Case 2:17-cv-00195-jmc Document 1 Filed 10/11/17 Page 1 of 8 UNITED STATES DISTRICT COURT DISTRICT OF VERMONT LONG TRAIL BREWING COMPANY, Plaintiff, v. BORN INTO IT, INC. d/b/a Chowdaheadz , Defendant. ) ) ) ) ) ) ) ) Civil Action No. 2011 OCT II PM 3: 09 '2. ·. \ ( -C. \1 - ) 9 S" JURY TRIAL DEMANDED COMPLAINT Plaintiff Long Trail Brewing Company ("Long Trail"), for its Complaint against the Defendant, Born Into It, Inc. d/b/a Chowdaheadz ("Chowdaheadz"), alleges and states: PARTIES AND JURISDICTION 1. Plaintiff, Long Trail Brewing Company is a corporation duly formed and existing under the laws of the State of Vermont and having its principal place of business in Bridgewater Comers, Vermont. 2. Upon information and belief, Defendant, Born Into It, Inc. is a corporation formed and existing under the laws of the State of Massachusetts and having its principal place of business at 35B Industrial Parkway, Woburn, Massachusetts. 3. Upon information and belief, Born Into It, Inc. does business under the name Chowdaheadz. 4. This Court has jurisdiction ofthe subject matter pursuant to 15 U.S.C. § 1121; 28 U.S.C. §§ 1331 and 1338(a)and(b),andsupplementaljurisdictionpursuantto28U.S.C. § 1367, in that it arises under the trademark laws ofthe United States and the law of unfair competition and is brought pursuant to Sections 32(1) and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1) 3045126.1 Case 2:17-cv-00195-jmc Document 1 Filed 10/11/17 Page 2 of 8 and 1125(a), and the common law of trademark infringement, unfair competition and deceptive trade practices. 5. This Court has personal jurisdiction over Chowdaheadz because it conducts business within this judicial district, including the advertising and sale of its products through the Internet to Vermont residents. 6. Venue is proper in this District pursuant to 28 U.S.C. § 1391 because Chowdaheadz resides in this district, transacts business in this district, and a substantial part of the acts giving rise to the claim occurred in this district. Venue also is proper because Long Trail has suffered harm in this district. ALLEGATIONS COMMON TO ALL COUNTS 7. Long Trail is, and it has been since it was founded in 1989, engaged in the business of selling a variety of high-quality products including beer, apparel, food and other products. 8. Long Trail is, and it has been since the 1990's, engaged in the business of selling apparel and other products under the trademark Take a Hike. Since late last century, Long Trail has continuously used the trademark Take a Hike in connection with its apparel, beer and other products. 9. Long Trail has expended and continues to expend a substantial amount of resources using, advancing, and promoting its trademark Take a Hike and the products and services with which it uses the trademark. 10. Long Trail is engaged in a variety of socially and environmentally conscious efforts in the Vermont community and has used its trademark "Take a Hike" in support of those efforts. 3045126.1 2 Case 2:17-cv-00195-jmc Document 1 Filed 10/11/17 Page 3 of 8 11. As a result of the aforementioned activities, the trademark has achieved a high degree of recognition among consumers, especially in Vermont. 12. As a result of Long Trail's efforts and the favorable reputation garnered by Long Trail's products, the trademark Take a Hike has attained substantial goodwill in the marketplace and has become a valuable trade symbol of Long Trail itself, as well as its products and services. 13. Long Trail has used the trademark Take a Hike in interstate commerce to identify and distinguish its products for many years prior to Chowdaheadz's acts complained of in this action. 14. Long Trail was awarded and is the owner ofU.S. Federal Trademark Registration No. 3637458 for the trademark Take a Hike! covering apparel, including shirts and t-shirts. 15. Long Trail was awarded and is the owner of U.S. Federal Trademark Registration No. 3440560 for the trademark Take a Hike! covering beer and ale. 16. Long Trail was awarded and is the owner ofU.S. Federal Trademark and Service Mark Registration No. 5151101 for the trademark Take a Hike! covering a variety of goods including key fobs, key rings and key chains, novelty license plates, bottle opener-key rings, stickers, bumper stickers, flasks, insulating sleeve holders for bottles and beverage cans, and services including restaurant and bar services. These varied uses of the Long Trail brand "Take a Hike" work together to create a valuable brand image. 17. Long Trail's registrations for the trademark Take a Hike! are valid and subsisting. 18. Registrations Nos. 3637458 and 3440560 are incontestable pursuant to 15 U.S.C. 19. As provided by 15 U.S.C. § 1115(b), Registrations Nos. 3637458 and 3440560 § 1065. are conclusive evidence of the validity of the registered trademark, of Long Trail's ownership of 3045126.1 3 Case 2:17-cv-00195-jmc Document 1 Filed 10/11/17 Page 4 of 8 the trademark as well as Long Trail's exclusive rights to use the trademark in commerce in connection with all of the goods set forth in the registrations, including shirts and t-shirts. 20. By the acts complained of in this action, Chowdaheadz has infringed Long Trail's trademark Take a Hike, engaged in unfair and deceptive practices, and traded on Long Trail's goodwill and reputation, to the irreparable injury and damage of Long Trail. 21. Upon information and belief, Chowdaheadz is engaged in the business of selling apparel and related products. 22. Upon information and belief, Chowdaheadz is marketing, or has an intent to market, beer. 23. Long after Long Trail first used the trademark Take a Hike in interstate commerce to identify and distinguish its products, Chowdaheadz adopted the phrase "Take a Hike" to identify its own apparel. 24. Chowdaheadz sells, offers for sale, distributes, advertises and promotes apparel products in commerce using "Take a Hike". All of the aforesaid conduct ofChowdaheadz has been undertaken without the consent of Long Trail. 25. Chowdaheadz thereby uses in commerce a reproduction, counterfeit, copy, or colorable imitation of Long Trail's registered trademark without the consent of Long Trail. 26. Chowdaheadz's use of"Take a Hike" in connection with its apparel products is likely to cause confusion and mistake and to deceive consumers as to the affiliation, connection, or association of Chowdaheadz with Long Trail, and as to the origin, sponsorship and approval of Chowdaheadz's products. 27. Upon information and belief, adoption by Chowdaheadz of"Take a Hike" was done with at least constructive knowledge of Long Trail's prior adoption and use of the 3045126.1 4 Case 2:17-cv-00195-jmc Document 1 Filed 10/11/17 Page 5 of 8 trademark "Take a Hike". Chowdaheadz' s use of "Take a Hike" was done in disregard of Long Trail's trademark rights. 28. By reason ofChowdaheadz's acts herein alleged, Chowdaheadz has been unjustly enriched, and Long Trail is entitled to an accounting for all ofChowdaheadz's profits derived from its unlawful and infringing activities. 29. By reason ofChowdaheadz's acts herein alleged, Long Trail has suffered and is likely to suffer substantial actual damages for injury to its goodwill and reputation, and injury to its relationships with its customers. 30. Chowdaheadz's unlawful acts have caused and, unless enjoined by this Court, will continue to cause irreparable harm, damage loss and injury to Long Trail for which it has no adequate remedy at law. COUNT I (Infringement of Federally Registered Trademarks) 31. Long Trail realleges and incorporates herein by reference paragraphs 1 through 30 ofthis Complaint. 32. Chowdaheadz's use of"Take a Hike" as described above is likely to cause confusion, or to cause mistake or to deceive and, therefore, constitutes infringement of Long Trail's federally registered trademarks in violation of 15 U.S.C. § 1114(1). 33. Chowdaheadz's actions are willful within the meaning of 15 U.S.C. § 1117. 34. By reason ofChowdaheadz's acts herein alleged, Long Trail is entitled to recover Chowdaheadz's profits or such sum as the Court shall find to be just, damages sustained by Long Trail, and the costs ofthis action, as well as a sum in excess of Long Trail's actual damages not exceeding three times such amount, and attorneys' fees pursuant to 15 U.S.C. § 1117. 3045126.1 5 Case 2:17-cv-00195-jmc Document 1 Filed 10/11/17 Page 6 of 8 35. Long Trail has been and will continue to be damaged by Chowdaheadz's wrongful acts unless the Court enjoins such wrongful conduct of Chowdaheadz. Long Trail has no adequate remedy at law for Chowdaheadz's continuing violation of its rights, whereby Long Trail is entitled to injunctive relief pursuant to 15 U.S.C. § 1116. COUNT II (False Designation of Origin) 36. Long Trail realleges and incorporates herein by reference paragraphs 1 through 35 of this Complaint. 37. The conduct described above including Chowdaheadz's use of"Take a Hike" in commerce constitutes a false designation of origin, false description and false representation that Chowdaheadz or its apparel products are sponsored by, authorized by, or affiliated with Long Trail. Chowdaheadz's acts are calculated and likely to cause confusion, or mistake and/or deception as to the true origin, source, sponsorship or affiliation of Chowdaheadz' s products, to the detriment of Long Trail, and in violation of 15 U.S.C. § 1125(a). 38. By reason ofChowdaheadz's acts herein alleged, Long Trail is entitled to recover Chowdaheadz' s profits or such sum as the Court shall find to be just, damages sustained by Long Trail, and the costs of this action, as well as a sum in excess of Long Trail's actual damages not exceeding three times such amount, and attorneys' fees pursuant to 15 U.S.C. § 1117, and injunctive relief pursuant to 15 U.S.C. § 1116. COUNT III (Common Law Unfair Competition) 39. Long Trail realleges and incorporates herein by reference paragraphs 1 through 38.ofthis Complaint. 3045126.1 6 Case 2:17-cv-00195-jmc Document 1 Filed 10/11/17 Page 7 of 8 40. Chowdaheadz has sold, promoted and offered for sale its products using "Take a Hike" in violation of and with knowledge of Long Trail's prior rights to the trademark "Take a Hike", and is unfairly trading upon Long Trail's goodwill and reputation, and creating the false impression that Chowdaheadz's products are associated in some way with Long Trail. 41. Chowdaheadz's acts constitute unfair competition in violation of the common law ofthe State ofVermont. COUNT IV (Common Law Trademark Infringement) 42. Long Trail realleges and incorporates herein by reference paragraphs 1 through 41 of this Complaint. 43. Chowdaheadz's use of"Take a Hike" in connection with its apparel products constitutes infringement of Long Trail's Vermont common law trademark rights in the trademark "Take a Hike". PRAYER FOR RELIEF WHEREFORE, Long Trail requests that it be granted judgment in its favor on all its claims, and be awarded the following relief: 1. An injunction enjoining and restraining Chowdaheadz, its officers, agents, servants, employees, and all other persons in active concert or participation with them, from using "Take a Hike" in connection with the sale or distribution of apparel or related products, and from engaging in any other acts or conduct which cause or are likely to cause confusion, mistake or deception as to the source, origin, affiliation, connection or association of Chowdaheadz's products; 2. 3045126.1 An accounting for Chowdaheadz's profits from sale of its "Take a Hike" products; 7 Case 2:17-cv-00195-jmc Document 1 Filed 10/11/17 Page 8 of 8 3. An award of actual damages suffered by Long Trail on account ofChowdaheadz's trademark infringement, unfair competition and false designation of origin, in an amount to be proven at trial, which sum should be increased in an amount not exceeding three times Long Trail's actual damages; 4. An award of pre-judgment interest of the foregoing sums; 5. An award of costs of this action and attorneys' fees pursuant to 15 U.S.C. § 1117; 6. An order pursuant to 15 U.S.C. § 1118 for the destruction of all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of Chowdaheadz bearing the infringing trademark "Take a Hike". 7. Such other and further relief as may be just and proper. JURY DEMAND Long Trail demands trial by jury on all issues triable by jury in this action. Dated at Burlington, Vermont this 11th day of October, 2017. Respectfully submitted, COMPANY By: Kevin M. enry Primmer Piper Eggleston & Cramer PC 30 Main Street, Suite 500 P.O. Box 1489 Burlington, Vermont 05402-1489 (802) 864-0880 khenry@primmer.com Of Counsel: Joseph D. Lewis Barnes & Thornburg LLP 1717 Pennsylvania Avenue, NW, Suite 500 Washington, DC 20006 jdlewis@btlaw.com (202) 289-1313 3045126.1 8 Case 2:17-cv-00195-jmc Document 1-1 Filed 10/11/17 Page 1 of 1 CIVIL COVER SHEET JS 44 (Rev. 06/ I 7) 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 reqmred 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) I. (a) PLAINTIFFS DEFENDANTS LONG TRAIL BREWING COMPANY BORN INTO IT, INC. Windsor (b) County of Residence of First Listed Plaintiff County of Residence of First Listed Defendant ----~--------------- (EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY) NOTE: {C) Attorneys (If Known) Attorneys (Firm Name, Address, and Telephone Number) II. BASIS OF JURISDICTION (Place an "X"inOneBoxOnlyJ 0 I 0 2 U.S. Government Plaintiff ~ 3 U.S. Government Defendant 0 4 0 0 0 0 0 0 0 0 0 0 0 0 II 0 Insurance 120 Marine 130 Miller Act 140 Negotiable Instrument !50 Recovery of Overpayment & Enforcement of Judgment !51 Medicare Act !52 Recovery of Defaulted Student Loans (Excludes Veterans) !53 Recovery of Overpayment of Veteran's Benefits 160 Stockholders' Suits 190 Other Contract 195 Contract Product Liability I% Franchise 0 0 0 0 0 0 0 0 0 0 . " and One Box for Defendant) PTF DEF Incorporated or Principal Place lO 4 0 4 of Business In llris State DEF 0 I 0 2 0 2 Incorporated and Principal Place of Business In Another State 0 5 ~5 0 3 0 3 Foreign Nation 0 6 0 6 Click ll_ere for: N_i!ture .•.: Ar?i 0 625 Drug Related Seizure 0 422 Appeal 28 USC !58 0 423 Withdrawal ofProperty 21 USC 881 0 690 Other 28 M New Drug Application 0 0 0 0 0 0 840 0 710 Fair Labor Standards 0 0 0 0 0 Act 0 720 Labor/Management Relations 0 740 Railway Labor Act 0 751 Family and Medical 0 790 Other Labor Litigation 0 791 Employee Retirement Habeas Corpus: 0 375 False Claims Act 0 376 Qui Tam (31 USC usc !57 0 820 .v,,,..,. 0 830 Patent 0 835 Patent - Abbreviated 0 463 Alien Detainee 0 510 Motions to Vacate 861 HIA (!_395ft)_ 862 Black Lung (923) 863 DIWC/DIWW (405(g)) 864 SSID Title XVI 865 RSI (405(g)) 0 870 Taxes (U.S. Plaintiff Income Security Act or Defendant) 0 871 IRS-Third Party 26 usc 7609 Sentence 0 0 0 0 0 0 0 0 0 0 0 530 General 0 535 Death Penalty Employment ·suit CodeD . ;ff{ff{ff{'' Leave Act 0 446 Amer. w/Disabilities - 0 0 Other 0 448 Education 0 0 V, ORIGIN Citizen of Another State PERSONAL INJURY 0 365 Personal Injury Product Liability 0 367 Health Care/ Pharmaceutical Personal Injury Product Liability 0 368 Asbestos Personal Injury Product Liability PERSONAL PROPERTY 0 370 Other Fraud 0 3 71 Truth in Lending 0 380 Other Personal Property Damage 0 385 Property Damage Product Liability PERSONAL INJURY 310 Airplane 315 Airplane Product Liability 320 Assault, Libel & Slander 330 Federal Employers' Liability 340 Marine 34 5 Marine Product Liability 350 Motor Vehicle 355 Motor Vehicle Product Liability 360 Other Personal Injury 362 Personal Injury Medical'· :rt: ;;;§£ £