Case 1:16-cv-02814-MEH Document 1 Filed 11/18/16 USDC Colorado Page 1 of 16

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No.
THE KITCHEN CAFÉ LLC,
Plaintiff,
v.
WOLFGANG PUCK LICENSING LLC,
Defendant.

COMPLAINT AND JURY DEMAND

Plaintiff The Kitchen Café LLC (“The Kitchen” or “Plaintiff”), for its Complaint against
Defendant Wolfgang Puck Licensing LLC (“Wolfgang Puck” or “Defendant”), alleges as
follows:
Nature of the Action
1.

Since launching its first location in 2004, The Kitchen has operated farm-to-table

restaurants and community outreach programs using the trademark THE KITCHEN and
KITCHEN-formative marks across the United States, establishing itself as a leader of and wellknown champion for the “real food” movement in America.
2.

In 2012, Kimbal Musk, one of the founders of The Kitchen, met with Wolfgang

Puck at his Spago Beverly Hills restaurant to discuss and share advice regarding Mr. Puck’s
experience in the restaurant industry and Mr. Musk’s expanding footprint of THE KITCHEN
restaurants and non-profit “learning gardens” that Mr. Musk has installed in hundreds of schools
across the country under THE KITCHEN COMMUNITY mark.

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3.

In 2015, without notice or warning to Mr. Musk, Defendant Wolfgang Puck

Licensing LLC announced a new, competing restaurant concept under the same mark: THE
KITCHEN. Defendants’ unauthorized use of THE KITCHEN immediately caused confusion in
the restaurant industry and marketplace, as people assumed that Mr. Musk has decided to
affiliate with or license Wolfgang Puck.
4.

After learning that Wolfgang Puck was planning to open a competing restaurant

called THE KITCHEN, Mr. Musk reached out to Mr. Puck in an attempt to discuss the market
confusion that would be caused by him adopting an identical name. Mr. Musk hoped to
convince Mr. Puck to modify or adopt a different name—and planned to suggest alternatives
such as WOLFGANG PUCK’S KITCHEN or PUCK’s KITCHEN. Mr. Puck did not return Mr.
Musk’s calls or take steps to eliminate the affiliation confusion caused by Defendants’ adoption
and use of THE KITCHEN.
5.

The Kitchen previously filed an Opposition action with Trademark Trial and

Appeal Board of the United States Patent and Trademark Office to formally protest Wolfgang
Puck’s attempt to register THE KITCHEN formative marks. That filing did not deter Defendant,
however, as it continued to open and/or license third parties to operate additional restaurants
under THE KITCHEN mark. This continued and expanded infringement has necessitated this
action to enjoin Defendant’s further infringement of THE KITCHEN mark and to protect the
significant resources and good will that The Kitchen has invested in building THE KITCHEN
brand over the last 12 years.
The Parties
6.

The Kitchen is a Colorado limited liability company with its principal place of

business at 1980 8th Street, Boulder, CO 80302-5289.

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7.

Upon information and belief, Wolfgang Puck Licensing LLC is a Nevada limited

liability company with a principal place of business at 3500 Las Vegas Blvd. South, Suite G-1,
Las Vegas, Nevada 89109.
8.

Upon information and belief, Defendant advertises, sells, and/or distributes its

goods or services nationwide, including in Colorado, and their sales and distributions affect
commerce in the United States.
Jurisdiction and Venue
9.

This action arises under §§ 1119 and 1125(a) of the Lanham Act, 15 U.S.C.

§ 1051 et seq., and Colorado common law.
10.

The Court has subject matter jurisdiction over this action pursuant to 15 U.S.C.

§ 1121 and 28 U.S.C. §§ 1331, 1338, and 1367.
11.

This Court has personal jurisdiction over Defendant because Defendant is

engaged in the systematic and continuous conduct of business in Colorado. Upon information
and belief, among other contacts, Wolfgang Puck owns, operates, licenses, or otherwise controls
and benefits financially from the restaurant Wolfgang Puck Café, located at the Denver
International Airport at 8500 Pena Boulevard, Concourse B, G8, Denver, Colorado 80249.
12.

Moreover, Defendant, by its conduct set forth herein, has caused and continues to

cause injury to The Kitchen in this District.
13.

As such, Defendant’s contacts in the State of Colorado are such that Defendant

can reasonably anticipate that it would be subject to the jurisdiction of courts in Colorado.
14.

Venue is proper in this district under 28 U.S.C. § 1391(b) and (c) because

Defendant’s contacts with Colorado are sufficient to create personal jurisdiction over Defendant
in Colorado and a substantial part of the events giving rise to the claims in this action occurred
within this District.
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Background
The Origin and Growth of THE KITCHEN Restaurants
15.

Kimbal Musk and his co-founder Hugo Matheson opened their first restaurant in

Boulder, Colorado under THE KITCHEN mark in 2004.
16.

THE KITCHEN restaurant is a community-focused Modern American Bistro that

serves fresh, seasonal, high quality food sourced from American farmers. THE KITCHEN is
dedicated to environmentally-friendly practices, including composting, wind power, eco-friendly
packaging, and recycling.
17.

After its first THE KITCHEN restaurant proved a success, The Kitchen began

opening additional restaurants under THE KITCHEN mark and a family of KITCHEN-formative
marks, similarly dedicated to the community and providing “real food” to its guests. Examples
of The Kitchen’s use of THE KITCHEN mark at its restaurants are depicted below:

18.

In 2005, The Kitchen opened THE KITCHEN UPSTAIRS in Boulder, a cocktail

lounge and restaurant designed for sharing fresh food and good drinks with neighbors.
19.

On June 13, 2011, The Kitchen opened its first THE KITCHEN NEXT DOOR

restaurant in Boulder. THE KITCHEN NEXT DOOR is an Urban Casual American Eatery with
an energetic bar and an all-day menu of food sourced from American farmers. While maintaining
a commitment to fresh food and quality drinks, THE KITCHEN NEXT DOOR offers a more
casual atmosphere. THE KITCHEN NEXT DOOR also supports local communities through its

4

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50/4U, which donates 50% of sales from participating local non-profits and school groups back
to those organizations and groups.

20.

Since opening the original THE KITCHEN restaurant in Boulder, The Kitchen

has opened four additional THE KITCHEN restaurants in Denver and Fort Collins, Colorado,
Chicago, Illinois, and Memphis, Tennessee. The Kitchen has also opened two additional THE
KITCHEN NEXT DOOR restaurants in Denver and Glendale, Colorado.
21.

The Kitchen is planning to open additional restaurants in connection with THE

KITCHEN mark in 2017, and is actively searching for additional restaurant sites across the
country.
The Kitchen’s Commitment to Community and Providing Real Food to its Guests
22.

Consistent with The Kitchen’s mission of drawing community together through

fresh, healthy food, The Kitchen has supported school gardening projects in the Boulder
community since 2009. In 2011, Mr. Musk and Mr. Matheson expanded THE KITCHEN brand
further through creation of The Kitchen Community, Inc., a 501(c)(3) non-profit organization.
The Kitchen Community builds outdoor Learning Garden classrooms in underserved
communities throughout America under the brand THE KITCHEN COMMUNITY, which is
owned by The Kitchen. See www.thekitchencommunity.org.

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23.

In particular, The Kitchen Community works with communities and schools,

particularly in lower income areas, to teach children and families about growing their own food,
nutrition, healthy eating, lifestyle choices, and the environment.
24.

In December 2012, the City of Chicago with the support of Mayor Rahm Emanuel

contributed $1 million to The Kitchen Community, which donation blossomed into over 100
Learning Gardens in Chicago city schools, and garnered substantial local and national press.
25.

Through the commitment of its members and supporters, The Kitchen and the

non-profit entity, The Kitchen Community, have raised tens of millions of dollars and built over
300 Learning Gardens in schools and communities across America (including in California,
Colorado, Indiana, Pennsylvania, and Tennessee), impacting hundreds of thousands of students
and their families.
The Kitchen’s Senior Trademark Rights to THE KITCHEN
26.

Over the last twelve (12) years, since opening its first THE KITCHEN restaurant

in 2004, The Kitchen has invested considerable resources into developing its nationwide
common law rights in THE KITCHEN mark for restaurant services and championing its mission
to raise awareness about real food and provide real food to its guests.

6

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27.

THE KITCHEN branded restaurants have received numerous accolades from

well-known, national publications, including Food & Wine, Zagat’s, Gourmet, and the James
Beard Foundation, with recent rankings among OpenTable’s 100 best restaurants for foodies in
the nation, MICHELIN Recommended, Pub to Posh: The Chicago Traveler’s Top 10 Chicago
Riverside Restaurants, Travel + Leisure Magazine Best Restaurants, 303 Magazine ‘Best
Restaurant,’ and a ’38 Essential Restaurant’ by Eater Denver.
28.

THE KITCHEN mark is used and promoted together on the www.thekitchen.com

website, The Kitchen’s Instagram page (https://www.instagram.com/thekitchen/) and The
Kitchen’s Twitter account (https://twitter.com/thekitchen), as well as in fact sheets, press
statements, branding, and other advertising and promotional materials.
29.

The Kitchen is a nationally known brand. Kimbal Musk frequently speaks across

America on food issues and has keynoted major food conferences such as TEDx Memphis,
Milken Global in Los Angeles, New York Times ‘Food for Tomorrow,’ Chicago Ideas Week,
National Restaurant Association Annual Show in Chicago, Eat Denver, World Future Summit in
Washington DC, and many others. Further evidence of THE KITCHEN brand’s notoriety is
Fast Company naming The Kitchen one of the 10 most innovative food companies in the world.
30.

As a result of the success and notoriety of THE KITCHEN-branded restaurants,

and as a result of the Kitchen’s extensive promotion efforts, THE KITCHEN mark has become
widely and favorably known, nationwide, as identifying The Kitchen’s THE KITCHEN
restaurants. The public has come to associate THE KITCHEN mark exclusively with THE
KITCHEN restaurants, including their commitment to fresh, real food sourced from American
farmers.

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31.

In addition to its common law rights in THE KITCHEN mark, The Kitchen also

owns several federal United States trademark registrations that incorporate THE KITCHEN,
including THE KITCHEN UPSTAIRS (Reg. No. 4679061), THE KITCHEN NEXT DOOR
(Reg. No. 4165447), and THE KITCHEN COMMUNITY THROUGH FOOD (Reg. No.
5411498). True and correct copies of the registration certificates for these marks are attached in
Exhibit A.
Kimbal Musk and Wolfgang Puck Meet in 2012 to Discuss THE KITCHEN Restaurants
32.

In October 2012, Mr. Kimbal Musk and Mr. Wolfgang Puck scheduled a meeting

for lunch at Spago Beverly Hills to discuss their respective restaurant interests, experiences, and
other topics. Mr. Musk, excited to be meeting who he considered an industry legend, discussed
at length his THE KITCHEN-branded restaurants, including his plans for expanding both THE
KITCHEN restaurants and THE KITCHEN COMMUNITY Learning Gardens to communities
across the country. In response, Mr. Puck provided Mr. Musk with some of his sage advice
based on his own experiences in the restaurant business.
33.

After their lunch meeting, the two parted and Mr. Musk, pleased to have had the

opportunity to meet Mr. Puck, thought nothing further of it. Following is a photograph of Mr.
Musk and Mr. Puck taken during their meeting in October 2012.

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34
4.

In earrly Septembeer 2015, Mr. Musk learnned of shockiing news – W
Wolfgang Puuck

had decid
ded to adoptt and use “Th
he Kitchen” as the namee of his new full service rrestaurant
concept.
35.

Musk also learned
d that month
hs earlier, on April 2, 20115, Wolfganng Puck

Licensing
g LLC appliied to registeer THE KITC
CHEN BY W
WOLFGANG
G PUCK (SN
N 865854066)
and THE
E KITCHEN COUNTER
R BY WOLF
FGANG PUC
CK (SN 8658377) with tthe United S
States
Patent an
nd Trademarrk Office (“U
USPTO”).
36.

By ad
dding Wolfgaang Puck’s personal
p
nam
me to Plaintifff’s THE KIITCHEN maark,

Defendan
nt misapprop
priated THE
E KITCHEN mark in a m
manner that ffalsely creditts Wolfgang
Puck with the originaation of and goodwill associated witth THE KITC
CHEN brandd.
37.

Defen
ndant’s new restaurant
r
co
oncept is com
mmonly refeerred to as “T
The Kitchenn” –

the exactt same mark that The Kittchen has beeen using andd developingg for twelve years, and tthe
subject of
o Mr. Puck’ss and Mr. Musk’s
M
friend
dly discussio n in 2012.
38.

Below
w (and attach
hed as Exhib
bit B) are exaamples of W
Wolfgang Pucck’s use of ““The

Kitchen”” mark, show
wing a clear intent
i
that Defendant’s
D
rrestaurants bbe recognizedd and referreed to as
simply “T
The Kitchen
n.” Defendan
nt’s addition
n of “By Woolfgang Puckk” in smallerr, less noticeaable
text doess little to disttract customeers from the dominant c ommercial iimpression oof the mark—
—THE
KITCHE
EN—which is
i identical to
o The Kitcheen’s brand, aas shown below.

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39.

Third parties refer to Wolfgang Puck’s THE KITCHEN-branded restaurants as

“The Kitchen,” including in articles by Michigan Live (“The Kitchen replaced Bentham’s
Riverfront Restaurant this year” and other references), the Grand Rapids Business Journal
(“Austin Gresham . . . . will oversee culinary development at both The Kitchen and The Kitchen
Counter.”), Greenville Online (“The Kitchen’s menu will follow suite with the things for which
Puck is known …”), and WTOP (“The redevelopment remains ongoing at both airports with a
new restaurant by Wolfgang Puck called ‘The Kitchen’ coming to Dulles later this year…”).
40.

Defendant Wolfgang Puck has expanded its competing THE KITCHEN

restaurant into additional locations across the country, including the Amway Plaza Hotel in
Grand Rapids, Michigan, Dulles International Airport, Reagan National Airport, Los Angeles
International Airport, and has announced additional expansion plans such GreenvilleSpartanburg International Airport, scheduled to open in December, 2016.
41.

Defendant’s continued expansion of THE KITCHEN restaurants, including into

highly trafficked airports through which customers from across the country travel, has created
actual consumer confusion. Individuals familiar with Plaintiff’s THE KITCHEN restaurants
have asked about The Kitchen’s relationship with Wolfgang Puck and its new “The Kitchen”
restaurants, some having mistakenly believed that The Kitchen has licensed rights to or
otherwise associated with Wolfgang Puck.
The Kitchen’s Efforts to Avoid Confusion
42.

Though surprised and dismayed by Wolfgang Puck’s decision to adopt the same

mark that he had personally discussed with Mr. Puck only a few years prior, Mr. Musk made
several attempts to contact Mr. Puck personally in September 2015, hoping for an amicable
resolution.

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43.

Mr. Puck never returned any of Mr. Musk’s calls. After Mr. Musk’s inquiries

were ignored, The Kitchen, through counsel, raised the issue of actual and likelihood of
confusion with Wolfgang Puck’s counsel, suggesting that even a minor change to the mark, such
as “Wolfgang Puck’s Kitchen” would be comparatively less conflicting.
44.

Defendant refused to consider any changes to its infringing use of “The Kitchen.”

Indeed, Defendant claimed that Mr. Puck had no recollection of a meeting with Mr. Musk in
2012 and refused to entertain Plaintiff’s efforts to discuss reasonable changes or modifications to
its use or expansion of THE KITCHEN mark.
45.

Despite learning in 2012 about The Kitchen’s longstanding use and investment in

THE KITCHEN restaurants and related activities, and despite efforts by The Kitchen to discuss
avenues to avoid a likelihood of confusion by modifying Defendant’s use of THE KITCHEN
mark, Wolfgang Puck refused to make any changes.
46.

Wolfgang Puck is no stranger to trademark rights. It owns dozens of trademark

registrations and aggressively enforces them, including by bringing oppositions against
applications to register VIENNA BY WOLFGANG, THE ORIGINAL PIZZA PUCKS, and
PUCK HOTEL, among others.
47.

Under the circumstances – where Wolfgang Puck was on notice of The Kitchen’s

prior use of THE KITCHEN brand and could have chosen any combination of words to name its
new restaurant concept – Wolfgang Puck’s actions are willful and bound to harm both consumers
and The Kitchen.
48.

The intentional and willful nature of Defendant’s unlawful acts renders this an

exceptional case pursuant to 15 U.S.C. § 1117.

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COUNT I
Unfair Competition Under The Lanham Act
15 U.S.C. § 1125(a)
49.

The Kitchen realleges and incorporates by reference the allegations contained in

each of the paragraphs above.
50.

By virtue of its nationwide, continuous use of THE KITCHEN mark, The Kitchen

has obtained senior, common law rights to THE KITCHEN mark throughout the United States
well prior to Defendant’s first use of THE KITCHEN mark.
51.

THE KITCHEN mark is inherently distinctive or has acquired distinctiveness as a

result of Plaintiff’s continuous and extensive advertising, marketing, and commercial success of
THE KITCHEN restaurants over the last 12 years.
52.

Defendant has competed unfairly through its unlawful acts, including, without

limitation, use of a false designation of origin which is likely to cause confusion, mistake, or
deception as to origin, sponsorship, or approval, in violation of Section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a).
53.

Defendant’s conduct constitutes an attempt to trade on the goodwill that The

Kitchen has developed in THE KITCHEN mark.
54.

By its conduct, Defendant has caused The Kitchen irreparable harm, damage, and

injury, and will continue to do so unless restrained and enjoined by this Court from further
infringing THE KITCHEN mark.
55.

The Kitchen has no adequate remedy at law.
COUNT II
Refusal of Applications Under Federal Law
15 U.S.C. § 1119

56.

The Kitchen realleges and incorporates by reference the allegations contained in

each of the paragraphs above.
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57.

The Kitchen possesses senior, nationwide, common law rights to its THE

KITCHEN mark for restaurant services.
58.

Because confusion is likely between The Kitchen’s senior THE KITCHEN mark

and Defendant’s junior mark THE KITCHEN BY WOLFGANG PUCK (SN 86585406), with
respect to use and registration in connection with identical restaurant services, the marks set forth
in Defendant’s Application should be refused registration in International Class 43, pursuant to
15 U.S.C. § 1052(d).
59.

Pursuant to 15 U.S.C. § 1119, the Court should direct the USPTO to refuse

registration in International Class 43 to the marks set forth in Defendant’s Application, or else to
cancel any such registration that may issue.
COUNT III
Trademark Infringement and Unfair Competition
Colorado Common Law
60.

The Kitchen realleges and incorporates by reference the allegations contained in

each of the paragraphs above.
61.

Defendant’s actions described herein constitute unfair competition and trademark

infringement in violation of the common law of the State of Colorado
62.

Defendant’s actions has been willful and deliberate.

63.

Defendant’s actions is likely to cause confusion, mistake, or deception as to the

source or origin of Defendant’s restaurant services, or the affiliation, sponsorship, or other
relationship between the parties in violation of the common law of the State of Colorado.
64.

Defendant’s conduct misappropriates The Kitchen’s valuable intellectual property

rights and trades on the goodwill symbolized by the distinctive and well-known THE KITCHEN
mark, and is thereby likely to cause confusion or deception.

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Relief Sought
WHEREFORE, The Kitchen requests that this Court:
A.

Grant preliminary and permanent injunctive relief enjoining Defendant and its

principals, agents, servants, employees, successors, and assigns, and all those in privity, concert,
or active participation with it, from:
i.

imitating, copying, duplicating, manufacturing, producing, circulating, or

otherwise making any use of THE KITCHEN mark or any mark confusingly similar to THE
KITCHEN mark, including but not limited to THE KITCHEN by Wolfgang Puck;
ii.

using any unauthorized copy or colorable imitation of THE KITCHEN

marks, or false designation of origin or description, in such fashion as is likely to relate or
connect Defendant with The Kitchen or cause confusion, including but not limited to THE
KITCHEN by Wolfgang Puck;
iii.

using any false designation of origin or false description which can or is

likely to lead the trade or public, or individual members thereof, to believe mistakenly that any
service advertised, promoted, offered, or sold by Defendant is sponsored, endorsed, connected
with, approved, or authorized by The Kitchen;
iv.

causing likelihood of confusion or injury to The Kitchen’s business

reputation and to the distinctiveness of THE KITCHEN mark by unauthorized use of identical or
confusingly similar marks;
v.

engaging in any other activity constituting unfair competition or

infringement of THE KITCHEN mark or The Kitchen’s rights in, or to use, or to exploit the
same; and
vi.

assisting, aiding, or abetting another person or business entity in engaging

or performing any of the activities enumerated in paragraphs (i)-(v) above.
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B.

Find that Defendant is liable for the causes of action asserted in this Complaint.

C.

Direct the USPTO to refuse registration in Class 43 to the marks set forth in

Defendant’s Application, pursuant to 15 U.S.C. § 1119, or else to cancel any such registration
that may issue.
D.

Grant an order requiring Defendant and its principals, agents, servants,

employees, successors, and assigns of and all those in privity or concert with Defendant who
receive actual notice of said order to deliver up, or at The Kitchen’s election certify the
destruction of, all signs, articles, promotional, advertising, and any other printed materials of any
kind bearing THE KITCHEN mark, and any mark confusingly similar to THE KITCHEN mark.
E.

Declare this case exceptional under 15 U.S.C. § 1117 and award The Kitchen its

reasonable attorneys’ fees and costs.
F.

Grant to The Kitchen such other and further relief as the Court may deem just,

proper, and equitable under the circumstances.
Jury Demand
The Kitchen demands a trial by jury on all issues so triable.

Respectfully submitted this 18th day of November, 2016.
/s/ Timothy P. Getzoff ________________________
Timothy P. Getzoff,
Nadya C. Davis
HOLLAND & HART LLP
1800 Broadway, Suite 300
Boulder, CO 80302
Telephone: (303) 473-2700
tgetzoff@hollandhart.com
ncdavis@hollandhart.com
ATTORNEYS FOR PLAINTIFF
THE KITCHEN CAFÉ LLC
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Plaintiff’s Address:
1980 8th Street
Boulder, CO 80302-5289

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