View
222
Download
0
Category
Preview:
Citation preview
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
1/24
Case No. 3:15-cv-03258-JD
FIRST AMENDED COMPLAINT
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
KILPATRICK TOWNSEND & STOCKTON LLPLARRY W. McFARLAND (Bar # 129668)ANTHONY J. MALUTTA (Bar # 193587)Two Embarcadero Center, 8th FloorSan Francisco, California 94111
Telephone: (415) 576-0200Facsimile: (415) 576-0300Email: lmcfarland@kilpatricktownsend.com, amalutta@kilpatricktownsend.com
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
CLIF BAR & COMPANY, a CaliforniaCorporation,
Plaintiff,v.
KILL CLIFF INC., a Delaware corporation,
Defendant.
Case No. 3:15-cv-03258-JD
FIRST AMENDED COMPLAINTFOR TRADEMARK
INFRINGEMENT, TRADEMARK
DILUTION, AND UNFAIR
COMPETITION (INJUNCTIVE
RELIEF SOUGHT)
Plaintiff Clif Bar & Company (Clif Bar or Plaintiff) complains against Defendant Kill
Cliff Inc. (Kill Cliff or Defendant) as follows:
JURISDICTION, VENUE AND INTRA-DISTRICT ASSIGNMENT
1. Plaintiffs first, second, and third claims arise under the Trademark Act of 1946 (the
Lanham Act). This Court has jurisdiction over such claims pursuant to 28 U.S.C. 1338(a) and
1338(b) (trademark and unfair competition), 28 U.S.C. 1331 (federal question) and 15 U.S.C.
1121 (Lanham Act). This Court has supplemental jurisdiction over the remaining state law claims
under 28 U.S.C. 1367.
2. Venue is proper in this Court under 28 U.S.C. 1391(b) because Defendant
transacts affairs in this district and because a substantial part of the events giving rise to the claims
asserted arose in this district.
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 1 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
2/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 2
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
3. Intra-district assignment to any division of the Northern District is proper under
Local Rule 3-2(c) and the Assignment Plan of this Court as an Intellectual Property Action.
PARTIES
4. Clif Bar is a California corporation with its principal place of business at 1451 66th
Street, Emeryville, California 94608. Clif Bar is the creator, manufacturer and distributor of the
famous CLIF BAR energy and nutrition bar and other enormously popular food products for
health, energy, and nutrition. Clif Bar is the owner of all trademark rights in the famous marks
CLIF BAR and CLIF for energy and nutrition bars.
5. Defendant Kill Cliff is a Delaware corporation with its principal place of business at
3715 Northside Parkway, Building 300, Suite 450, Atlanta, Georgia 30327. Kill Cliff offers for
sale and sells sports recovery drinks and energy and nutrition bars nationwide, including in this
judicial district. Kill Cliff has authorized, directed, and/or actively participated in the wrongful
conduct alleged herein.
FACTS AND ALLEGATIONS COMMON TO ALL CLAIMS
Clif Bars CLIF BAR Energy and Nutrition Bars
6. Clif Bar offers a variety of food and beverage products in the sports, energy, and
nutrition markets under numerous brands, including CLIF BAR energy and nutrition bars, CLIF
ORGANIC TRAIL MIX bars, CLIF BUILDERS bars, CLIF CRUNCH granola bars, and CLIF
KID food bars. Among the many products offered by Clif Bar, its CLIF BAR energy and nutrition
bars are the companys flagship and best-selling products and have been for decades.
7. CLIF BAR energy and nutrition bars have been named by trade magazines,
nutritionists, and consumers alike as a top sports/energy/nutrition bar. Examples of the awards and
recognition received for Clif Bars CLIF BAR energy and nutrition bars include: Best Energy Bar
Award by Harris Poll EquiTrend Study, Health, Consumer Search, Fitness, Mens Health, and
Bicycling; Best Chewy Energy Bar Award by Fox News and Real Simple; The Best
Supermarket Snacks byMens Journal; Top 5 Nutrition Bars byMSN.coms Health & Fitness
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 2 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
3/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 3
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Section; Favorite Energy Bar byRunners World; Editors Choice Award byMountain Biking
and Climbing; Top 3 Trail Snacks byBackpacker; and Top 3 Energy Bars by Competitor.
8. Since at least as early as 1992, Clif Bar has used the mark CLIF BAR on or in
connection with energy and nutrition bars and related sports/energy/nutrition food and beverage
products. For many years, Clif Bar has used the marks CLIF and CLIF BAR, either standing alone
or in combination with other words and/or design elements (collectively, the Clif Bar Marks),
including but not limited to those depicted below:
For many years, the Clif Bar Marks have appeared, and continue to appear, on Clif Bars energy
and nutrition bars in a red rectangular logo.
9. Since the company was founded in 1992, Clif Bar has built one of the most popular
and highly respected sports/nutrition/energy food and beverage brands. For example, in 2010,
Landor Associates LLC, a strategic brand consulting firm, named CLIF BAR The No. 1
Breakaway Brand out of over 2,500 brands, including Facebook, in its study published in Forbes
Magazine.
10. Clif Bar sells its high quality products through numerous retailers across the U.S.,
including but not limited to grocery stores, drug stores, sporting goods stores, convenience stores,
and gas stations. Examples of such retailers include Kroger, Publix, Whole Foods, Trader Joes,
Safeway, Luckys, Lunardis, Costco, Sams Club, Wal-Mart, Target, REI, Walgreens, CVS, and
Nordstrom. Clif Bar also sells its products online on its e-commerce website at
www.clifbarstore.com, as well as through numerous online retailers, including Amazon.
11. Clif Bar has spent very significant amounts promoting its CLIF BAR brand and its
products. Within the past 10 years alone, Clif Bar has spent over $50 million on advertising in
connection with its Clif Bar Marks and the products sold under those marks.
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 3 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
4/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 4
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
12. Clif Bar has extensively advertised its products in various print advertisements,
such as Runners World, Running, Climbing Magazine, Velo News, and in radio and television
advertisements. Clif Bar also advertises the products sold under its Clif Bar Marks on the Internet
in connection with its website (www.clifbar.com), Facebook page (www.facebook.com/clifbar),
Twitter feed (https://twitter.com/clifbar), and Instagram account (http://instagram.com/
clifbarcompany#), and it makes extensive use of promotions, sweepstakes, and e-mail blasts to
draw its target consumers to these sites.
13. Clif Bar sponsors numerous athletic events, athletic teams, and famous athletes
across the United States to increase the publics awareness of the Clif Bar Marks and Clif Bars
products. Examples of the various athletic events sponsored by Clif Bar include, but are not
limited to, theBig Sur Marathon,Escape from Alcatraz, Sea Otter Classic, San Diego Triathlon,
UCLA Pac 10 Challenge, Twin Cities Marathon, Disneyland Half Marathon, Maine Coast Half
Marathon, Telluride Ski Resort Event,Houston Marathon, Rock N Roll Marathon, Bike to Work
Month, Yoga Journal Conference, Ski Sampling in Minnesota, LA Fit Expo, and Maverick Surf
Contest. Clif Bar regularly provides free samples of CLIF BAR energy and nutrition bars to
participants and onlookers at these events. Clif Bar also sponsors over 1,500 famous professional
and amateur athletes (known as Team Clif), who compete in various sports such as running,
surfing, triathlons, bicycling, climbing, snowboarding, and skiing. Clif Bar also sponsors the well-
known Garmin cycling team that races the Tour de France and other similar events.
14. Since 2010 alone, sales of CLIF BAR energy and nutrition bars have exceeded $1
billion. Clif Bars branding strategy emphasizes its delicious and healthy food products and the
high quality of those products. Clif Bar uses only the highest-quality ingredients available, and
avoids any ingredients sourced from genetically-modified organisms. Clif Bar exercises strict
quality control over the production, distribution, manufacturing, and sale of its products.
15. Due to Clif Bars long and continuous use of its Clif Bar Marks in connection with
its energy and nutrition bars since at least as early as 1992, as well as the high quality of those
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 4 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
5/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 5
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
bars, the Clif Bar Marks are widely recognized by the general consuming public of the United
States as an indicator of the source of Clif Bars energy and nutrition bars.
16. As a result of Clif Bars extensive use and promotion of its energy and nutrition
bars in connection with its Clif Bar Marks, Clif Bar has built and now owns enormously valuable
goodwill symbolized by the Clif Bar Marks.
17. Clif Bar has developed very strong common law rights in the Clif Bar Marks
through its extensive use thereof, and additionally has secured numerous federal trademark
registrations to protect the Clif Bar Marks in the United States, as well as in other jurisdictions.
18. Clif Bar owns numerous federal registrations of the Clif Bar Marks in the United
States. Representative registrations issued by the U.S. Patent and Trademark Office include, but
are not limited to, Registration Nos. 2,143,787; 2,573,420; 3,842,286; and 3,842,287. True and
correct copies of these registrations are attached as Exhibit A.
19. All of the foregoing registrations are valid, subsisting, and in full force and effect.
Registrations Nos. 2,143,787 and 2,573,420 are incontestable pursuant to Section 15 of the
Lanham Act, 15 U.S.C. 1065. These incontestable registrations serve as conclusive evidence of
Clif Bars ownership of the underlying marks and of its exclusive rights to use these marks in
commerce on or in connection with all of the goods identified in the registrations, as provided by
Section 33(b) of the Lanham Act, 15 U.S.C. 1115(b).
20. Because of the high degree of inherent and acquired distinctiveness of the Clif Bar
Marks, the length of time and extent to which Clif Bar has used the Clif Bar Marks, the vast
advertising and publicity of which the Clif Bar Marks have been the subject, the substantial trading
area in which the Clif Bar Marks have been and continue to be used, and the high degree of
consumer recognition of the Clif Bar Marks, the Clif Bark Marks were famous and well-known
trademarks widely recognized by the general consuming public of the United States as a
designation of source of Clif Bars goods and deserving of a broad scope of legal protection prior
to any actual or constructive priority date Kill Cliff may claim.
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 5 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
6/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 6
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Defendant Kill Cliffs Infringing Energy and Nutrition Bars
21. Notwithstanding Clif Bars exclusive use of the Clif Bar Marks for energy and
nutrition bars for almost 25 years, Defendant Kill Cliff recently began offering a competing line of
energy and nutrition bars bearing the confusingly similar and diluting KILL CLIFF mark.
22. On or about July 24, 2014, Kill Cliff announced the launch of its new KC BAR
energy and nutrition bar (the KC Bar). Upon information and belief, the KC Bar was first
offered for sale on Kill Cliffs www.killcliff.com website and elsewhere in the following weeks,
and has been sold and distributed nationwide. A representative image of the KC Bar is below.
Prior to this launch, and upon information and belief, Kill Cliff had offered primarily sports drinks
and nutritional supplements, but had not sold or offered for sale food products of any kind.
23. The packaging for Kill Cliffs KC Bar prominently bears the KILL CLIFF mark, set
off in red text, on the front of the packaging. The KILL CLIFF mark incorporates Clif Bars CLIF
mark in its entirety, and the CLIFF portion of the KILL CLIFF mark is pronounced identically to
Clif Bars CLIF mark, differing only in the addition of another F. In light of these similarities, it
is apparent that Kill Cliff seeks to take a free ride on the enormous success of Clif Bars CLIF
mark and other Clif Bar Marks in connection with energy and nutrition bars, and to mislead
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 6 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
7/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 7
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
consumers into believing that its KC Bar is somehow affiliated or associated with Clif Bar and its
famous Clif Bar Marks.
24. The infringement in Kill Cliffs KC Bar packaging is significantly exacerbated by
the manner in which Kill Cliff advertises, markets, and distributes the KC Bar itself, which
prominently associates the product not with the KC BAR mark, but instead with the KILL CLIFF
house mark.
25. For example, Kill Cliff advertises the KC Bar on its website at www.killcliff.com.
As seen in the representative screenshots below, however, every reference to the KC Bar is made
on a page that prominently features the KILL CLIFF mark, and in some cases images of the
conspicuously-branded KILL CLIFF sports drinks:
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 7 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
8/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 8
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
26. Notably, the KC Bars packaging refers consumers directly to Kill Cliffs website at
www.killcliff.com, where the KC Bars are advertised as shown above. Consumers in the Internet
age may well treat a products website as an extension of its physical packaging, further
reinforcing the packagings branding (which here, of course, is infringing and diluting the Clif Bar
Marks) and expanding upon the packagings nutritional and informational content. Even the U.S.
Food and Drug Administration (FDA) recognizes the association between a products packaging
and its website andat least when a products packaging directly refers consumers to a website
will cite manufacturers for labeling violations occurring in the packaging and on the website. See,
e.g., FDAs March 17, 2015 letter to Kind, LLC, available at www.fda.gov/ICECI/
EnforcementActions/WarningLetters/ucm440942.htm (identifying labeling violations both on
product packaging and on the website referenced in that packaging) (last visited Nov. 11, 2015).
27. As with its website advertising, Kill Cliffs social media and online marketing for
the KC Bar also downplays (or ignores entirely) the KC BAR mark, and instead advertises the
energy and nutrition barslike its sports drinksonly under a prominent and infringing KILL
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 8 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
9/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 9
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
CLIFF mark. Shown below are representative screenshots of Kill Cliffs online advertising for its
KC Bars, including on Facebook:
28. Also exacerbating this infringement and dilution is the manner in which Kill Cliff
advertises and distributes samples of the KC Bar at numerous races and other events around the
country where sports enthusiasts gather (including events for which Clif Bar is also a sponsor or
corporate attendee). At these events, Kill Cliff distributes free KC Bars to attendees from tents,
kiosks, or otherwise in areas emblazoned with signage bearing only the KILL CLIFF mark. A
consumer given a free energy and nutrition bar in front of such signage may naturally be confused
into thinking she has actually received a bar from Clif Bar, the owner of the enormously popular
CLIF BAR energy and nutrition bars and associated Clif Bar Marks, when of course this is not the
case.
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 9 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
10/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 10
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29. It appears that Kill Cliffundoubtedly aware that conspicuous use of the KILL
CLIFF mark on its energy and nutrition bars would cause inevitable confusion and association
with the famous Clif Bar Marks and make it liable for trademark infringement and dilution
believes it can somehow circumvent this liability by using the KC acronym instead of KILL
CLIFF as the name of its energy and nutrition bar. This circumvention fails because the KC Bar
packaging still prominently features the KILL CLIFF mark and Kill Cliff is otherwise marketing
its KC Bars through multiple channels in blatant association with the infringing and dilutive KILL
CLIFF mark.
30. In light of its packaging and marketing strategy, Kill Cliffs infringing KC Bars are
likely to deceive, confuse, and mislead purchasers and prospective purchasers into believing that
these unlicensed and unauthorized products are either offered or authorized by Clif Bar, when in
fact they are not. Consumers perceiving a defect, lack of quality, or any other irregularity in Kill
Cliffs infringing KC Bars may well ascribe these deficiencies to Clif Bar, tarnishing its reputation
irreparably.
31. Kill Cliffs conduct is intentionally fraudulent, malicious, willful and wanton.
FIRST CLAIM FOR RELIEF
For Federal Trademark Infringement
(15 U.S.C. 1114-1117; Lanham Act 32)
32. Clif Bar repeats and re-alleges each and every allegation contained in the preceding
paragraphs in this First Amended Complaint, and incorporates them herein by reference.
33. Clif Bar owns the Clif Bar Marks and numerous U.S. federal registrations of the
Clif Bar Marks for use in connection with energy and nutrition bars, as discussed above.
34. Kill Cliffs distribution, marketing, promotion, offering for sale, and sale of energy
and nutrition bars in the infringing KC Bar packaging and/or in prominent connection with the
KILL CLIFF house mark is likely to cause confusion, mistake, or deception as to the source,
affiliation, or sponsorship of Kill Cliffs bars. As a result of Kill Cliffs unauthorized use of a
mark in connection with energy and nutrition bars that is confusingly similar to Clif Bars federally
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 10 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
11/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
registered Clif Bar Marks, the public is likely to believe that Kill Cliffs goods have been
manufactured by, approved by, or are otherwise affiliated with Clif Bar, when in fact they are not.
35. Kill Cliffs unauthorized use of a mark that is confusingly similar to the Clif Bar
Marks falsely represents Kill Cliffs energy and nutrition bars as emanting from or being
authorized by Clif Bar and places beyond Clif Bars control the quality of the products bearing or
being offered under the Clif Bar Marks.
36. Kill Cliffs infringement of Clif Bars registered Clif Bar Marks is willful, intended
to reap the benefit of the goodwill of Clif Bar, and violates Section 32(1) of the Lanham Act, 15
U.S.C. 1114(1).
37. As a direct and proximate result of Kill Cliffs infringing activities, Clif Bar has
suffered irreparable harm and damage to its reputation and goodwill. Kill Cliffs conduct will
continue both to harm Clif Bar and deceive the public unless enjoined by this Court. Clif Bar has
no adequate remedy at law.
SECOND CLAIM FOR RELIEF
For Federal Unfair Competition (False Designation of Origin and False Description)
(15 U.S.C. 1125(a); Lanham Act 43(a))
38. Clif Bar repeats and re-alleges each and every allegation contained in the preceding
paragraphs in this First Amended Complaint, and incorporates them herein by reference.
39. Kill Cliffs distribution, marketing, promotion, offering for sale, and sale of energy
and nutrition bars in the infringing KC Bar packaging and/or otherwise in prominent connection
with the KILL CLIFF house mark tends falsely to describe Kill Cliffs energy and nutrition bars
and is likely to cause confusion, mistake or deception as to the source, affiliation, or sponsorship of
Kill Cliffs energy and nutrition bars, by and to the detriment of Clif Bar.
40. Kill Cliffs conduct is willful, intended to reap the benefit of Clif Bars goodwill,
and violates Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A).
41. As a direct and proximate result of Kill Cliffs infringing activities, Clif Bar has
suffered irreparable harm and damage to its reputation and goodwill. Kill Cliffs conduct will
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 11 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
12/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 12
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
continue both to harm Clif Bar and deceive the public unless enjoined by this Court. Clif Bar has
no adequate remedy at law.
THIRD CLAIM FOR RELIEF
For Federal Trademark Dilution
(15 U.S.C. 1125(c); Lanham Act 43(c))
42. Clif Bar repeats and re-alleges each and every allegation contained in the preceding
paragraphs in this First Amended Complaint, and incorporates them herein by reference.
43. For more than two decades, Clif Bar has exclusively and continuously promoted
and used its registered Clif Bar Marks throughout the United States.
44. The Clif Bar Marks are famous trademarks under Section 43(c)(2)(A) of the
Lanham Act, 15 U.S.C. 1125(c)(2)(A), in that they are widely recognized by the general
consuming public of the United States as a designation of the source of Clif Bars goods.
45. The Clif Bar Marks became famous and well-known symbols of Clif Bar and its
products before Kill Cliff commenced its unlawful use of the KILL CLIFF mark and related
activities in connection with energy and nutrition bars.
46. Kill Cliffs use of the KILL CLIFF mark and related activities in connection with
energy and nutrition bars are likely to dilute, do dilute, and will continue to dilute the
distinctiveness of the famous Clif Bar Marks, in violation of Section 43(c) of the Lanham Act, 15
U.S.C. 1125(c), by eroding the publics exclusive identification of the famous Clif Bar Marks
with Clif Bar, and otherwise lessening the capacity of the Clif Bar Marks to identify and
distinguish Clif Bars goods.
47. Kill Cliffs unauthorized use of the KILL CLIFF mark and related activities in
connection with energy and nutrition bars is intended to, and has the effect of, trading on Clif Bars
reputation and goodwill and causing dilution of the famous Clif Bar Marks.
48. Upon information and belief, Kill Cliff does not own any federal or state
registrations or trademark applications for any mark that includes, in whole or in part, any of the
Clif Bar Marks for use in connection with energy and nutrition bars, and cannot assert any rights in
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 12 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
13/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 13
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
the Clif Bar Marks that predate Clif Bars first use, actual or constructive, of the Clif Bar Marks in
connection with energy and nutrition bars.
49. Kill Cliffs actions demonstrate an intentional, willful, and malicious intent to trade
on the goodwill associated with the Clif Bar Marks or to cause dilution of the marks, to the great
and irreparable injury of Clif Bar.
50. As a direct and proximate result of Kill Cliffs unlawful activities, Clif Bar has
suffered irreparable harm and damage to its reputation and goodwill. Kill Cliffs conduct will
continue both to harm Clif Bar and deceive the public unless enjoined by this Court. Clif Bar has
no adequate remedy at law.
FOURTH CLAIM FOR RELIEF
For California State Trademark Dilution
(CAL. BUS. & PROF. CODE 14247)
51. Clif Bar repeats and re-alleges each and every allegation contained in the preceding
paragraphs in this First Amended Complaint, and incorporates them herein by reference.
52. For more than two decades, Clif Bar has exclusively and continuously promoted
and used its registered Clif Bar Marks throughout the United States, including throughout the State
of California.
53. The Clif Bar Marks are famous trademarks under CAL. BUS. & PROF. CODE
14247, in that they are widely recognized by the general consuming public of the State of
California, or by a geographic area of the State of California, as a designation of the source of Clif
Bars goods.
54. The Clif Bar Marks became famous and well-known symbols of Clif Bar and its
products throughout the State of California or within a geographic area of the State of California
before Kill Cliff commenced its unlawful use of the KILL CLIFF mark and related activities in
connection with energy and nutrition bars.
55. Kill Cliffs use of the KILL CLIFF mark and related activities in connection with
energy and nutrition bars are likely to dilute, do dilute, and will continue to dilute the
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 13 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
14/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 14
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
distinctiveness of the famous Clif Bar Marks, in violation of CAL.BUS.&PROF.CODE 14247, by
eroding the publics exclusive identification of the famous Clif Bar Marks with Clif Bar, and
otherwise lessening the capacity of the Clif Bar Marks to identify and distinguish Clif Bars goods.
56. Kill Cliffs unauthorized use of the KILL CLIFF mark and related activities in
connection with energy and nutrition bars are intended to, and have the effect of, trading on Clif
Bars reputation and goodwill and causing dilution of the famous Clif Bar Marks.
57. Kill Cliffs actions demonstrate an intentional, willful, and malicious intent to trade
on the goodwill associated with the Clif Bar marks or to cause dilution of the marks, to the great
and irreparable injury of Clif Bar.
58. As a direct and proximate result of Kill Cliffs unlawful activities, Clif Bar has
suffered irreparable harm and damage to its reputation and goodwill. Kill Cliffs conduct will
continue both to harm Clif Bar and deceive the public unless enjoined by this Court. Clif Bar has
no adequate remedy at law.
FIFTH CLAIM FOR RELIEF
For California Unfair Competition
(CAL. BUS. & PROF. CODE 17200)
59. Clif Bar repeats and re-alleges each and every allegation contained in the preceding
paragraphs in this First Amended Complaint, and incorporates them herein by reference.
60. Kill Cliffs infringement of Clif Bars Clif Bar Marks constitutes unlawful, unfair
or fraudulent business act[s] or practice[s] and unfair, deceptive, untrue or misleading advertising
within the meaning of California Business & Professions Code Section 17200.
61. As a direct and proximate result of Kill Cliffs conduct, Clif Bar has suffered
irreparable harm and damage to its reputation and goodwill. Kill Cliffs conduct will continue
both to harm Clif Bar and deceive the public unless enjoined by this Court. Clif Bar has no
adequate remedy at law.
62. As a consequence of Kill Cliffs actions, Clif Bar is entitled to injunctive relief and
an order that, among other things, Kill Cliff permanently cease the manufacture, use, display or
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 14 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
15/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 15
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
sale of energy and nutrition bars and any other similar products in connection with the KILL
CLIFF mark.
SIXTH CLAIM FOR RELIEF
For Common Law Unfair Competition
63. Clif Bar repeats and re-alleges each and every allegation contained in the preceding
paragraphs in this First Amended Complaint, and incorporates them herein by reference.
64. Kill Cliffs distribution, marketing, promotion, offering for sale, and sale of energy
and nutrition bars in the infringing KC Bar packaging and/or otherwise in prominent connection
with the KILL CLIFF house mark tends falsely to describe Kill Cliffs energy and nutrition bars
and is likely to cause confusion, mistake or deception as to the source, affiliation, or sponsorship of
Kill Cliffs energy and nutrition bars, by and to the detriment of Clif Bar.
65. Kill Cliffs conduct falsely represents that its goods emanate from or are otherwise
authorized by or affiliated with Clif Bar, and places beyond Clif Bars control the quality of such
goods.
66. Kill Cliffs conduct is willful, intended to reap the benefit of Clif Bars goodwill,
and constitutes common law unfair competition.
67. As a direct and proximate result of Kill Cliffs infringing activities, Clif Bar has
suffered irreparable harm and damage to its reputation and goodwill. Kill Cliffs conduct will
continue both to harm Clif Bar and deceive the public unless enjoined by this Court. Clif Bar has
no adequate remedy at law.
PRAYER FOR JUDGMENT
WHEREFORE, Clif Bar respectfully demands judgment as follows:
1. That an injunction be issued enjoining Kill Cliff, and any employees, agents,
servants, officers, representatives, directors, attorneys, successors, affiliates, assigns, and entities
owned or controlled by Kill Cliff, and all those in active concert or participation with Kill Cliff,
and each of them who receives notice directly or otherwise of such injunction from:
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 15 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
16/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 16
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
a) producing, sourcing, importing, selling, offering for sale, distributing,
advertising or promoting any energy, nutrition, and other food bars using, displaying, or offered in
connection with any designations, designs, words or symbols that so resemble any of the Clif Bar
Marks as to be likely to cause confusion, mistake or deception;
b) using any word, term, name, symbol, device or combination of them that causes
or is likely to cause confusion, mistake or deception as to the affiliation or association of Kill Cliff
or its energy, nutrition, or other food bars with Clif Bar or as to the origin of Kill Cliffs goods, or
any false designation of origin, false or misleading description or representation of fact;
c) using any false designation of origin or false description, or performing any act
which is likely to lead members of the trade or public to believe that any energy, nutrition, or other
food bar manufactured, imported, distributed, offered for sale, or sold by Kill Cliff, or any service
offered or rendered by Kill Cliff, is in any manner associated or connected with Clif Bar, or is
licensed, sponsored, approved or authorized by Clif Bar;
d) using any word, term, name, symbol, device or combination of them in
connection with Kill Cliffs energy, nutrition, or other food bars that dilutes or is likely to dilute
the distinctiveness of Clif Bars Clif Bar Marks;
e) engaging in any other activity constituting unfair competition with Clif Bar, or
constituting infringement or dilution of the Clif Bar Marks;
f) disposing of, destroying, altering, moving, removing, concealing, tampering
with, or in any manner secreting any business records (including computer records) of any kind,
including invoices, correspondence, books of account, receipts or other documentation relating or
referring in any manner to any energy, nutrition, or other food bars offered in connection with the
mark KILL CLIFF, or any other mark or designation that is confusingly similar to, or dilutive of,
any of the Clif Bar Marks; and
g) instructing, assisting, aiding or abetting any other person or entity in engaging
in or performing any of the activities referred to in subparagraphs (a) through (f) above.
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 16 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
17/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 17
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
2. Directing that Kill Cliff recall from all distributors, retailers, or other recipients any
and all infringing or dilutive products and packaging sold or distributed by Kill Cliff and, upon
recall, to deliver such goods to Clif Bars counsel for destruction at Kill Cliffs cost.
3. Directing that Kill Cliff cancel any advertising for energy, nutrition, and other food
bars using the mark KILL CLIFF, or any other mark or designation that is confusingly similar to,
or dilutive of, any of the Clif Bar Marks, regardless of medium.
4. Directing that Kill Cliff deliver to Clif Bars counsel for destruction at Kill Cliffs
cost all signs, products, packaging, promotional material, advertising material, catalogs, and any
other items that bear the mark KILL CLIFF, or any other mark or designation that is confusingly
similar to, or dilutive of, any of the Clif Bar Marks, in connection with energy, nutrition, and other
food bars.
5. Directing such other action as the Court may deem appropriate to prevent the trade
and public from deriving the erroneous impression that any energy, nutrition, or other food bars
offered, advertised, or promoted by or on behalf of Kill Cliff are authorized by Clif Bar or related
in any way to Clif Bars products or services.
6. Directing that Kill Cliff file with the Court and serve upon Clif Bars counsel within
thirty (30) days after entry of judgment a report in writing under oath setting forth in detail the
manner and form in which Kill Cliff has complied with the above.
7. Awarding Clif Bar such other and further relief as the Court may deem just and
proper.
[Signature on following page]
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 17 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
18/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
This 16th day of November, 2015.
Respectfully submitted,
KILPATRICK TOWNSEND & STOCKTON LLP
By: /s/ Larry W. McFarland_________________
LARRY W. McFARLAND (Bar # 129668)ANTHONY MALUTTA (Bar # 193587)Two Embarcadero Center, 8th FloorSan Francisco, California 94111Telephone: (415) 576-0200Facsimile: (415) 576-0300Email: lmcfarland@kilpatricktownsend.com
amalutta@kilpatricktownsend.com
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 18 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
19/24
Case No. 3:15-cv-03258-JDFIRST AMENDED COMPLAINT
Page 19
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
CERTIFICATE OF SERVICE
The undersigned certifies that a true and correct copy of the foregoing document was filed
electronically using the CM/ECF system on November 16, 2015, which will automatically notify
and effect service on all counsel of record for Defendant, who are deemed to have consented to
electronic service via the Courts CM/ECF system:
/s/ Larry W. McFarlandLarry W. McFarlandAttorney for Plaintiff
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 19 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
20/24EXHIBIT A PAGE 20
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 20 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
21/24EXHIBIT A PAGE 21
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 21 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
22/24EXHIBIT A PAGE 22
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 22 of 24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
23/24
7/24/2019 Clif Bar v. Kill Cliff - amended trademark complaint.pdf
24/24
Case 3:15-cv-03258-JD Document 26 Filed 11/16/15 Page 24 of 24
Recommended