Case: 1:17-cv-09154 Document #: 31 Filed: 03/09/18 Page 1 of 26 PageID #:165

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
BILLY GOAT IP LLC,
Plaintiff,

Case No. 1:17-CV-09154

v.

Judge Robert M. Dow, Jr.

THE BILLY GOAT CHIP COMPANY LLC,

Magistrate Judge M. David Weisman

Defendant.

THE BILLY GOAT CHIP COMPANY LLC,
Counter-Plaintiff,
v.
BILLY GOAT IP LLC,
Counter-Defendant.

DEFENDANT/COUNTER-PLAINTIFF THE BILLY GOAT CHIP COMPANY LLC’S
FIRST AMENDED ANSWER AND COUNTERCLAIM
Defendant/Counter-Plaintiff The Billy Goat Chip Company, LLC (“Defendant” or “Billy
Goat Chip Co.”), for its First Amended Answer (“Answer”) to Plaintiff’s Complaint for
Injunctive Relief alleges and states as follows:
GENERAL DENIAL
Defendant generally denies all allegations in the Complaint that are not expressly and
specifically admitted below. Defendant further denies any and all allegations that may be
implied or inferred from the headings, pictures, and/or images used in the Complaint.

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INTRODUCTION
1.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.

As to Plaintiff’s

allegations generally of fame or distinctiveness of its marks, Defendant notes that numerous
other businesses (including food service businesses) use “Billy Goat” in their name. See e.g.,
Billy Goat Coffee Café (TM Reg. 3,380,184, 3,380,185); Beer Like a Billy Goat
(http://www.zerogravitybeer.com/beer-like-a-billy-goat/), Billy Goat Hill Estate for wine (TM

Reg. 3,195,405), and many others.
2.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
3.

Defendant admits that Plaintiff’s action is seeking injunctive relief, but

Defendant otherwise denies all remaining allegations in this paragraph.
PARTIES
4.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
5.

Admitted.
JURISDICTION AND VENUE

6.

Defendant admits that the Complaint alleges claims that purport to arise under

the Lanham Act, 15 U.S.C. §§ 1114 and 1125. Defendant further admits that the Court has
original subject matter jurisdiction over such claims and admits that the Court has supplemental
jurisdiction over the state law claims alleged in the Complaint. Defendant denies all remaining
allegations in this paragraph.

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7.

Defendant admits that it sells its potato chip products, as well as other products,

throughout the United States, including Illinois, such that the Court may exercise personal
jurisdiction over the Defendant. Defendant denies all remaining allegations in this paragraph.
8.

Defendant admits that venue is proper in this District. Defendant denies all

remaining allegations in this paragraph.
FACTUAL BACKGROUND
I.

History of the Iconic Billy Goat Tavern & Plaintiff’s Trademark Rights.
9.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
10.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
11.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
12.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
13.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
14.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
15.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
16.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.

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17.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
18.

Defendant admits that Exhibit 1 attached to the Complaint appears to be a copy

of Trademark Registration No. 1,197,507 for the service mark BILLY GOAT for Tavern and
Restaurant Services. Defendant denies all remaining allegations in this paragraph, including the
characterizations of the trademark registration in this paragraph or any inferences of its validity.
Defendant refers the Court to Trademark Registration No. 1,197,507 for a complete and accurate
statement of its contents.
19.

Defendant admits that Exhibit 2 attached to the Complaint appears to be a

trademark assignment pertaining to Trademark Registration No. 1,197,507. Defendant denies all
remaining allegations in this paragraph, including the characterizations of the assignment in this
paragraph or any inferences of its validity.

Defendant refers the Court to the Trademark

Assignment for a complete and accurate statement of its contents.
20.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
21.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
II.

Defendant’s History and its Infringing Conduct.
22.

Admitted.

23.

Defendant admits that it is the owner of the federally registered trademark THE

BILLY GOAT CHIP COMPANY (Registration No. 3,766,997), which claims a date of first use
of February 15, 2009. Defendant denies all remaining allegations in this paragraph and all

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characterizations of Defendant’s trademark.

Defendant refers the Court to Trademark

Registration No. 3,766,997 for a complete and accurate statement of its contents.
24.

Denied.

25.

Defendant admits that it sells its potato chip products, as well as other products,

in over 370 retail locations throughout the United States. Defendant further admits that it sells
its potato chip products at various locations in the Chicago, Illinois area. See Declaration of
Brian Roth attached hereto as Exhibit A and incorporated herein by reference. Defendant denies
its sales in Chicago are “recent” and further denies all remaining allegations in this paragraph.
26.

Defendant admits that its potato chip products are sold at a retail location at 543

N. Wabash Ave., Chicago, IL 60611.

Defendant denies all remaining allegations in this

paragraph.
27.

Defendant admits that its potato chip products are sold at a retail location at 475

H St. NW, Washington, DC 20001.

Defendant denies all remaining allegations in this

paragraph.
28.

Admitted.

29.

Defendant admits that it never sought Plaintiff’s consent or permission to use the

trademark THE BILLY GOAT CHIP COMPANY as part of Defendant’s business. Defendant
denies the implication and/or characterization that such consent, permission, or approval was
necessary, and otherwise denies all remaining allegations in this paragraph.
III.

Continued Increase in Actual Confusion and Plaintiff’s Unsuccessful Efforts to
Stop Defendant’s Infringing Conduct.
30.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.

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31.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
32.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
33.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
34.

Defendant admits that the following interactions occurred between Defendant

and Plaintiff:
a. In September 2014, Defendant received a letter from Niro, Haller & Niro
purporting to represent Plaintiff and claiming to have sent an earlier letter
in August 2014.
b. Defendant responded requesting a copy of the missing August 2014 letter
which the Niro firm forwarded in October 2014.
c. In November 2014, Defendant responded through counsel pointing out
that (i) there is no possibility of confusion between Defendant’s business
and Plaintiff’s, (ii) Defendant’s business, as numerous publications point
out, is named after its hometown roots in the Billy Goat Hill area of St.
Louis, and (iii) Defendant’s logo and marketing in fact emphasizes “St.
Louis, Missouri” in its design and marketing. A copy of such
communication is attached hereto as Exhibit B.
d. Defendant further pointed out that additionally, then as now, numerous
other businesses were and are using “Billy Goat;” including numerous

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other food service establishments like the Billy Goat Coffee Café, Billy
Goat Hill Estate, and others.
e. In March, 2015 Plaintiff’s new law firm wrote to Defendant saying very
little other than that it was “disappointed” but failed to address any points
raised in the November 2014 letter. A copy of such communication is
attached hereto as Exhibit C. In fact, it was unclear if Plaintiff’s counsel
had ever received Defendant’s responsive letter so Defendant’s counsel
forwarded it the same day. A copy of such communication is attached
hereto as Exhibit D. Plaintiff again wrote back requesting a “middle
ground.” A copy of such communication is attached hereto as Exhibit E.
f. In July, 2015, Defendant again wrote to Plaintiff proposing a resolution:
Defendant would continue to, in marketing and branding its potato chips
within the state of Illinois, designate that the origin of the goods is from
“Saint Louis, Missouri” for a period of 3 years.

A copy of such

communication is attached hereto as Exhibit F. Yet despite all Plaintiff’s
entreaties for a “middle ground,” and its false claims in this lawsuit (see
Complaint, ¶34), it never responded to this proposal.
g. Plaintiff switched law firms again, and on September 18, 2015 counsel for
Billy Goat Chip Co. forwarded all correspondence between the parties to
Plaintiff’s new attorneys at the Thompson Coburn firm. Still, there was no
response to Defendant’s proposal until this lawsuit was filed over two
years later.
Defendant denies all remaining allegations of paragraph 34 of the Complaint.

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35.

Denied.

36.

Denied.

37.

Denied.

38.

Denied.

39.

Denied.
COUNT I
TRADEMARK INFRINGEMENT – 15 U.S.C. § 1114

40.

Defendant realleges and incorporates by reference its answers and objections to

all previous paragraphs.
41.

The allegations in this paragraph constitute statements of law to which no

response is required. To the extent a response is required, Defendant admits that this paragraph
generally and selectively references portions of the Lanham Act. Defendant asserts that the
statutory language speaks for itself and denies all remaining allegations in this paragraph,
including all characterizations of the referenced statute.
42.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
43.

Denied.

44.

Denied.

45.

Denied.

46.

Denied.
COUNT II
UNFAIR COMPETITION - 15 U.S.C. § 1125

47.

Defendant realleges and incorporates by reference its answers and objections to

all previous paragraphs.

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48.

The allegations in this paragraph constitute statements of law to which no

response is required. To the extent a response is required, Defendant admits that this paragraph
generally and selectively references portions of the Lanham Act. Defendant asserts that the
statutory language speaks for itself and denies all remaining allegations in this paragraph,
including all characterizations of the referenced statute.
49.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
50.

Denied.

51.

Denied.

52.

Denied.

53.

Denied.

COUNT III
ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICE ACT - 815 ILCS 510
54.

Defendant realleges and incorporates by reference its answers and objections to

all previous paragraphs.
55.

The allegations in this paragraph constitute statements of law to which no

response is required. To the extent a response is required, Defendant admits that this paragraph
selectively quotes a portion of the referenced statute.

Defendant asserts that the statutory

language speaks for itself and denies all remaining allegations in this paragraph, including all
characterizations of the referenced statute.
56.

Denied.

57.

Denied.

58.

Denied.

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COUNT IV
ILLINOIS CONSUMER FRAUD AND DECEPTIVE BUSINESS PRACTICES ACT
59.

Defendant realleges and incorporates by reference its answers and objections to

all previous paragraphs.
60.

The allegations in this paragraph constitute statements of law to which no

response is required. To the extent a response is required, Defendant admits that this paragraph
selectively quotes a portion of the referenced statute.

Defendant asserts that the statutory

language speaks for itself and denies all remaining allegations in this paragraph, including all
characterizations of the referenced statute.
61.

Denied.

62.

Denied.

63.

Denied.
COUNT V
COMMON LAW TRADEMARK INFRINGEMENT

64.

Defendant realleges and incorporates by reference its answers and objections to

all previous paragraphs.
65.

Defendant lacks knowledge or information sufficient to form a belief about the

truth of the allegations in this paragraph and on that basis denies them.
66.

Denied.

67.

Denied.

68.

Denied.
PRAYER FOR RELIEF

Defendant denies that Plaintiff is entitled to any relief, either as prayed for in the
Complaint or otherwise. Defendant also requests judgment that this case is exceptional and

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requests an award of its costs and attorneys’ fees as the prevailing party pursuant to 15 U.S.C. §
1117(a).

AFFIRMATIVE DEFENSES
In addition or in conjunction with the defenses set forth in the foregoing Answers,
Defendant Billy Goat Chip Company, LLC asserts the following as separate and distinct
affirmative defenses to the Complaint:
FIRST AFFIRMATIVE DEFENSE
(Failure to State a Claim)
The Complaint may be barred in whole or in part for failure to state a claim against
Defendant upon which relief may be granted.
SECOND AFFIRMATIVE DEFENSE
(Fair Use)
The Complaint may be barred in whole or in part by the doctrines of descriptive fair use
and/or nominative fair use.
THIRD AFFIRMATIVE DEFENSE
(Laches)
The Complaint may be barred in whole or in part by the equitable defense of laches.
FOURTH AFFIRMATIVE DEFENSE
(Estoppel)
The Complaint may be barred in whole or in part by the equitable defense of estoppel.
FIFTH AFFIRMATIVE DEFENSE
(Waiver)
The Complaint may be barred in whole or in part by the equitable defense of waiver.

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SIXTH AFFIRMATIVE DEFENSE
(Unclean Hands)
The Complaint may be barred in whole or in part by the equitable defense of unclean
hands.
SEVENTH AFFIRMATIVE DEFENSE
(Acquiescence)
The Complaint may be barred in whole or in part by the equitable doctrine of
acquiescence.
EIGHTH AFFIRMATIVE DEFENSE
(Statute of Limitations)
The Complaint may be barred in whole or in part by the relevant and applicable statute of
limitations for each claim asserted.
NINTH AFFIRMATIVE DEFENSE
(Trademark Misuse)
The Complaint may be barred in whole or in part by the doctrine of trademark misuse,
including, but not limited to, Plaintiff’s misuse of a trademark registration symbol.
TENTH AFFIRMATIVE DEFENSE
(Trademark Invalidity/Unforceability)
The Complaint may be barred in whole or in part pursuant to 15 U.S.C. §1064(3) and/or
15 U.S.C. §1115(b) because Plaintiff’s mark is invalid or otherwise unenforceable and/or
cancellable under 15 U.S.C. §1119.
ELEVENTH AFFIRMATIVE DEFENSE
(Noninfringement)

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The Complaint may be barred in whole or in part due to Plaintiff’s inability to prove
infringement of the mark, i.e., there is no likelihood of confusion between Plaintiff’s mark and
Defendant’s The Billy Goat Chip Company mark.
ADDITIONAL AFFIRMATIVE DEFENSES
Defendant reserves the right to raise additional affirmative defenses that may be
identified through discovery in this case.

COUNTERCLAIM
Defendant/Counter-Plaintiff The Billy Goat Chip Company, LLC (“Defendant” or “Billy
Goat Chip Co.”) for its Counterclaim against Plaintiff/Counter-Defendant Billy Goat IP LLC
(“Plaintiff” or “Billy Goat IP”), state as follows:
PARTIES
1.

Defendant/Counter-Plaintiff is a Missouri limited liability company with its

principle place of business located at 3136 Watson Road, St. Louis, Missouri 63139.
2.

Upon information and belief, and based upon the allegations in the Complaint,

Plaintiff/Counter-Defendant is a Delaware limited liability company with its principle place of
business located at 1535 West Madison Street, Chicago, Illinois 60611.
JURISDICTION AND VENUE
3.

The Court has original subject matter jurisdiction over Count I of the

Counterclaim under 28 U.S.C. §§ 1331 and 1338 because the claims arise out of the Lanham Act
under 15 U.S.C. 1125.
4.

The Court has supplemental subject-matter jurisdiction over the remaining

counts of the Counterclaim under 28 U.S.C. § 1367(a).

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5.

The Court has personal jurisdiction over Plaintiff because it has subjected itself

to the jurisdiction of the Court by commencing the above-captioned case in this District, because
Plaintiff resides and conducts business in this District, and because the transactions and
occurrences described in the Counterclaim, including Plaintiff’s actions giving rise to liability,
occurred in Illinois and in this District.
6.

Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c).
FACTUAL BACKGROUND

A.

The Billy Goat Chip Company LLC and its presence in the Chicago market.

7.

Billy Goat Chip Co.’s flagship potato chip was originally created 15 years ago to

serve as a house-made side with sandwiches at The Billy Goat Restaurant & Bar, which is a
gastro pub located in an area of St. Louis known as Billy Goat Hill. The restaurant was sold in
2008. See Declaration of Brian Roth attached hereto as Exhibit A and incorporated herein by
reference.
8.

In 2009, based upon the popularity of the restaurant’s house-made chips, the

former restaurant owners formed The Billy Goat Chip Company LLC to focus exclusively on
producing artisan-made gourmet potato chips to be distributed at various retail locations.
9.

Since 2009, Billy Goat Chip Co. has sold and distributed its potato chip products

at restaurants, entertainment venues, schools, fundraising events, supermarkets, small grocers
and gourmet food stores, as well as online. The below images depict Billy Goat Chip Co.’s
potato chip products:

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10.

Almost immediately after the company was created, Billy Goat Chip Co. began

selling its potato chip products across the country, including in the Illinois and Chicago markets.
Indeed, products displaying the Billy Goat Chip Co. name and logo have been sold in Illinois
since at least 2010 and in the Chicago market since at least 2011.
11.

Based on little more than word of mouth, Billy Goat Chip Co.’s potato chip

products quickly spread throughout the Chicago market.

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supermarkets, small grocers, and gourmet food stores such as (a) Whole Foods locations in
Lincoln Park, Sauganash, Naperville, Northbrook, Halsted, and South Loop since at least 2013;
(b) Binny’s Beverage Depot locations in the West Loop, Lincoln Park, Lakeview, and Gold
Coast since at least 2014; and (c) the City Fresh Market location near Ogilvie Transportation
Center since at least 2014.
12.

Nationwide sales have been extensive as well, including Atlanta since 2012,

Colorado since 2012, Idaho since 2011, and others.
13.

In addition, Billy Goat Chip Co. sells its potato chip products, as well as other

products, in supermarkets, small grocers, and gourmet food stores in over 370 retail locations
throughout the United States.
14.

Therefore, Billy Goat Chip Co. was the first to use the “Billy Goat” mark in

connection with packaged retail food/beverage products, and is the senior user of the mark in
such capacity.
15.

Billy Goat Chip Co.’s use of the “Billy Goat” mark in connection with packaged

retail food/beverage products pre-dates, by over eight (8) years, any such use by Billy Goat IP or
The Billy Goat Tavern.
B.

Billy Goat Tavern’s recent expansion beyond tavern & restaurant services.

16.

As detailed in the Complaint, United States Trademark Registration No.

1,197,507 for the BILLY GOAT Mark is limited to use in connection with “tavern and restaurant
services” in Class 42.
17.

Upon information and belief, in April 2017, Billy Goat IP began selling, and

authorizing third parties to sell on its behalf, certain packaged retail food/beverage products

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branded with the “Billy Goat” mark, as well as various other logos, indicia and marks associated
with the Billy Goat Tavern (collectively, the “Billy Goat Tavern Marks”).
18.

Upon information and belief, since April 2017 Billy Goat IP has sold and

distributed, and has authorized third parties to sell and distribute, frozen hamburger products
bearing the Billy Goat Tavern Marks, including at Jewel-Osco stores in Chicago, and the
Chicago metropolitan area.
19.

As Billy Goat IP readily admits and demonstrates in the Complaint, it uses the

“®” symbol with the Billy Goat Tavern Marks in the marketing and on the packaging of these
frozen hamburger products, as depicted below (and in paragraph 17 of the Complaint):

20.

Upon information and belief, since November 2017 Billy Goat IP has sold and

distributed, and has authorized third parties to sell and distribute, beer products (including Billy
Goat IPA and Billy Goat Pilsner) bearing the Billy Goat Tavern Marks, including at Jewel-Osco
stores in Chicago, and the Chicago metropolitan area.
21.

As Billy Goat IP readily admits and demonstrates in the Complaint, it also uses

the “®” symbol with the Billy Goat Tavern Marks in the marketing and on the packaging of
these beer products, as depicted below (and in paragraph 17 of the Complaint):
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22.

Prior to 2017, Billy Goat IP never used the “Billy Goat” moniker, or any of the

Billy Goat Tavern Marks, in connection with packaged retail food/beverage products.
23.

Upon information and belief, Billy Goat IP does not make, manufacture, or

otherwise create either the frozen hamburger products or the beer products which bear the Billy
Goat Tavern Marks.
24.

To compensate for its tardiness in entering the retail food/beverage products

market, Billy Goat IP has undertaken a campaign of deceptive trade practices, false advertising,
misusing trademarks, misusing registration symbols, and misusing the Billy Goat Tavern Marks
as described herein, in an effort to improperly injure and damage Billy Goat Chip Co.
COUNT I
(False Advertising under the Lanham Act – 15 U.S.C. § 1125(a)(1))
25.

Defendant realleges and incorporates herein by reference all preceding

paragraphs as if fully set forth herein.
26.

In connection with the sale and offer for sale of its frozen hamburger and beer

products, Billy Goat IP has made and continues to make false designations of origin, false or
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misleading descriptions of fact, and/or false or misleading representations of fact that are likely
to cause confusion, mistake, or deceive customers as to the origins of the products and that are
falsely representing the nature, characteristics, and quality of those products.
27.

In addition to the “Billy Goat” moniker, Billy Goat IP also uses the Billy Goat

Tavern Marks, including the Billy Goat Tavern & Grill logo, along with its “World Famous”
tagline, on the marketing materials and packaging for its frozen hamburger and beer products.
28.

Among other things, the above described branding implies, creates and is

intended to imply and create the impression that these products originate from, were developed
by, or were and are being created by the Billy Goat Tavern & Grill and have been for many
years.
29.

Such words, symbols, designations, and statements, however, are false and likely

to cause confusion among customers as to the origins of Plaintiff’s products.
30.

Moreover,

the

above

described

branding

misrepresents

the

nature,

characteristics, and other qualities of Billy Goat IP’s products.
31.

Similarly, Billy Goat IP has made and continues to make false or misleading

descriptions and representations of fact by falsely stating, suggesting, representing, and implying
that the goods sold by Plaintiff are the subject of and protected by a federally registered
trademark when they are not.
32.

The trademark registration for BILLY GOAT attached as Exhibit 1 to the

Complaint is limited to use in connection with “tavern and restaurant services” in Class 42, yet
Billy Goat IP has in the past, and continues to affix the “®” symbol to its frozen hamburger and
beer products that are offered for sale at supermarket and grocery locations.

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33.

Given that use of a “®” symbol makes an affirmative statement to consumers

that the United States Patent and Trademark Office has formally registered the mark it is affixed
to, Billy Goat IP’s use the “®” symbol, and its use of the other Billy Goat Tavern Marks, in the
marketing and on the packaging of its frozen hamburger and beer products falsely and
misleadingly suggests that Plaintiff is in possession of a federally registered trademark for those
particular products when, in fact, it is not.
34.

Plaintiff’s improper use of the “®” symbol with the “Billy Goat” moniker, and

the other Billy Goat Tavern Marks, outside of Class 42 is knowing, willful, deliberate, and
intentional, and performed to purposely misrepresent the products, falsely represent the nature,
characteristics, and quality of such products and is designed to deceive or mislead the public into
purchasing its products in the erroneous belief that the mark under which these products are sold
is registered—all in an effort to give Billy Goat IP improper competitive advantages in the
marketplace.
35.

Plaintiff’s actions are false and misleading, and in violation of 15 U.S.C.

§1125(a)(1)(A) and (B) of the Lanham Act.
36.

Plaintiff’s sells its products in interstate commerce at Jewel-Osco locations,

which, upon information and belief, is a supermarket chain with over 185 locations across three
states, and is engaged in advertising and promotional efforts in interstate commerce in
connection with the advertising and marketing of these products.
37.

Plaintiff’s conduct is and has been deliberate, is intended to cause harm to Billy

Goat Chip Co., and has caused and will continue to cause irreparable harm to Billy Goat Chip
Co.

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38.

Billy Goat Chip Co. has no adequate remedy at law and is suffering irreparable

harm and damage as a result of Billy Goat IP’s violation of the statute. Unless enjoined, Plaintiff
will continue its unlawful behaviors described herein, including but not limited to its misuse of
the statutory registration symbol, and further injure Billy Goat Chip Co. in an amount to be
determined at trial.
COUNT II
(Illinois Uniform Deceptive Trade Practices Act – 815 ILCS 510)
39.

Defendant realleges and incorporates herein by reference all preceding

paragraphs as if fully set forth herein.
40.

Section 510/2 of the Illinois Uniform Deceptive Trade Practices Act states that

“[a] person engages in deceptive trade practice when, in the course of his or her business . . . the
person:
(2) cause likelihood of confusion or of misunderstanding as to the source . . . approval, or
certification of goods or services;
(4) uses deceptive representations or designations of geographic origin in connection with
goods or services;
(5) represents that goods or services have . . . approval . . . that they do not have; or
(12) engages in any other conduct which similarly creates a likelihood of confusion or
misunderstanding.
See 815 ILCS 510/2.
41.

Billy Goat IP’s branding of its products described herein falsely implies and

creates the impression that these products originate from, were developed by, or were and are
being created by the Billy Goat Tavern & Grill and have been for many years when, in fact, they
do and are not.

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42.

Billy Goat IP’s use of a “®” symbol on its products outside of Class 42 makes

an affirmative statement to consumers that these products possess a federally registered
trademark approval, certification and protection that they, in fact, do not have.
43.

Billy Goat IP’s use of the Billy Goat Tavern Marks, further falsely and

deceptively communicate to consumers information about the origin, sponsorship, nature,
characteristics and quality of such products, which the products, in fact, do not have.
44.

Billy Goat IP’s actions constitute willful, deliberate, and intentional acts that are

in violation of the Illinois Uniform Deceptive Trade Practices Act, and are causing and will
continue to cause a likelihood of confusion and misunderstanding as to the origin, source,
approval, and certification of its products—all of which gives Plaintiff an improper competitive
advantage in the marketplace.
45.

Billy Goat IP’s conduct has caused and will continue to cause irreparable harm

and damage to Billy Goat Chip Co. Defendant has no adequate remedy and, unless enjoined,
Plaintiff will continue to further injure Billy Goat Chip Co. in an amount to be determined at
trial.
COUNT III
(Illinois Consumer Fraud and Deceptive Business Practices Act – 815 ILCS 505/2)
46.

Defendant realleges and incorporates herein by reference all preceding

paragraphs as if fully set forth herein.
47.

Section 505/2 of the Illinois Consumer Fraud and Deceptive Business Practices

Act states that:
Unfair methods of competition and unfair or deceptive acts or practices, including but not
limited to the use or employment of any deception fraud, false pretense, false promise,
misrepresentation or the concealment, suppression or omission of any material fact, with
intent that others rely upon the concealment, suppression or omission of such material
fact, or the use or employment of any practice described in Section 2 of the “Uniform
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 Case: 1:17-cv-09154 Document #: 31 Filed: 03/09/18 Page 23 of 26 PageID #:187

Deceptive Trade Practices Act” [815 ILCS 510/2], approved August 5, 1965, in the
conduct of any trade or commerce are hereby declared unlawful whether any person has
in fact been misled, deceived or damaged thereby.
See 815 ILCS 505/2.
48.

Billy Goat IP’s branding of its products described herein falsely implies and

creates the impression that these products originate from, were developed by, or were and are
being created by the Billy Goat Tavern & Grill and have been for a number of years when, in
fact, they do and are not.
49.

Billy Goat IP’s use of a “®” symbol on its products outside of Class 42 makes

an affirmative statement to consumers that these products possess a federally registered
trademark approval, certification, and protection that they, in fact, do not have.
50.

Billy Goat IP’s use of the Billy Goat Tavern Marks, further falsely and

deceptively communicate to consumers information about the origin, sponsorship, nature,
characteristics and quality of such products, which the products, in fact, do not have.
51.

Billy Goat IP’s actions constitute willful, deliberate, and intentional acts that are

in violation of the Illinois Consumer Fraud and Deceptive Trade Practices Act, and are causing
and will continue to cause a likelihood of confusion and misunderstanding as to the origin,
source, approval, and certification of its products—all of which gives Plaintiff an improper
competitive advantage in the marketplace.
52.

Billy Goat IP’s conduct has caused and will continue to cause irreparable harm

and damage to Billy Goat Chip Co. Defendant has no adequate remedy and, unless enjoined,
Plaintiff will continue to further injure Billy Goat Chip Co. in an amount to be determined at
trial.
PRAYER FOR RELIEF

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WHEREFORE, Defendant/Counter-Plaintiff The Billy Goat Chip Company LLC prays
for judgment in its favor and against Plaintiff/Counter-Defendant Billy Goat IP LLC, as follows:
(a)

Dismissing the Complaint filed in this action by Plaintiff with prejudice;

(b)

Denying all relief requested by Plaintiff in the Complaint;

(c)

Preliminarily and permanently enjoining Plaintiff’s false advertising and

deceptive trade practices described herein, including but not limited to its use of the “®” symbol
with the “Billy Goat” moniker and use of the other Billy Goat Tavern Marks in the marketing
and on the packaging of its frozen hamburger and beer products;
(d)

Awarding damages to Defendant as a result of Plaintiff’s false advertising and

deceptive trade practices as outlined in the Counterclaim asserted herein;
(e)

Awarding Defendant its attorneys’ fees and costs; and

(f)

Granting Defendant such other and further relief as the Court deems just and

proper.
JURY DEMAND
Defendant/Counter-Plaintiff The Billy Goat Chip Company LLC hereby requests a trial
by jury on all issues so triable pursuant to Rule 38 of the Federal Rules of Civil Procedure.

Dated: March 9, 2018

Respectfully submitted,
By: /s/ Vladimir I. Arezina
One of the Attorneys for Defendant/Counter-Plaintiff,
THE BILLY GOAT CHIP COMPANY, LLC
Vladimir I. Arezina (ARDC No. 6276348)
Sara A. Barnowski (ARDC No. 6326572)
LATHROP GAGE LLP
155 N. Wacker Drive
Suite 3000
Chicago, IL 60606
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Telephone: (312) 920-3300
Email: varezina@lathropgage.com
Email: sbarnowski@lathropgage.com
Luke M. Meriwether (pro hac vice pending)
Eric D. Sidler (pro hac vice pending)
LATHROP GAGE LLP
2345 Grand Blvd.
Suite 2200
Kansas City, MO 64108
Telephone: (816) 292-2000
Email: lmeriwether@lathropgage.com
Email: esidler@lathropgage.com

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CERTIFICATE OF SERVICE
The undersigned attorney hereby certifies that on March 9, 2018, a copy of the foregoing
document was filed electronically through the Court’s Electronic Case Filing (ECF) System, and
service of this document is being made upon all counsel of record in this case by the Notice of
Electronic Filing issued through the Court’s ECF System on this date.
/s/ Vladimir I. Arezina
Vladimir I. Arezina
One of the Attorneys for Defendant/Counter-Plaintiff,
THE BILLY GOAT CHIP COMPANY, LLC

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