registered smiling face design trademark
Eatn Park has never authorized Chicago American to use the smiling face
trademark or any design confusingly similar thereto in connection with Chicago Americans
products or otherwise. Eatn Park has never authorized Chicago American to use the word mark
SMILEY or any mark confusingly similar thereto in connection with Chicago Americans
products or otherwise.
44.
Upon information and belief, Chicago American, without the consent of Eatn
Park, has used its confusingly similar smiling face design and the SMILEY word mark in
connection with its sale of cookies, and has caused such products to enter interstate commerce.
Chicago Americans use of these trademarks began after the Eatn Park smiling face mark and
the SMILEY mark became famous.
45.
Upon information and belief, Chicago American has promoted, marketed, and/or
sold cookies with the knowledge and intent that such unauthorized use in commerce has caused
mistake, or deceived the customers of Eatn Park that such products are baked, sponsored,
endorsed, or authorized by Eatn Park or that such products are recommended or warranted by
Eatn Park. Chicago Americans use of its smiling face design and the Smileys word mark
causes dilution by lessening the capacity of the registered smiling face and SMILEY
trademarks, to identify and distinguish Eatn Park and its cookies.
46.
Such unauthorized use of the smiling face design and the Smileys word mark
in commerce by Chicago American has caused, or is likely to cause irreparable injury to Eatn
Parks business reputation and/or dilution of the distinctive quality of the smiling face trademark,
and the SMILEY trademark and Eatn Park has no adequate remedy at law.
47.
Eatn Park repeats and realleges the averments contained in Paragraphs 1 through
Eatn Park is the exclusive owner of the smiling face trademark and the
Eatn Park has never authorized Chicago American to use the smiling face
trademark or any design confusingly similar thereto in connection with Chicago Americans
products or otherwise. Eatn Park has never authorized Chicago American to use the word mark
SMILEY or any mark confusingly similar thereto in connection with Chicago Americans
products or otherwise.
51.
Chicago American has, without the consent of Eatn Park, used the smiling face
design and the SMILEY word mark in connection with its sale of cookies.
52.
Upon information and belief, Chicago American has promoted, marketed, and/or
sold cookies with the knowledge and intent that such unauthorized use in commerce has caused
mistake, or has deceived the customers of Eatn Park that such products are baked, formulated,
sponsored, endorsed, or authorized by Eatn Park or that such products are recommended or
warranted by Eatn Park. Chicago Americans use of the smiling face design and the SMILEY
word mark causes dilution by lessening the capacity of these trademarks to identify and
distinguish Eatn Park and its cookies.
53.
Such unauthorized use of the smiling face design and the SMILEY word mark in
commerce by Chicago American has caused, or is likely to cause irreparable injury to Eatn
Parks business reputation and/or dilution of the distinctive quality of the smiling face trademark
and the SMILEY trademark, and Eatn Park has no adequate remedy at law.
54.
Eatn Park repeats and realleges the averments contained in paragraphs 1 through
10
56.
cookies while utilizing its smiling face design and the SMILEY word mark constitutes unfair
competition at common law.
57.
Eatn Park has been, and is likely to continue to be, irreparably harmed and
Eatn Park also has been, and is likely to continue to be, irreparably harmed and
participation with Chicago American, be preliminarily and permanently enjoined and restrained
from using the smiling face trademark design and any other mark confusingly similar thereto in
the manufacture, marketing, advertising, labeling, packaging, offer for sale, sale, distribution of
any and all cookies;
(b)
participation with Chicago American, be preliminarily and permanently enjoined and restrained
11
from using the Smileys trademark and any other mark confusingly similar to SMILEY in the
manufacture, marketing, advertising, labeling, packaging, offer for sale, sale, distribution of any
and all cookies;
(c)
that all labels, boxes, cartons, signs, catalogs, literature, packages, marketing
materials, and advertisements of Defendant Chicago American which include the smiling face
mark and/or the Smileys mark and/or any other mark confusingly similar thereto, and relate to
any and all cookies, be delivered and destroyed as the Court shall direct pursuant to 15 U.S.C.
1116;
(d)
that Defendant Chicago American be ordered to account to Plaintiffs for any and
all profits derived by it by reason of the acts complained of in this Complaint pursuant to 15
U.S.C. 1114, 1117 and 1125;
(e)
injuries sustained by Plaintiffs as a result of Chicago Americans false designations of origin and
unfair competition, in an amount to be determined at trial, pursuant to 15 U.S.C. 1117 and
1125, and common law;
(g)
12
(h)
that Plaintiffs be awarded their costs of this action including reasonable attorneys
that Plaintiffs be awarded such further relief as the Court shall deem appropriate.
Respectfully submitted,
13
JS 44 (Rev. 12/12)
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of 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 September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
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EXHIBIT A
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Goods and Services IC 030. US 046. G & S: baked goods; namely, cookies. FIRST USE: 19851100. FIRST USE IN
COMMERCE: 19851100
Mark Drawing Code (2) DESIGN ONLY
Design Search Code 02.01.33 - Grotesque men formed by letters, numbers, punctuation or geometric shapes; Stick figures
02.11.16 - Faces, smiley; Smiley faces
04.07.02 - Objects forming a person; Person formed by objects
08.01.05 - Cookies; Fortune cookies
Serial Number
74305316
Filing Date
Current Basis
1A
Registration
Number
1809410
Registration Date
December 7, 1993
Owner
(REGISTRANT) EAT 'N PARK RESTAURANTS, INC. CORPORATION PENNSYLVANIA 100 Park
Manor Drive Pittsburgh PENNSYLVANIA 15205
(LAST LISTED OWNER) EPR HOLDINGS, INC. CORPORATION DELAWARE 801 WEST STREET
2ND FLOOR WILMINGTON DELAWARE 19801
Assignment
Recorded
ASSIGNMENT RECORDED
Attorney of Record
Type of Mark
TRADEMARK
Register
PRINCIPAL-2(F)
Affidavit Text
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EXHIBIT B
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Word Mark
SMILEY
Goods and
Services
IC 030. US 046. G & S: sugar cookie having raised design of a smiling face sold in restaurants for
consumption on or off the premises. FIRST USE: 19870400. FIRST USE IN COMMERCE: 19870400
Mark Drawing
(1) TYPED DRAWING
Code
Serial Number 74729817
Filing Date
Current Basis 1A
Original Filing
1A
Basis
Published for
August 5, 1997
Opposition
Registration
Number
2108164
Registration
Date
Owner
Assignment
Recorded
ASSIGNMENT RECORDED
Attorney of
Record
Type of Mark
TRADEMARK
Register
PRINCIPAL
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EXHIBIT C
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Word Mark
SMILEY
Goods and Services IC 030. US 046. G & S: Pancakes and Cookies. FIRST USE: 19870400. FIRST USE IN COMMERCE:
19870400
Mark Drawing Code
Serial Number
75528931
Filing Date
Current Basis
1A
Owner
(REGISTRANT) EPR INVESTMENTS, INC. CORPORATION DELAWARE 801 WEST STREET, 2ND
FLOOR WILMINGTON DELAWARE 19801
(LAST LISTED OWNER) EPR HOLDINGS, INC. CORPORATION DELAWARE 801 WEST STREET
2ND FLOOR WILMINGTON DELAWARE 19801
Assignment
Recorded
ASSIGNMENT RECORDED
Attorney of Record
Prior Registrations
2108164
Type of Mark
TRADEMARK
Register
PRINCIPAL
Affidavit Text
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