Case: 1:19-cv-00580-DAP Doc #: 1 Filed: 03/15/19 1 of 20. PageID #: 1

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
BOILING CRAB FRANCHISE CO., LLC,

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Plaintiff,
v.
BOILING SEAFOOD LLC; BOILING
SEAFOOD CRAWFISH LLC and
BOILING SEAFOOD NY LLC,
Defendants.

CASE NO.:
JUDGE
PLAINTIFF’S COMPLAINT
(Jury Demand Endorsed Herein)

Plaintiff, Boiling Crab Franchise Co., LLC (“The Boiling Crab” or “Plaintiff”), for its
complaint against defendants Boiling Seafood LLC, Boiling Seafood Crawfish LLC, and
Boiling Seafood NY LLC (collectively, “Defendants”), alleges as follows:
PARTIES
1.

Boiling Crab Franchise Co., LLC is a limited liability company organized and

existing under the laws of the State of California, with its principal place of business located in
Garden Grove, California. The Boiling Crab operates a chain of restaurants under the trademark
THE BOILING CRAB®, which The Boiling Crab has used since at least as early as 2003, and
offers restaurant services and related products and services under the trademark THE BOILING
CRAB®.

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2.

On information and belief, defendant Boiling Seafood LLC is a limited liability

company organized and existing under the laws of the State of Ohio, with its principal place of
business with an address of 2201 Lee Road, Cleveland Heights, Ohio 44118.
3.

On information and belief, defendant Boiling Seafood Crawfish LLC is a limited

liability company organized and existing under the laws of the State of Ohio, with an address of
1446 Bethel Road, Columbus, Ohio 43220.
4.

On information and belief, defendant Boiling Seafood NY LLC is a limited

liability company organized and existing under the laws of the State of New York, with an
address of 8492 Portage Street NW, Massillon, Ohio 44646.
JURISDICTION
5.

The Court has subject matter jurisdiction over this action under 28 U.S.C. § 1331

(federal question jurisdiction), 28 U.S.C. § 1338(a) (jurisdiction over trademark actions), 28
U.S.C. § 1338(b) (unfair competition claim joined with a substantial and related claim under the
trademark laws), and 15 U.S.C. § 1121(a) because this action arises under the Lanham Act, 15
U.S.C. § 1051, et seq. The Court also has supplemental jurisdiction over the claims arising out of
state law pursuant to 28 U.S.C. §§ 1338(b) and 1367, because the state law claims arise out of
the same operative facts as the federal claims. This Court has personal jurisdiction over
Defendants because Defendants reside and do business in this district and jurisdiction. Personal
jurisdiction is also proper over Defendants because Defendants sell and offer for sale goods and
services, and otherwise conducts business, including the registration and use of the
<boilingseafoodus.com> domain name, in Ohio, including in this judicial district.

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VENUE
6.

Venue in this district is proper pursuant to 28 U.S.C. § 1391(b) because, among

other reasons, Defendants transact business within this district and offer for sale in this district
goods and services in a manner that infringes The Boiling Crab’s trademark rights. In addition,
The Boiling Crab has suffered harm in this district and a substantial part of the events or
omissions giving rise to the claims asserted herein occurred in this district.
FACTS COMMON TO ALL CLAIMS
THE BOILING CRAB’S THE BOILING CRAB® CHAIN OF RESTAURANTS
7.

In 2003, The Boiling Crab, through its predecessor in interest, opened its first

restaurant under the trademark THE BOILING CRAB®, in California.
8.

Based on the huge popularity and success of The Boiling Crab’s THE BOILING

CRAB® restaurants, The Boiling Crab has since expanded its chain of THE BOILING CRAB®
restaurants to include locations throughout the United States, including 15 THE BOILING
CRAB® restaurants in California and THE BOILING CRAB® restaurants in Houston, Texas;
Las Vegas, Nevada; Honolulu, Hawaii; and South Miami, Florida. The Boiling Crab is also
actively exploring further expansion of its chain of THE BOILING CRAB® restaurants to
additional locations throughout the United States and internationally. A true and correct copy of
a picture of the exterior of one of The Boiling Crab’s longest-operating THE BOILING CRAB®
restaurants is attached hereto as Exhibit A.
9.

The Boiling Crab’s THE BOILING CRAB® restaurants offer a unique selection

of Louisiana-style seafood, including blue crab, oysters, Dungeness crab, shrimp, and crawfish
seasoned with THE BOILING CRAB® restaurants’ distinctive blends of spices and seasonings.
Customers of THE BOILING CRAB® restaurants are also treated to a singularly enjoyable

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dining experience that is characterized by the innovative food presentations, distinctive
restaurant decor, unique menus, and one-of-a-kind dining experience pioneered and provided by
The Boiling Crab’s THE BOILING CRAB® restaurants. A true and correct copy of pictures of
the inside of one of The Boiling Crab’s THE BOILING CRAB® restaurants is attached hereto
as Exhibit B.
10.

Further contributing to The Boiling Crab’s distinctive appearance and appeal, The

Boiling Crab’s unique menus use a distinctive format, contain unique content, and are
distinctively printed. A true and correct copy of an example of THE BOILING CRAB®
restaurants’ unique menu used around the time that Defendants began using its infringing
trademark without authorization is attached hereto as Exhibit C.
11.

THE BOILING CRAB® chain of restaurants has become extremely well known

and respected among consumers, who have come to associate The Boiling Crab’s THE
BOILING CRAB® trademark with The Boiling Crab’s THE BOILING CRAB® restaurants and
the one-of-a-kind dining experience that The Boiling Crab pioneered and provides. The Boiling
Crab’s THE BOILING CRAB® restaurants have also received unsolicited attention from, and
positive recognition by, the media, which has further contributed to consumers’ widespread
recognition of The Boiling Crab’s THE BOILING CRAB® restaurants.
12.

Additionally, The Boiling Crab has expended considerable time, effort, and

money promoting and advertising its chain of THE BOILING CRAB® restaurants, further
contributing to the recognition and success of THE BOILING CRAB® chain of restaurants.
Today, The Boiling Crab continues to promote and advertise its THE BOILING CRAB®
restaurants.

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13.

The Boiling Crab has also used the trademark THE BOILING CRAB®

extensively on the internet and, as a result, The Boiling Crab’s THE BOILING CRAB®
trademark has developed a strong internet presence and recognition by consumers who use the
internet. The Boiling Crab is the registrant of various domain names incorporating, in whole or
in part, THE BOILING CRAB® trademark, including <theboilingcrab.com> and
<boilingcrab.com>. The Boiling Crab owns and operates a website at these domain names in
order to promote and provide consumers with information concerning The Boiling Crab’s chain
of THE BOILING CRAB® restaurants. The Boiling Crab’s website makes extensive use of THE
BOILING CRAB® trademark and embodies part of the unique look-and-feel of THE BOILING
CRAB® dining experience. A true and correct copy of the home page of The Boiling Crab’s
website at www.theboilingcrab.com is attached hereto as Exhibit D.
14.

In addition to owning and operating a THE BOILING CRAB® website at

www.theboilingcrab.com, The Boiling Crab also uses its trademark THE BOILING CRAB®
extensively on the internet through the popular social networking sites Facebook
(www.facebook.com/theboilingcrab), Twitter (twitter.com/theboilingcrab), YouTube
(www.youtube.com/user/OfficialBoilingCrab) and Instagram
(www.instagram.com/boilingcrab/), among others. In particular, The Boiling Crab maintains
these active social media accounts in order to further promote its THE BOILING CRAB®
trademark and to provide information about and promote its chain of THE BOILING CRAB®
restaurants. A true and correct copy of excerpts from the social media page maintained by The
Boiling Crab on Facebook is attached hereto as Exhibit E.
15.

Through The Boiling Crab’s extensive use, marketing, branding, and promotion

of its THE BOILING CRAB® trademark and THE BOILING CRAB® chain of restaurants, its

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trademark THE BOILING CRAB® is recognized by consumers throughout the United States
and around the world, enjoying substantial recognition, goodwill, and association with THE
BOILING CRAB® restaurant chain. The public distinguishes The Boiling Crab’s goods and
services from those of others who offer the same or similar goods and services on the basis of its
trademark THE BOILING CRAB®.
THE BOILING CRAB’S FEDERAL REGISTRATION OF ITS
THE BOILING CRAB TRADEMARK
16.

The Boiling Crab is the owner of the following United States Trademark

Registrations for its THE BOILING CRAB® trademark:
Mark

Registration No.

Goods & Services

THE BOILING CRAB

3256219

Restaurant Services

4174077

Restaurant Services

4491054

Restaurant Services

5374534

Restaurant Services

A true and correct copy of The Boiling Crab’s federal trademark registrations for these marks are
attached hereto as Exhibit F.
17.

The Boiling Crab’s federal registration Nos. 3256219 and 4174077 for its THE

BOILING CRAB® trademarks have become incontestable within the meaning of Section 15 of
the Lanham Act, 15 U.S.C. § 1065, and constitute conclusive evidence that the recited marks are
valid and that The Boiling Crab is entitled to exclusive use of the recited marks in commerce

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throughout the United States for restaurant services and in connection with goods and services
related thereto.
18.

The Boiling Crab’s federal registration Nos. 4491054 and 5374534 for its THE

BOILING CRAB® trademarks constitute prima facie evidence that the recited marks are valid
and that The Boiling Crab is entitled to exclusive use of the recited marks in commerce
throughout the United States for restaurant services and in connection with goods and services
related thereto.
DEFENDANTS’ INFRINGEMENT OF THE BOILING CRAB’S
THE BOILING CRAB® TRADEMARK
19.

On information and belief, Defendants are affiliated entities that were formed for

the purpose of operating restaurants providing seafood using the identical concept pioneered and
offered by The Boiling Crab’s THE BOILING CRAB® restaurants.
20.

In or about October 2015, long after The Boiling Crab first began using its THE

BOILING CRAB® trademarks, Defendants opened and began operating a restaurant in
Cleveland Heights, Ohio that imitates in all material respects the name of The Boiling Crab’s
THE BOILING CRAB® restaurant chain. Most blatantly, in a clear effort to confuse consumers
into thinking that Defendants are somehow associated or affiliated with The Boiling Crab’s THE
BOILING CRAB® chain of restaurants, Defendants closely imitated The Boiling Crab’s THE
BOILING CRAB® trademark by calling Defendants’ restaurants “Boiling Seafood” and
“Boiling Seafood Crawfish” even though Defendants do not have any affiliation with, or
authorization from, The Boiling Crab. A true and correct copy of a picture of Defendants’ first
infringing restaurant and unauthorized use of the infringing “Boiling Seafood” mark is attached
hereto as Exhibit G.

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21.

Defendants also adopted and began using with their knock-off restaurant a

“Boiling Seafood” logo that featured the words “Boiling” and “Seafood” arranged above and
below, respectively, a red crab design.

22.

On information and belief, in or about April 2017, Defendants opened and began

operating a second restaurant in Columbus, Ohio that also uses the “Boiling Seafood” and
“Boiling Seafood Crawfish” mark and logo (collectively, the “Infringing Marks”). A true and
correct copy of pictures of Defendants’ second infringing restaurant is attached hereto as Exhibit
H.
23.

Defendants also adopted and began using with their knock-off restaurant a

seafood concept and menu that imitated The Boiling Crab’s distinctive concept and menu. True
and correct copies of pictures of Defendants’ menu showing the “Boiling Seafood” mark and
logo and showing a “Seafood by Pound” concept, seasoning, and spice level description
imitating The Boiling Crab’s menu concept and descriptions are attached hereto as Exhibit I.
24.

In October 2015, Defendants also created a “Boiling Seafood Crawfish” social

media page on Facebook using the handle @boilingseafood and began using the page to promote
and advertise the restaurant services Defendants were providing under the “Boiling Seafood”
mark and logo. A true and correct copy of a screen shot of Defendants’ Facebook page is
attached hereto as Exhibit J.
25.

Defendants have also registered the domain names

<boilingseafoodcrawfishoh.com> and <boilingseafoodus.com> (the “Infringing Domain
Names”) and are using the domain to host a website promoting the restaurant services offered by
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Defendants under the infringing “Boiling Seafood” and “Boiling Seafood Crawfish” marks. A
true and correct copy of a screen capture of Defendants’ website at www.boilingseafoodus.com
is attached hereto as Exhibit K.
26.

On information and belief, Defendants are advertising and plan to open a third

“Boiling Seafood” restaurant location in Buffalo, New York.
27.

Defendants’ use of the Infringing Marks for restaurant services is likely to cause

confusion, mistake, and deception of consumers as to the source, quality, and nature of
Defendants’ services and goods, thereby proximately causing injury to The Boiling Crab and its
trademark rights.
DEFENDANTS HAVE IGNORED THE BOILING CRAB’S DEMANDS
THAT DEFENDANTS STOP INFRINGING THE BOILING CRAB’S
THE BOILING CRAB® TRADEMARK
28.

On January 17, 2018, counsel for The Boiling Crab sent a letter to Defendants

objecting to Defendants unauthorized use of the “Boiling Seafood” and “Boiling Seafood
Crawfish” marks and logo in connection with restaurant services. That letter demanded, among
other things, that Defendants immediately stop using the any trademark confusingly similar to
the The Boiling Crab’s THE BOILING CRAB® marks.
29.

Despite The Boiling Crab’s demands that Defendants stop their blatant

infringement of The Boiling Crab’s THE BOILING CRAB® trademark and bad faith use of the
Infringing Domain Name, Defendants have completely ignored The Boiling Crab’s efforts to
reach an informal resolution of this matter and continued, unabashedly, with their willful and
intentional infringement of The Boiling Crab’s THE BOILING CRAB® trademark.

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FIRST CLAIM FOR RELIEF
(Infringement of a Federally Registered Trademark)
15 U.S.C. § 1114(1)
30.

The Boiling Crab realleges and incorporates by reference the allegations in

paragraphs 1 through 29, as if set forth fully herein.
31.

This claim is against Defendants for trademark infringement in violation of

Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
32.

The Infringing Marks used by Defendants are reproductions, counterfeits, copies,

or colorable imitations of The Boiling Crab’s registered THE BOILING CRAB® marks.
33.

Defendants have used and are using in interstate commerce the Infringing Marks

in connection with the sale, offering for sale, distribution, or advertising of restaurant services in
such a way as is likely to cause confusion, to cause mistake, and/or to deceive the consuming
public.
34.

The Boiling Crab never consented to or authorized Defendants’ adoption or

commercial use of the Infringing Marks for any purpose. Defendants therefore have infringed
and are infringing The Boiling Crab’s THE BOILING CRAB® trademarks in violation of
Section 32(1)(a) of the Lanham Act, 15 U.S.C. § 1114(1)(a).
35.

Upon information and belief, The Boiling Crab alleges that, at all times relevant

to this action, including when Defendants first adopted the Infringing Marks and commenced
commercial use of the same in connection with restaurant services, Defendants knew of The
Boiling Crab’s prior adoption and widespread commercial use of THE BOILING CRAB®
trademarks in connection with restaurant services and related goods and services, and knew of
the valuable goodwill and reputation acquired by The Boiling Crab in connection with its THE

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BOILING CRAB® trademarks. Defendants’ infringement of The Boiling Crab’s THE BOILING
CRAB® trademark is willful and deliberate.
36.

The Boiling Crab has no control over the quality of Defendants’ infringing

restaurant services and, because of the source confusion engendered by Defendants’ willful
trademark infringement, The Boiling Crab’s valuable goodwill in and to its federally registered
THE BOILING CRAB® trademark is being significantly harmed. Defendants’ use of the
Infringing Marks, in blatant imitation of The Boiling Crab’s THE BOILING CRAB®
trademarks, has caused confusion, mistake, and deception to purchasers as to the source and
origin of Defendants’ services and products sold under the Infringing Marks.
37.

Defendants’ activities are intended, and are likely, to lead the public to conclude,

incorrectly, that Defendants’ restaurants services originate with, are sponsored by, and/or are
authorized by The Boiling Crab and its THE BOILING CRAB® brand, to the damage and harm
of The Boiling Crab and the consuming public. Defendants’ activities constitute willful and
deliberate infringement of The Boiling Crab’s federally registered trademarks in violation of the
Lanham Act, including, but not limited to, 15 U.S.C. § 1114(1). Accordingly, The Boiling Crab
is entitled to recover Defendants’ profits, together with The Boiling Crab’s damages, increased
monetary recoveries as provided by the Lanham Act, as well as costs of the action and
reasonable attorneys’ fees pursuant to Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a).
38.

Defendants’ activities have caused and will continue to cause irreparable harm to

The Boiling Crab for which The Boiling Crab has no adequate remedy at law, in that: (i) The
Boiling Crab’s THE BOILING CRAB® trademarks are a unique and valuable property right that
has no readily determinable market value; (ii) Defendants’ infringement constitutes an
interference with The Boiling Crab’s goodwill and customer relationships and will substantially

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harm The Boiling Crab’s reputation as a source of high quality goods and services, as well as
dilute the substantial value of The Boiling Crab’s THE BOILING CRAB® name and
trademarks; and (iii) Defendants’ wrongful conduct, and the resulting damages to The Boiling
Crab, are continuing. Accordingly, The Boiling Crab is entitled to preliminary and permanent
injunctive relief pursuant to 15 U.S.C. § 1116(a) and to an order under 15 U.S.C. § 1118
impounding all goods and other materials in Defendants’ possession, custody, or control that
bear the Infringing Marks.
39.

The Boiling Crab also is entitled to, in addition to the other remedies described

herein, the cost of corrective advertising and a reasonable royalty as a result of Defendants’
infringement of The Boiling Crab’s federally registered THE BOILING CRAB® trademarks.
40.

This is an exceptional case, further entitling The Boiling Crab to additional

remedies and also entitling The Boiling Crab to recover its attorneys’ fees and costs incurred in
prosecuting this action and stopping Defendants’ willful trademark infringement, pursuant to 15
U.S.C. § 1117.
SECOND CLAIM FOR RELIEF
(Federal Unfair Competition)
15 U.S.C. § 1125(a)
41.

The Boiling Crab realleges and incorporates by reference the allegations in

paragraphs 1 through 40, as if set forth fully herein.
42.

This claim is against Defendants for trademark and unfair competition, in

violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
43.

The Boiling Crab’s THE BOILING CRAB® trademarks are nonfunctional and

inherently distinctive. They have acquired secondary meaning in the eyes of the public.

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44.

Defendants’ use of the Infringing Marks is so similar to The Boiling Crab’s THE

BOILING CRAB® marks that Defendants are likely to cause confusion, mistake, and/or to
deceive the consuming public as to the affiliation, connection, and/or association between The
Boiling Crab’s THE BOILING CRAB® restaurants and Defendants’ restaurants. Defendants’
unauthorized use of THE BOILING CRAB® trademarks infringes The Boiling Crab’s THE
BOILING CRAB® trademarks, and constitutes unfair competition. Defendants’ unauthorized
use of the Infringing Marks also constitutes a false designation of origin of products and services.
45.

On information and belief, at all times relevant to this action, including at the time

Defendants first adopted and began using without authorization the Infringing Marks,
Defendants knew of The Boiling Crab’s prior adoption and widespread commercial use of its
THE BOILING CRAB® marks, and knew of the valuable goodwill and reputation acquired by
The Boiling Crab in connection with its THE BOILING CRAB® trademarks. Defendants’
infringement of The Boiling Crab’s THE BOILING CRAB® trademarks is therefore knowing,
willful, and deliberate.
46.

Defendants’ activities are intended to, and are likely to, lead the public to

conclude, incorrectly, that Defendants’ restaurants services originate with, are sponsored by,
and/or are authorized by The Boiling Crab and its chain of THE BOILING CRAB® restaurants,
to the damage and harm of The Boiling Crab and the consuming public. Defendants’ activities
constitute willful and deliberate infringement of The Boiling Crab’s THE BOILING CRAB®
trademarks in violation of the Lanham Act, including, but not limited to, 15 U.S.C. § 1125(a).
Accordingly, The Boiling Crab is entitled to recover Defendants’ profits together with The
Boiling Crab’s damages, an increased monetary recovery, as well as costs of the action and
reasonable attorneys’ fees pursuant to Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a).

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47.

Defendants’ activities have caused and will continue to cause irreparable harm to

The Boiling Crab for which The Boiling Crab has no adequate remedy at law, in that: (i) The
Boiling Crab’s rights in its THE BOILING CRAB® trademarks are unique and valuable
property rights which have no readily determinable market value; (ii) Defendants’ infringement
constitutes an interference with The Boiling Crab’s goodwill and customer relationships and will
substantially harm The Boiling Crab’s reputation as a source of high quality goods and services,
as well as harm the substantial value of The Boiling Crab’s THE BOILING CRAB® trademarks;
and (iii) Defendants’ wrongful conduct, and the resulting damages to The Boiling Crab, are
continuing. Accordingly, The Boiling Crab is entitled to preliminary and permanent injunctive
relief pursuant to 15 U.S.C. § 1116(a) and to an order under 15 U.S.C. § 1118 impounding all
goods and other materials in Defendants’ possession, custody, or control that bear the Infringing
Marks
48.

The Boiling Crab also is entitled to, in addition to the other remedies described

herein, the cost of corrective advertising and a reasonable royalty as a result of Defendants’
infringement of The Boiling Crab’s THE BOILING CRAB® trademarks.
49.

This is an exceptional case, further entitling The Boiling Crab to additional

remedies and also entitling The Boiling Crab to recover its attorneys’ fees and costs incurred in
prosecuting this action and stopping Defendants’ willful trademark infringement, pursuant to 15
U.S.C. § 1117.
//
//
//
//

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THIRD CLAIM FOR RELIEF
(Unfair Competition Under State Law)
50.

The Boiling Crab realleges and incorporates by reference the allegations in

paragraphs 1 through 49, as if set forth fully herein.
51.

Defendants’ acts as detailed herein have impaired The Boiling Crab’s goodwill,

have created a likelihood of confusion, are likely to deceive consumers, and have otherwise
adversely affected The Boiling Crab’s business and reputation by Defendants’ use of unfair,
fraudulent, and unlawful business practices. These acts constitute unfair competition and unfair
business practices under Ohio common law.
52.

Absent injunctive relief, The Boiling Crab has no means by which to control

Defendants’ deceptive and confusing use of the Infringing Marks. The Boiling Crab is therefore
entitled to injunctive relief prohibiting Defendants from continuing such acts of unfair
competition.
53.

As a direct and proximate result of the aforesaid acts of unfair competition,

Defendants have wrongfully profited and taken the benefit of The Boiling Crab’s creativity and
investment of time, energy, and money. Defendants have also wrongfully taken monies from
consumers as the result of the aforesaid acts of unfair competition. Defendants should therefore
be ordered to perform full restitution, as permitted by law, as a consequence of their acts of
unfair competition.
FOURTH CLAIM FOR RELIEF
(Trademark Infringement Under State Law)
54.

The Boiling Crab realleges and incorporates by reference the allegations in

paragraphs 1 through 53, as if set forth fully herein.

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55.

Defendants’ acts infringe The Boiling Crab’s THE BOILING CRAB®

trademarks. Defendants’ acts have caused, and are likely to continue to cause, consumer
confusion and injury to The Boiling Crab’s business and reputation and to dilute the distinctive
quality of The Boiling Crab’s THE BOILING CRAB® trademarks, and constitute trademark
infringement under Ohio common law. Defendants’ acts have been and are the proximate cause
of injury to The Boiling Crab.
56.

Absent injunctive relief, The Boiling Crab has no means to stop Defendants’

continuing infringement of The Boiling Crab’s THE BOILING CRAB® trademarks. The
Boiling Crab is therefore entitled to injunctive relief prohibiting Defendants from continuing the
unlawful acts described herein. The Boiling Crab is also entitled to damages, Defendants’ profits,
punitive damages, an accounting, costs, attorneys’ fees and other damages and monetary relief,
all according to proof at trial.
FIFTH CLAIM FOR RELIEF
(Cancellation of Ohio Trademark Registration Under State Law)
57.

The Boiling Crab realleges and incorporates by reference the allegations in

paragraphs 1 through 56, as if set forth fully herein.
58.

On information and belief, on or about December 9, 2017, defendant Boiling

Seafood LLC filed with the Ohio Secretary of State’s office an application to register the mark
BOILING SEAFOOD as a service mark for food and restaurant services in Class 43, claiming a
date of first use and first use in Ohio of July 6, 2015.
59.

On information and belief, on or about December 13, 2017, the Ohio Secretary of

State’s office issued Ohio Service Mark Registration No. 201734300634 for BOILING
SEAFOOD to defendant Boiling Seafood LLC.

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60.

The BOILING SEAFOOD mark registered in Ohio to defendant Boiling Seafood

LLC so resembles The Boiling Crab’s federally registered THE BOILING CRAB® trademarks,
which have not been abandoned, as to be likely, when used on or in connection with the food and
restaurant services of defendant, to cause confusion nor mistake or deceive.
61.

Accordingly, defendant Boiling Seafood LLC was not and is not entitled to

registration of its BOILING SEAFOOD mark, pursuant to Ohio Revised Code § 1329.55(g).
62.

The Boiling Crab is therefore entitled to a declaration and order for cancellation

of defendant Boiling Seafood LLC’s Ohio Service Mark Registration No. 201734300634 for
BOILING SEAFOOD, pursuant to Ohio Revised Code §§ 1329.62(C)(1), (D).
PRAYER FOR RELIEF
WHEREFORE, The Boiling Crab prays for entry of a judgment ordering and declaring:
1.

That, preliminarily pending trial of this action and permanently thereafter,

Defendants and their agents, servants, employees, successors, licensees and assignees, and all
persons, firms, entities, partners, or corporations in active concert or participation with
Defendants, are preliminarily and thereafter permanently enjoined from doing, threatening, or
attempting to do or causing to be done, either directly or indirectly, by any means, method or
device, any of the following acts:
(a)

Directly or indirectly infringing, using, or displaying the trademark THE

BOILING CRAB® or any mark similar thereto, including but not limited to the Infringing
Marks, in any manner or for any purpose, including, but not limited to, in advertising, promoting,
producing, distributing, selling, offering for sale, or giving away any services or products which
infringe, use, or display The Boiling Crab’s THE BOILING CRAB® trademarks, or any marks
similar thereto;

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(b)

Using any term that is likely to be confused with The Boiling Crab’s THE

BOILING CRAB® trademarks;
(c)

Falsely representing, misleading, or deceiving consumers into believing

that services or products advertised, promoted, produced, distributed, sold, or offered by sale by
Defendants originate from The Boiling Crab or its THE BOILING CRAB® restaurants, or are
sponsored, approved, licensed by, or associated with The Boiling Crab or its THE BOILING
CRAB® restaurants, or that Defendants or their services or products are in some way associated
or affiliated with The Boiling Crab or its THE BOILING CRAB® restaurants;
(d)

Committing any other acts calculated to or that do unfairly compete with

The Boiling Crab in any manner;
(e)

Filing or prosecuting any trademark application for the trademark THE

BOILING CRAB® or any mark confusingly similar thereto;
(f)

Filing or maintaining any business license, d/b/a, or similar document

using the trademark THE BOILING CRAB® or any mark confusingly similar thereto; and
(g)

Registering, using, or trafficking in any trade name or domain name

containing or consisting of the trademark THE BOILING CRAB® or any mark confusingly
similar thereto;
2.

That Defendants be required to account for all profits derived by them from their

trade, infringing conduct, unfair practices and competition, and for an order of restitution of the
entire amount of those profits, in amounts to be proven at trial, to The Boiling Crab;
3.

That Defendants be required to turn over to be impounded during the pendency of

this action all goods and other materials in their possession, custody, or control used or involved

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in the trademark infringement complained of herein, and to turn over for destruction all such
goods and other materials, or in the alternative that all such items be subject to seizure;
4.

That the Ohio Secretary of State cancel from the register defendant Boiling

Seafood LLC’s Ohio Service Mark Registration No. 201734300634 for BOILING SEAFOOD,
pursuant to Ohio Revised Code §§ 1329.55(G), 1329.62(C)(1), (D);
5.

That Defendants be ordered to pay all of The Boiling Crab’s attorneys’ fees,

costs, and disbursements incurred in this suit, in bringing this action for the legal enforcement of
its trademark rights, and in connection with all efforts to stop Defendants’ trademark
infringement and unfair competition;
6.

That, in addition to being ordered to pay its profits attributable to the infringing

conduct complained of herein to The Boiling Crab, Defendants also be ordered to pay their
infringing profits as monetary damages and reasonable royalties, to be increased by the Court by
such amount as the Court deems to be just, together with The Boiling Crab’s damages, all of
which, according to the circumstances of this case, should be increased and trebled as provided
by law, including 15 U.S.C. § 1117, and paid to The Boiling Crab;
7.

That Defendants be ordered to pay exemplary or punitive damages to the extent

available under, and according to, law;
8.

That Defendants have willfully and deliberately committed acts of trademark

infringement and unfair competition against The Boiling Crab;
9.

That Defendants be ordered to pay interest according to law;

10.

That Defendants be ordered to pay the costs of corrective advertising; and

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11.

For all such other, further, and different relief that this Court deems just and

proper.

/s/ Mark I. Wallach
Mark I. Wallach (Reg. No. 0010948)
Email: mwallach@walterhav.com
Direct Dial: 216-928-2939
John N. Neal (Reg. No. 0075355)
Email: jneal@walterhav.com
Direct Dial: 216-619-7866
WALTER   HAVERFIELD LLP
The Tower at Erieview
1301 East 9th Street, Suite 3500
Cleveland, Ohio 44114
Phone: 216-781-1212/Fax: 216-575-0911

Steven E. Klein (pro hac vice forthcoming)
Email: stevenklein@dwt.com
DAVIS WRIGHT TREMAINE LLP
1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
Telephone: (503) 241-2300
Facsimile: (503) 778-5299
Attorneys for Boiling Crab Franchise Company
LLC

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