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Plaintiff
vs.
707RANCH, L.L.C. d/b/a RANCH707
Defendant
COMPLAINT
Plaintiff, John Ewing Company (Plaintiff), by its undersigned attorneys, states the
following for its Complaint against Defendant, 707RANCH, L.L.C. d/b/a RANCH707
(Defendant):
NATURE OF THE CASE
1.
This is an action at law and in equity for trademark infringement under Section 32
of the Lanham Trademark Act, 15 U.S.C. 1114(1); unfair competition and false designation of
origin under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a); deceptive trade practices
under the Colorado Consumer Protection Act, C.R.S. 6-1-101 et seq.; and common law unfair
competition and trademark infringement. Plaintiff seeks permanent injunctive relief and
damages.
2.
As described below, Defendant has used and continues to use trademarks that are
identical to or nearly identical to and are confusingly similar to, Plaintiffs well-known and
federally registered FORMULA 707 trademark (the FORMULA 707 Mark) in connection with
the marketing and sale of preparations for the care of animals, in particular horses.
3.
Plaintiff has not authorized Defendant to use its well-known FORMULA 707
Mark, or colorable imitations thereof, in connection with Defendants products. Defendants are
improperly trading on the goodwill, reputation and fame of Plaintiffs FORMULA 707 Mark
creating a likelihood of consumer confusion. Unless enjoined by the Court, Defendants will
continue to cause irreparable harm to Plaintiff.
PARTIES
4.
an Arizona limited liability company with its principal place of business located at 707 Quarter
Horse Lane, Camp Verde, Arizona 86322.
6.
the
United
On information and belief, Defendant advertises and sells its products throughout
States
by
way
of
its
online
retail
store
located
at
the
website
This Court has subject matter jurisdiction of Plaintiffs federal claims under
Section 39 of the Lanham Act, 15 U.S.C. 1121, and under 28 U.S.C. 1331 and 1338. This
Court has jurisdiction over Plaintiffs related state and common law claims pursuant to 28 U.S.C.
1338 and 1367 and under principals of supplemental jurisdiction.
8.
committed tortious acts or omissions in this State that give rise to at least part of the present
claims, has engaged in tortious acts or omissions outside of this State causing injury within this
State that give rise to at least part of the present claims, and derives substantial revenue from
interstate commerce, or has otherwise made or established contacts with this State sufficient to
permit the exercise of personal jurisdiction.
9.
FORMULA 707 Mark for preparations for the care of animals, in particular horses. Since then,
Plaintiff has used the FORMULA 707 Mark in association with preparations for the care of
animals, in particular horses, and has expanded its family of FORMULA 707 products.
11.
Plaintiff continues to use the FORMULA 707 Mark on or in connection with the
sale of its goods. Plaintiffs use of the FORMULA 707 Mark has been valid and continuous and
has not been abandoned. Plaintiff has substantially invested in creating significant goodwill in
the FORMULA 707 Mark throughout the United States.
12.
Plaintiff prominently features the FORMULA 707 logo on its products, and its
13.
14.
Trademark
Goods
3,683,185
3,735,192
Trademark
Goods
3,892,403
FORMULA 707
CALMING ESSENTIALS
4,888,452
FORMULA 707
4,888,453
FORMULA 707
4,888,454
FORMULA 707
PEAKCARE
The foregoing registrations are hereinafter referred to as the FORMULA 707 Registrations.
Copies of the FORMULA 707 Registrations and printouts from the U.S. Patent and Trademark
Office database showing the current title and status of such registrations are attached as Exhibit
A.
15.
The FORMULA 707 Registrations are valid, subsisting and in full force and
effect. U.S. Registration Nos. 3,735,192 and 3,683,185 are incontestable pursuant to Section 15
of the Lanham Act, 15 U.S.C. 1065, and are conclusive evidence of the validity of the
FORMULA 707 GASTRO ESSENTIALS and FORMULA 707 HOOF ESSENTIALS
trademarks, the registration of such marks, Plaintiffs ownership of such marks, and of Plaintiffs
exclusive right to use such marks in connection with all of the goods identified in those
registrations.
16.
U.S. Registration Nos. 3,892,403; 4,888,452; 4,888,453; and 4,888,454 are prima
facie evidence of the validity of the FORMULA 707 CALMING ESSENTIALS, FORMULA
707, and FORMULA 707 PEAKCARE trademarks, the registration of such marks, Plaintiffs
ownership of such marks, and of Plaintiffs exclusive right to use such marks in connection with
all of the goods identified in those respective registrations.
17.
Plaintiff has acquired common law rights in the FORMULA 707 Mark through
use of such marks on or in connection with the sale of its goods throughout the United States.
18.
promoting the FORMULA 707 Mark and, through such sales and advertising, has generated
substantial goodwill and customer recognition in such mark.
19.
Plaintiff has derived substantial revenues from its sales of its goods under the
goods under the FORMULA 707 Mark throughout the United States, and of the publics
widespread use of Plaintiffs goods, such products have come to be, and now are, well and
favorably known under the FORMULA 707 Mark as products of high quality, durability, and
reliability. The FORMULA 707 Mark is distinctive of Plaintiffs goods and are well-known, and
valuable goodwill has been built up in the FORMULA 707 Mars. Such goodwill has been built
up long before Defendant adopted the use of the name Ranch707 or 707 Ranch.
21.
Plaintiffs FORMULA 707 Mark and the FORMULA 707 Registrations are
entitled to immediate and strong protection from unfair competition, infringement, and injury to
the marks and the goodwill represented by such marks.
Defendant markets and sells horse treats, horse pill carriers, horse paste carriers,
24.
Defendants Products are used for the same purpose as certain of Plaintiffs
goods, namely used as preparations for the care of animals, in particular horses.
25.
Defendant markets and sells the Defendants Products using the trademarks 707
RANCH and RANCH707 (the Defendants 707 Marks) without consent or authorization of
Plaintiff.
26.
Defendant prominently features Defendants 707 Marks on its products, and its
advertising and marketing of its products. The 707 portion of the Defendants 707 Marks is
the dominant feature of such marks. As shown below, Defendants Products oftentimes display
indicia related to horses. Examples of Defendants Products include those depicted below:
27.
On information and belief, Defendants use of Defendants 707 Marks is and has
been with knowledge of the extensive prior use by Plaintiff of Plaintiffs FORMULA 707 Mark.
29.
Defendant has had notice of its infringement of the FORMULA 707 Mark,
including instances of actual confusion, but has nonetheless persisted in its use of Defendants
707 Marks.
30.
Plaintiff explained, among other things, that Defendants use of Defendants 707
Marks had caused instances of actual confusion including inquiries from Plaintiffs customers as
to the affiliation, connection, association, or sponsorship between Plaintiff and products using
Defendants 707 Marks.
32.
Plaintiff demanded that Defendant cease using Defendants 707 Marks and to
continued to use Defendants 707 Marks in a manner that is likely to cause confusion, mistake or
deception that Defendants Products are those of Plaintiff or are otherwise endorsed, sponsored,
or approved by Plaintiff, or cause confusion, mistake or deception as to the affiliation,
connection or association between Defendant and Plaintiff.
34.
Since the parties last correspondence, Plaintiff has been made aware of additional
actual consumer confusion that further demonstrates the expanding nature of the concerns in the
market place.
35.
Plaintiff has used the FORMULA 707 Mark in connection with its goods since
long before Defendant adopted and began using Defendants 707 Marks.
36.
Mark, and the use thereof by Defendant in connection with Defendants Products is likely to
cause confusion, mistake or deception that Defendants Products are those of Plaintiff or are
otherwise endorsed, sponsored, or approved by Plaintiff, or cause confusion, mistake or
deception as to the affiliation, connection or association between Defendant and Plaintiff.
37.
in its company name, in marketing and advertising for Defendants Products, on its website
where it markets and sells Defendants Products, and on the Defendants Products themselves.
38.
irreparable injury to itself, its reputation, its FORMULA 707 Mark and the goodwill represented
by such marks for which there is no adequate remedy at law, entitling Plaintiff to injunctive
relief.
FIRST CLAIM FOR RELIEF
FEDERAL TRADEMARK INFRINGEMENT (15 U.S.C. 1114(1))
39.
Plaintiff realleges and incorporates by reference as if fully set forth herein the
Defendant uses Defendants 707 Marks to advertise, distribute, offer for sale, and
41.
42.
Defendants Products are closely related to Plaintiffs goods, and like Plaintiffs
Mark.
The overall look and feel of Defendants Products are very similar to Plaintiffs
44.
goods.
Products to mislead and confuse consumers as to the source of the Defendants Products and to
create a false suggestion of a connection with Plaintiff.
45.
46.
Marks.
mistake, or to deceive consumers into falsely believing that Plaintiff is the source of the
Defendants Products or that Defendant and/or the Defendants Products are sponsored by,
affiliated with, endorsed by or approved by Plaintiff.
47.
On information and belief, Defendants actions described above were and are
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51.
Defendants actions described above have and are continuing to cause irreparable
entitling Plaintiff to remedies set forth in 15 U.S.C. 1117 and 15 U.S.C. 1118.
SECOND CLAIM FOR RELIEF
UNFAIR COMPETITION AND FALSE
DESIGNATION OF ORIGIN (15 U.S.C. 1125(A))
53.
Plaintiff realleges and incorporates by reference as if fully set forth herein the
Plaintiff has continuously and extensively used the FORMULA 707 Mark
throughout the United States in connection with the sale of Plaintiffs goods.
55.
Plaintiffs FORMULA 707 Mark has come to represent and symbolize high
quality, reliable products sold by Plaintiff, including preparations for the care of animals, in
particular horses.
56.
57.
mistake, or to deceive customers into falsely believing that Defendant is approved by, sponsored
by, endorsed by, or otherwise affiliated with Plaintiff in violation of the Lanham Act 43(a) (15
U.S.C. 1125).
58.
above is and was intentional, willful and in reckless disregard for Plaintiffs trademark rights.
59.
60.
61.
Defendants actions described above have and are continuing to cause irreparable
designation of origin under 15 U.S.C. 1125(a) entitling Plaintiff to remedies set forth in 15
U.S.C. 1117 and 15 U.S.C. 1118.
THIRD CLAIM FOR RELIEF
DECEPTIVE TRADE PRACTICES UNDER
THE COLORADO CONSUMER PROTECTION ACT, C.R.S. 6-1-101 ET SEQ.
63.
Plaintiff realleges and incorporates by reference as if fully set forth herein the
On information and belief, in the course of its business Defendant has and
continues to knowingly pass off its goods, services, or property as those of Plaintiff and/or the
FORMULA 707 Mark.
65.
On information and belief, in the course of its business Defendant has and
identified and continues to knowingly identify Defendant and Defendants business and/or goods
with confusingly similar variations of the FORMULA 707 Mark, including but not limited to
Defendants 707 Marks.
67.
Defendants false representations on its website were and are directed to the
market generally, taking the form of widespread, nationwide advertisement, which does not
12
exclude Colorado residents. Defendants goods are closely related and directly compete with
Plaintiffs goods, and are offered and provided through the same markets and channels of trade
to the same relevant consumers, including customers in this Judicial District. Defendants actions
have and do create a significant public impact on actual or potential consumers of Plaintiffs
goods.
68.
defined by the Colorado Consumer Protection Act, C.R.S. 6-1-105(1)(a),(b),(c) (e) or (g) and
Colorado common law.
69.
harm. Defendant has damaged and will continue to damage Plaintiff and its valuable FORMULA
707 Mark causing irreparable harm for which Plaintiff has no adequate remedy at law.
70.
On information and belief, Defendants actions are and were knowing and willful.
71.
be ascertained at trial.
FOURTH CLAIM FOR RELIEF
COMMON LAW UNFAIR COMPETITION AND TRADEMARK INFRINGEMENT
72.
Plaintiff realleges and incorporates by reference as if fully set forth herein the
74.
Plaintiff has used the FORMULA 707 Mark in U.S. commerce, including in the
constitutes a false designation of origin and falsely represents to consumers that Defendants
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Products originate from Plaintiff or that Plaintiff, sponsors, approves of, endorses, or is otherwise
affiliated with Defendant and Defendants Products.
76.
Defendants actions as described herein have caused and are likely to cause
confusion with Plaintiffs established and superior rights and otherwise unfairly compete with
Plaintiff.
77.
and benefit from Plaintiffs goodwill and constitutes trademark infringement and unfair
competition under Colorado common law.
80.
be ascertained at trial.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff respectfully requests judgment and relief against Defendant as
follows:
1.
members, managers, agents, representatives, successors, affiliates, assigns and any entities
14
owned or controlled by Defendants, and all those in active concert and participation with
Defendants, from:
a.
using the FORMULA 707 Mark or any other mark that is likely to cause
confusion with Plaintiffs FORMULA 707 Mark, including but not limited to
Defendants 707 Marks;
b.
using any trademark, service mark, name, logo, domain name, or source
trier of fact for all harm caused by Defendants actions, including Defendants profits, the
damages sustained by Plaintiff, costs of the action, reasonable attorneys fees, and treble
damages and profits as authorized by law;
3.
amounts;
4.
prints, packages, wrappers, receptacles, and any and all advertisements and marketing materials
in Defendants possession bearing the FORMULA 707 Mark or any other word, term, name,
symbol, device, or combination thereof, designation, description or representation that is a
reproduction, counterfeit, copy or colorable imitation of the Plaintiffs FORMULA 707 Mark,
including but not limited to Defendants 707 Marks;
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5.
An award to Plaintiff of such other and further relief as the Court may deem just
and proper.
DEMAND FOR JURY TRIAL
Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiff demands a trial by jury of all
claims so triable.
DATED this 22nd day of March, 2016.
/s/ Michael P. Dulin
Michael P. Dulin
Polsinelli PC
1515 Wynkoop, Suite 600
Denver, CO 80202
Telephone: 303-572-9300
E-mail: mdulin@polsinelli.com
Adam Weiss
Polsinelli PC
161 N. Clark Street, Suite 4200
Chicago, IL 60601
Tele: 312-819-1900
Email: aweiss@polsinelli.com
Mark Deming
Polsinelli PC
161 N. Clark Street, Suite 4200
Chicago, IL 60601
Tele: 312-819-1900
Email: mdeming@polsinelli.com
Attorneys for Plaintiff John Ewing Company
Plaintiffs Address
John Ewing Company
401 North First Street
La Salle, Colorado 80645
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