JS44C/SDNY

REV. 4/2014
PLAINTIFFS
RONALD KLIOT
JUDGE CASE
CIVIL COVER
The JS-44 civil cover sheet and (he information contained I
pleadings or other papersas required by law, except as pre
Judicial Conference of the tinted Stales InSeptember 197
Initiating tne civildocket sheet.
i required
DEFENDANTS
MARK ANTHONY INTERNATIONAL SRL
ATTORNEYS (FIRM NAME. ADDRESS. AND TELEPHONE NUMBER
Christian J. Jensen. Esq. c/0 OlenderFeldman LLP
422 Morris Avenue
Summit, NewJersey 07901
ATTORNEYS (IF KNOWN)
DavW H. Bernstein. Esq., c/0 Debevoise &PlimptonLLP
919 3rd Avenue
New York, New York 10022
CAUSE OF ACTION(CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING ANDWRITE ABRIEF STATEMENT OF CAUSE}
(DO NOTCrTE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
Dedaratory judgment under Trademark Uws ofthe U.S.. 15USC Sec.1051. et seq., 15 USC Sec.1225. et seq., and 28 USC Sec.2201.220:
Has this action, case, or proceeding, or one essentially the same been previously filed In SDNY at any time? Nd2jVesQjudge Previously Assigned
If yes. was this case Vol, Invol. Dismissed, No Q Yes lfves' S^e<**** &Cast No-
No 0 Yes n
NATURE OF SUIT
ISTHISAWINTERNATIONAL AP.STTRATIONCASE?
(nAaANMlNONBQXWW
mats
ACTIONS UNDER STATUTES
eoimwcT PERSONAL INJURY
[ J310 AIRPLANE
[ J315 AIRPLANE PRODUCT
UA8ILITY
t J3Z0ASSAULT, LIBELS
SLANDER
[ ]330 FEDERAL
EMPLOYERS'
LIABILITY
[] WO MARINE
[ JMS MARINEPRODUCT
LIABILITY
[ 1360 MOTORVEHICLE
[ J3SS MOTOR VEHICLE
PRODUCT LIABILITY
E]360 OTHERPERSONAL
INJURY
[]3M PERSONAL INJURY-
MEO MALPRACTICE
[1110
I ] 129
m
111*
1)180
INSURANCE
MARINE
MJUERACT
NEGOTIABLE
INSTRUMENT
RECOVERY OF
OVERPAYMENTS
ENFORCEMENT
0FJU06MENT
MEDICAREACT
RECOVERYOF
DEFAULTED
STUDENT LOANS
1EXCLVETERANS)
RECOVERY OF
OVERPAYMENT
OFVETERANS
BENEFITS
STOCKHOLDERS
SUITS
OTHER
CONTRACT
CONTRACT
PRODUCT
LIABILITY
FRANCHISE
nRftftWBtlW KMKrniRtMHALTY
PHARMACEUTICAL PERSONAL r ]J5 DRUG RELATED
IMJURYYPROOUCT LIABILITY ^inmE0F property
t ]MS PERSONAL INJURY , usc m
PRODUCT LIABILITY Mimm?S
[]aSS ASBESTOS PERSONAL I l0"00"
INJURY PRODUCT
LIABILITY
PERSONAL PROPERTY
I 1370 OTHER FRAUD
[ |371TRUTH IN LENDING
BANKRUPTCY
[ ] 422 APPEAL
USC 1SS
( )423 WITHDRAWAL
USC 157
(11S1
II1BJ
I 1153
[iieo
llo
tltas
N6
REAL PROPERTY
[ J210
1)390
[ 1230
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11*5
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LAND
CONDEMNATION
FORECLOSURE
RENT LEASES
EJECTMENT
TORTS TO LAND
TORT PRODUCT
LIABILITY
ALL OTHER
REAL PROPERTY
t 1S60 OTHERPERSONAL
PROPERTY DAMAGE
| ] 36$ PROPERTY DAMAGE
PRODUCT LIABILITY
PRISONER PETITIONS
I )63 ALIEN DETAINEE
[ (510 MOTIONS TO
VACATE SENTENCE
28USC22S5
| 1630 HABEAS CORPUS
[] 535 DEATHPENALTY
t 1540 MANDAMUS S OTHER
ACTIONS UNDHt STATUTES
CM*. RIGHTS
(1440 OTHER CWRIGHTS
(Non-Priianar)
[ 1441 VOTING
UNEMPLOYMENT
[ 14*3 HOUSING/
ACCOMMODATIONS
t | 445 AMERICANS WITH
DISABILITIES-
EMPLOYMENT
[ 1446 AMERICANS WITH
DISABILITIES-OTHER
I ]44B EDUCATION
PRISONER CIVIL RIGHTS
| 1550CML RIGHTS
[ 1555 PRISON CONDITION
t | SSOCML DETAINEE
LABOH
I 1710 FAIRLABOR
STANDARDS ACT
(]720LAB0RMGMT
RELATIONS
I ]740 RAILWAY LABORACT
[ ] 751 FAMILY MEDICAL
LEAVE ACT (FMLA)
[] 790 OTHER LABOR
LITIGATION
(]791 EMPl RET INC
SECURITYACT
IMMIGRATION
[ 14S2 NATURALIZATION
APPLICATION
[ 1465OTHER IMMIGRATION
ACTIONS
CONDITIONS OF CONFINEMENT
Checktf demanded Incomplaint
PROPERTY RIGHTS
[ ]B20COPYRIGHTS
( JS30PATENT
MMDTRADEMARK
SOCIAL SECURITY
1 ]S61MIA(1398K>
]SR2 BLACK LUNG (BIS)
( JB63DIVVClD(WW<40SGl))
[ ]864 SSIO TITLE XVI
[ ieSSRSt(4Q5ig))
FEDEHAi TAX SUITS
{ ]670 TAXES (U.S. Plmmlffor
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| JB71IRS-THIRDPARTY
26 USC 7609
OTHERSTATUTES
)??!sTATiClA,MS
REAPPORTIONMENT
[ 1410ANTITRUST
[ | Q BANKS4 BANKING
[ 1450COMMERCE
[ 1460DEPORTATION
[ 1470RACKETEER INFLU
ENCED* CORRUPT
ORGANIZATION ACT
(RICO)
[ 14B0CONSUMER CREDIT
[ |490 CABLE/SATELLITE TV
[ 1850 SECURITIES/
COMMODITIES'
EXCHANGE
\m
[ J890 OTHERSTATUTORY
ACTIONS
[ 1891 AGRICULTURAL ACTS
[ 1893ENVIRONMENTAL
MATTERS
( )895FREEOOMOF
INFORMATION ACT
t ) 896APBITRATION
[ 1S ADMINISTRATIVE
PROCEDURE ACTMEVIEWOR
APPEAL OF AGENCY DECISION
[ 19S0CNSTrrUTIONALrrY0F
STATE STATUTES
CHECK IFTHIS IS ACLASS ACTION
UNDER FRCP 23
DEMAND S_ OTHER
DOyAUCLMM THISCASE IS RELATEDTOA CIVIL CASE NOWPENDING IN S.D.N.Y.?
JUDGE DOCKET NUMBER
Check YES onlyifdemanded In complaint
JURY DEMAND: DYES SnO NOTE; Youmust also submit at Ihetimeof filing the Statement of Relatedness form (FormIH-32).
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(PLACEANxINONEBOXONLY) BASIS OF JURISDICTION
1 U.S. PLAINTIFF Q 2 U.S. DEFENDANT [xj3 FEDERALQUESTION 4 DIVERSITY
(U.S. NOTA PARTY)
Magistrate Judge
Judgment
IFDIVERSITY, INDICATE
CITIZENSHIP BLOW.
CITIZENSHIP OF PRINCIPAL PARTIES (FORDIVERSITY CASES ONLY)
(Placean [X] inone boxfor Plaintiff and one boxfor Defendant)
PTF DEF
CITIZEN OFTHIS STATE [J1 111 CITIZEN ORSUBJECT OFA
FOREIGN COUNTRY
PTFDEF PTF DEF
[13113 INCORPORATED andPRINCIPAL PLACE [ | S [ 15
OF BUSINESS IMANOTHER STATE
CITIZEN OF ANOTHER STATE [ JZ [ J2 INCORPORATED orPRINCIPAL PLACE [ J4( ] 4 FOREIGN NATION
OF BUSINESS IN THIS STATE
[J6 [|6
PLAINTIFF(S) ADDRESSES) ANDCOUNTY(IES)
DEFENDANT^) ADDRESS(ES) ANDCOUNTY(IES)
DEFENDANTfS) ADDRESS UNKNOWN
REPRESENTATION ISHEREBY MADE THAT. ATTHIS TIME, I HAVE BEEN UNABLE. WITH REASONABLE DILIGENCE. TOASCERTAIN
RESlBlNCE ADDRESSES OF THE FOLLOWING DEFENDANTS:
Check one: THIS ACTION SHOULD BE ASSIGNED TO: Q WHITE PLAINS MANHATTAN
(DO NOT checkeither boxIfthis a PRISONER PETITIONrPRISONERCIVIL RIGHTS
COMPLAINT.)
DATE 10/27/2014SJB^THf^OF^^ORNEYOF RECORD ADMITTEDTO PRACTICE IN THIS DISTRICT
/s^(J^ <~- MYES (DATE ADMITTED Mo.J.H>L_ Yr. >!!__)
RECEIPT* C^ y^ Attorney Bar Code #4515961
Magistrate Judge is to be designated by the Clerk of the
Magistrate Judge
Ruby J. Krajick. Clerk of Court by. Deputy Clerk, DATED,
UNITED STATES DISTRICT COURT (NEW YORKSOUTHERN)
is so Designated.
GE.W
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
14 CV 8592
-X
RONALD KLIOT,
Civil Action No.: > f-
Plaintiff, tn o ",-,
en __
-against- COMPLAINTS ir
~n o P'
MARK ANTHONY INTERNATIONAL SRL, g " o
Defendant.
x
COMPLAINT FOR DECLARATORY JUDGMENT
Plaintiff Ronald Kliot ("Kliot" or "Plaintiff) by way of this Complaint for Declaratory
Judgment against defendant MarkAnthonyInternational SRL("Defendant").
NATURE OF ACTION
1. Plaintiff seeks a declaratory judgment of non-infringement of trademark rights
against Defendant, and a declaratory judgment that any alleged trademark or trade dress rights
asserted byDefendant withrespect to Plaintiffs registered trademark is invalidandunenforceable.
THE PARTIES
2. Plaintiff is an individual residing in Cedarhurst, New York and is the owner of the
registeredtrademark "HARD," RegistrationNo. 3,613,372 (the "Mark").
3. Defendant asserts that it is a corporation organized and existing under the laws of
Barbados with its principal place of business at Rendezvous Main Road, Worthing BB15006,
Christ Church, Barbados, West Indies.
JURISDICTION AND VENUE
4. This is an action for a declaratory judgment arising under the Trademark Laws of
the United States, 15 USC 1051, et seq. (the "Trademark Act"), 15 U.S.C. 1125, et seq. (the
"Lanham Act"), and 28 U.S.C. 2201, 2202 (the "Declaratory Judgment Act"). Thus, this Court
has original jurisdiction over the subject matter of this action.
r r
5. Defendant is also subject to personal jurisdiction in this Court because Defendant
regularly conducts business and uses its trademarks at issue in this litigation in the State of New
York and within this District. In addition, false assertions of alleged infringement of trademarks
were directed to the Plaintiff in the State of New York. Thus, this Court has both general and
specific personal jurisdiction over Defendant.
6. Venue of this action is proper in this District under 28 U.S.C. 1391(b)(l) and (2)
because Defendant is subject to personal jurisdiction of this Court and qualifies as a resident of
this District. In addition, a substantial part of the events giving rise to Plaintiffs claims has
occurred, and will continue to occur, within this District.
FACTUAL BACKGROUND
7. The Mark was registered with the United States Patent and Trademark Office
("USPTO") on April 28, 2009. The Mark was registered for "non-alcoholic energy beverages in
a variety of flavors, namely cola, citrus, tonic, club soda and energy flavored."
8. The Mark has been continuously used in commerce, including through Plaintiffs
businesses HARD Beverages of America, LLC and HARD Beverages International, Inc. in
connection with the goods for which Plaintiff obtained registration.
9. The Mark has not been used in connection with the sale of alcoholic beverages.
10. Defendant asserts that it has used the marks "MIKE'S HARD," "MIKE'S HARD
LEMONADE," "MIKE'S HARD CRANBERRY LEMONADE," "MIKE'S HARD TEA," and
"MIKE'S HARD PUNCH," in connection with various alcoholic beverages. Various of
Defendant's trademarks ("Defendant's Marks") which include the word "Hard" have been
registered with the USPTO.
11. As is relevant to this action, all of Defendant's Marks are registered in connection
with the sale of alcoholic beverages and prepared alcoholic cocktails.
12. None of Defendant's Marks are used in connection with the sale of non-alcoholic
beverages.
13. Defendant's Marks all disclaim use of the word "HARD" apart from use in
connection with the other words which form the registration - in particular, because the word
"HARD" is merely descriptive for alcoholic beverages.
14. The term "HARD" is not descriptive of Plaintiff s products as Plaintiffs products
do not contain alcohol, and Plaintiff does not assert on its products or marketing that its products
contain alcohol. On the other hand, Defendant's alleged products using Defendant's Marks
contain alcohol and are marketed in a manner to inform the public that they contain alcohol.
15. Plaintiff s Mark is clearly physically distinguishable from all of Defendant's Marks
in that Plaintiffs Mark is always used as ALL CAPS in bold block form, apart from other words.
Defendant's Marks are always used with the words "MIKE'S HARD" together with either a
stylized logo with the words inside a Lemon, or together with additional descriptive words
indicating an alcoholic beverage.
16. Plaintiff and Defendant are engaged in different businesses - alcoholic beverages
and non-alcoholic beverages. For example, Defendant's products using Defendant's Marks can
only be purchasedby individuals at or above the legal drinking age, and can only be sold in bars,
restaurants or stores with a proper license to sell alcoholic beverages. Plaintiffs producing sold
using Plaintiffs Mark can be purchased by anyone and can be sold by anyone (permitted by
Plaintiff to sell the products) because they do not contain alcohol.
17. Notwithstanding the foregoing, and perhaps because Defendant seeks to expand its
business from solely alcoholic beverages to non-alcoholic beverages, Defendant has been
attempting to bully Plaintiff into giving up its Mark and/or allowing Defendant to use Plaintiffs
Mark. Defendant has engaged in this behavior through counsel by way ofvarious written demand
letters, cease and desist letters, and most recently, by filing a Petition for Cancellation of Plaintiff s
Mark with the USPTO. The sole basis for Defendant's Petition with the USPTO is its unfounded
and meritless assertions that: (1) the word "hard" merely describes alcoholic beverages, and
therefore, Plaintiff is not entitled to use the word "hard" in connection with clearly non-alcoholic
beverages; and (2) that Plaintiff made some undefined and undescribed fraudulent statement in
obtaining its registration. Defendant's assertions are both without merit.
18. There is no reasonable likelihood of confusion, mistake or error in the marketplace
for the consuming public with respect to Plaintiffs Mark and Defendant's Marks.
19. Upon information and belief, neither Plaintiff nor Defendant knows of any single
bona fide instance of consumer confusion between Plaintiffs Mark and Defendant's Marks.
20. Defendant has no reasonable basis to oppose the registration of Plaintiffs Mark or
to seek its cancellation.
21. All of the foregoing actions by Defendant make clear that there presently exists a
justiciable controversy regarding Plaintiffs rights in and to Plaintiffs Marks and Defendant's
claimed right to infringe upon same.
FIRST COUNT (Non-Infringement)
22. Plaintiff repeats and realleges its allegations set forth in paragraphs 1-21 hereof as
if set forth fully herein.
23. As a justiciable controversy exists by way of threat of immediate litigation, as well
as the action taken by Defendant in the USPTO, Plaintiff seeks relief from this Court.
24. Plaintiff is entitled to a declaratory judgment that it is not infringing, and that
Plaintiffs Mark does not infringe, and has not infringed, any valid trademark owed by Defendant.
SECOND COUNT (Unenforceability of Mark,
25. Plaintiff repeats and realleges its allegations set forth in paragraphs 1-24 hereof as
if set forth fully herein.
26. As a justiciable controversy exists by way of threat of immediate litigation, as well
as the action taken by Defendant in the USPTO, Plaintiff seeks relief from this Court.
27. Plaintiff is entitled to a declaratory judgment that any and all of Defendant's marks
using the phrase "Hard" with respect to the sale on non-alcoholic beverages are unenforceable,
and lack the legal requirements to be protectable under law, and infringe upon Plaintiffs Mark.
THIRD COUNT (Validity of Mark)
28. Plaintiff repeats and realleges its allegations set forth in paragraphs 1-27 hereof as
if set forth fully herein.
29. As a justiciable controversy exists by way of threat of immediate litigation, as well
as the action taken by Defendant in the USPTO, Plaintiff seeks relief from this Court.
30. For all of the reasons found by the USPTO in granting Plaintiff registration of
Plaintiffs Mark, Plaintiffs Mark is a valid and protectable trademark subject to continued
registration with the USPTO.
WHEREFORE, Plaintiff Demands that Judgment be entered as follows:
A. Declaring Plaintiffs Mark is not confusing similar to, and does not infringe upon,
t
Defendant's Marks and may be used, and registration shall continue with the USPTO, without
interference from Defendant;
B. Declaring Defendant's Marks invalid for use in connection with the sale or
promotion of non-alcoholic beverages;
C. Awarding Plaintiff its attorneys' fees, costs, and expenses incurred in connection
with this action; and
D. Awarding such other and further relief as this Court deems just and proper and as
permitted by law.
Dated: October 2~I 2014 Respectfully submitted,
OLENDERFELDMAN LLP
BVS
Christian J. lensen - CJ1331
cjensen@ofenderfeldman.com
422 Mo:
Summj
908-9
908-810-6631 (fax)
Attorneys for Plaintiff
ersey 07901