"Chicago Mix" lawsuits

UNITED STATES DISTRICT COURTDISTRICT OF MINNESOTA

Candyland, Inc.,

Plaintiff,

vs.

Cornfields, Inc.,

Defendant.

)))))))))))

Case No. ____________________

COMPLAINT(Jury Trial Demanded)

Plaintiff Candyland, Inc. (Candyland), for its Complaint against Defendant

Cornfields, Inc. (Cornfields), alleges as follows:

PARTIES

1. Candyland is a Minnesota corporation having a principal place of business

in St. Paul, Minnesota.

2. Upon information and belief, Cornfields is an Illinois corporation with its

principal place of business in Waukegan, Illinois.

JURISDICTION AND VENUE

3. This Court has subject matter jurisdiction over the claims asserted in this

action pursuant to 15 U.S.C. 1121(a) and 28 U.S.C. 1331, 1338, and 1367. The

claims alleged in this Complaint arise under the Lanham Act, 15 U.S.C. 1051, et seq.,

Minn. Stat 325D.44, et seq., and Minnesota Common Law.

4. This Court has personal jurisdiction over Cornfields because Cornfields

does significant business in the State of Minnesota.

CASE 0:14-cv-03119 Document 1 Filed 08/07/14 Page 1 of 11

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5. Venue is proper in this Court pursuant to 28 U.S.C. 1391(b)(1) and (c)(2).

FACTS

Candylands CHICAGO MIX Popcorn

6. Candyland is a small-family owned business that has been in business for

over 80 years and specializes in the sale of high-quality popcorn, candy and fine

chocolates.

7. Candylands popcorn comes in a variety of flavors and is popped fresh,

hand-stirred, and bagged every day.

8. Candyland is the owner of federal trademark Registration No. 1,713,984 for

the trademark CHICAGO MIX for use in connection with flavored popcorn.

9. Specifically, Candyland uses its CHICAGO MIX mark in connection

with its combination of traditional seasoned popcorn mixed with caramel and cheddar

flavored popcorns. Candylands CHICAGO MIX popcorn is one of the companys

best sellers.

10. For over two decades, Candyland has been continually and exclusively

using the CHICAGO MIX mark nationwide in interstate commerce to identify its goods

and distinguish its goods from those made and sold by others.

11. Due to the continual use of the CHICAGO MIX mark by Candyland, the

mark has acquired secondary meaning as indicating a single source of Candylands

goods. The CHICAGO MIX mark has further come to indicate Candyland as the single

source of such quality goods.


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12. Candyland has expended considerable time, resources, and effort in

promoting the CHICAGO MIX mark and developing substantial goodwill associated

therewith.

13. The CHICAGO MIX mark is an extremely important asset to Candyland

and Candyland has enforced the mark against infringers and potential infringers.

Cornfields Infringing CHICAGO MIX Popcorn

14. Upon information and belief, Cornfields is a business in the private label

snack market.

15. Upon information and belief, Cornfields manufactures traditional and

organic popcorn products in a variety of flavors, including a line of flavored popped

popcorn products under the G.H. CRETORS trademark.

16. Upon information and belief, Cornfields G.H. CRETORS line of

flavored popcorn is sold in stores throughout the United States, including Minnesota. In

Minnesota, the G.H. CRETORS line is sold in stores such as Whole Foods, Costco, and

Hy Vee.

17. Upon information and belief, consumers can also purchase G.H.

CRETORS popcorn directly from the G.H. CRETORS website, www.ghcretors.com.

18. Upon information and belief, Cornfields G.H. CRETORS line consists of

a number of flavors of popcorn, including a combination of cheese and caramel corn

mixed together, which Cornfields refers to as CHICAGO MIX.

19. The CHICAGO MIX mark used in connection with Cornfields G.H.

CRETORS flavored popcorn is identical to Candylands CHICAGO MIX mark.


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20. Without Candylands permission, authorization, approval or consent, and

with actual knowledge of Candylands prior rights in its CHICAGO MIX trademark,

Cornfields commenced use of the confusingly similar CHICAGO MIX mark in

connection with flavored popcorn.

21. Cornfields use of the CHICAGO MIX mark in connection with its

flavored popcorn is likely to cause confusion, mistake, or deception. Consumers have

and are likely to continue to mistakenly believe that the flavored popcorn Cornfields

offers as CHICAGO MIX is sponsored, endorsed, or approved by Candyland, or is in

some other way affiliated, connected, or associated with Candyland, all to the detriment

of Candyland.

22. Upon information and belief, unlike Candylands popped popcorn, which is

popped fresh, hand-stirred, and bagged every day, the G.H. CRETORS line is pre-

bagged and shipped to various stores throughout the country for sale to the consumer

23. Upon information and belief, Candyland and Cornfields target the same

class of consumer.

24. Upon information and belief, Cornfields markets its G.H. CRETORS

popcorn in the same channels of trade used by Candyland to market its CHICAGO

MIX flavored popcorn.

25. Candyland has demanded that Cornfields cease all use of the CHICAGO

MIX mark in connection with Cornfields sale of flavored popcorn, but Cornfields has

refused. Despite Candylands objection, Cornfields continues to use the identical and

confusingly similar CHICAGO MIX mark in connection with closely related products.


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26. Upon information and belief, Cornfields intentionally adopted the

confusingly similar CHICAGO MIX mark and incorporated in order to trade off the

goodwill Candyland has created in its CHICAGO MIX mark.

Cornfields Disparagement of Candyland

27. On August 1, 2014, and in recognition of Candylands CHICAGO MIX

mark, Facebook removed Cornfields improper use of the CHICAGO MIX mark in

connection with Cornfields promotion of its flavored popcorn through social media

channels.

28. Then next day, August 2, 2014, Zoe L. posted the following on

Yelp.com:

Hate to break the candy-coated facade, but this company'sownership is completely out of whack. I held great nostalgiaand respect for Candyland until a recent encounter with thebusiness owner-- their communications with me werecompletely unprofessional, aggressive and misplaced. If youcare about how businesses are run, think twice before visitingthis storefront.

I'll opt for a bag of Cretor's Chicago Mix in the future, theirsis actually better (guaranteed never stale!) and delicious. Ipersonally vow to spend my hard-earned money elsewhere.

29. Upon information and belief, Zoe L. is sponsored by, affiliated with, an

agent of, or employed by Cornfield.

COUNT I(Trademark Infringement of a Registered Mark)

(Lanham Act 32, 15 U.S.C. 1114)

30. Candyland restates and incorporates by reference the allegations in the

previous paragraphs of this Complaint.


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31. Cornfields unauthorized use of the CHICAGO MIX mark in connection

with flavored popcorn is likely to cause confusion, cause mistake, or to deceive as to the

affiliation, connection, or association of Cornfields with Candyland, or as to the origin,

sponsorship, or approval of Cornfields popcorn products by Candyland. This

unauthorized use of CHICAGO MIX constitutes trademark infringement under 15

U.S.C. 1114.

32. Cornfields unlawful actions have caused, and will continue to cause,

Candyland irreparable harm unless enjoined.

33. Cornfields has profited from its unlawful actions and has been unjustly

enriched to the detriment of Candyland. Cornfields unlawful actions have caused

Candyland monetary damage in an amount presently unknown, but in an amount to be

determined at trial.

COUNT II(Federal Unfair Competition)

(Lanham Act 43(a), 15 U.S.C. 1125(a))



35. Cornfields unauthorized use of CHICAGO MIX in connection with

flavored popcorn is a false designation of origin, false or misleading description of fact,

and a false or misleading representation of fact.

36. Cornfields unauthorized use of CHICAGO MIX in connection with

flavored popcorn is likely to cause confusion, or to cause mistake, or to deceive as to the

affiliation, connection, or association of Cornfields with Candyland, or as to the origin,


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sponsorship, or approval of Cornfields flavored popcorn or commercial activities by

Candyland.







COUNT III(Minnesota Deceptive Trade Practices Act)

(Minn. Stat. 325D.44, et seq.)




with flavored popcorn is likely to cause confusion, or to cause mistake, or to deceive as to

the affiliation, connection, or association of Cornfields with Candyland, or as to the

origin, sponsorship, or approval of Cornfields flavored popcorn or commercial activities

by Candyland and constitutes unfair and deceptive trade practices under the Deceptive

Trade Practices Act of the State of Minnesota.

41. Upon information and belief, Cornfields, in the course of business has

disparaged the goods, services, and business of Candyland through false or misleading

representations of fact.


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42. Cornfields unlawful actions have caused and will continue to cause

Candyland irreparable harm unless enjoined, and its actions also create a risk of future

harm.





COUNT IV(Common Law Unfair Competition)




with flavored popcorn is likely to cause confusion, or to cause mistake, or to deceive as to

the affiliation, connection, or association of Cornfields with Candyland, or as to the

origin, sponsorship, or approval of Cornfields flavored popcorn or commercial activities

by Candyland and constitutes common law unfair competition under Minnesota state law.

46. Cornfields disparagement of Candyland constitutes common law unfair

competition.






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CONCLUSION

WHEREFORE, Candyland prays that the Court enter judgment:

1. In favor of Candyland and against Cornfields on all of Candylands claims;

2. Permanently enjoining and restraining Cornfields, its parent company,

subsidiaries, affiliates, sister companies, officers, agents, servants, employees, attorneys,

and all others in active concert or participation with Cornfields from:

A. Using the mark CHICAGO MIX or any confusingly similar

designation alone or in combination with other words or designs, as a trademark,

trade name component or otherwise, to market, advertise, or identify goods and

services not produced or authorized by Candyland;

B. Unfairly competing with Candyland in any manner whatsoever;

C. Causing likelihood of confusion or injury to business reputation of

the distinctiveness of Candylands CHICAGO MIX mark; and

D. Committing any other act that infringes Candylands CHICAGO

MIX mark or constitutes an act of trademark or service mark infringement,

contributory infringement, or unfair competition under federal common law or

Minnesota state law.

3. Requiring Cornfields to deliver up, or cause to be delivered up, for

destruction all labels, signs, prints, packages, wrappers, receptacles, advertisements, and


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all other materials in Cornfields possession or control that infringe Candylands

CHICAGO MIX mark;

4. Requiring Cornfields to account for and pay over to Candyland the amount

of Candylands damages pursuant to 15 U.S.C. 1117;


of Cornfields profits pursuant to 15 U.S.C. 1117;

6. Requiring Cornfields to account for and pay over to Candyland the costs of

the action pursuant to 15 U.S.C. 1117;

7. Finding this case is exceptional and trebling any damage award pursuant to

15 U.S.C. 1117;

8. Finding this case is exceptional and requiring Cornfields to pay over to

Candyland its attorneys fees incurred in connection with this case pursuant to 15 U.S.C.

1117;


of Candylands damages, together with costs and disbursements, including costs of

investigation and reasonable attorneys fees;

10. Requiring Cornfields to pay Candyland pre- and post- judgment interest,

pursuant to Minn. Stat. 549.09; and

11. Awarding Candyland such other relief as the Court may deem just and

equitable.


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Respectfully submitted,

WINTHROP & WEINSTINE, P.A.

Dated: August 7, 2014 s/David A. DavenportDavid A. Davenport, #285109Erin O. Dungan, #386430

3500 Capella Tower225 South Sixth StreetMinneapolis, MN 55402Tel: (612) 604-6400Fax: (612) 604-6800E-Mail: [email protected]

[email protected]

Attorneys for Plaintiff Candyland, Inc.

9371407v2


JS 44 (Rev. 12112) CIVIL COVER SHEETThe JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except asprovided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court forthepurpose of initiating the civil docket sheet. (.SEE INSTRUC710NS ON NEXT PAGE OF THIS FORM.)

I. (a) PLAINTIFFS DEFENDANTS

Candyland,Inc.

(b) County of Residence of First Listed Plaintiff fuI_IllS~_QQ._UJlty _(EXCEPT IN u.s. PLAINTIFF CASES)

(c) Attorneys (Firm Name, Address, and Telephone Number)

Winthrop& Weinstine,P.A.,3500CapellaTower,225SouthSixthStreet,Minneapolis,MN55402(612)604-6400

Attorneys (If Known)

Cornfields,Inc.

County of Residence of First Listed Defendant J"ak~COLJl1!Y,lJJln9j____ _(IN u.s. PLAINl1H" CASES ONLY)

NOTE: IN LAND CONDEMNATION CASES, USE THE LOCA nON OFTHE TRACT OF LAND INVOLVED.

II. BASIS OF JURISDICTION (Place an "X" in One Box Only)

01 u.s. Government l1'l3 Federal QuestionPlaintiff (U.S. Government Not a Party)

02 U.S. Government 04 DiversityDefendant (Indicate Citizenship of Parties in Item JJJ)

III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an "X" in One Box for Plaintiff(For Diversity Cases Only) and One Box for Defendant)

PTF DEF PTF DEFCitizen of This State 0 I 0 I Incorporated or Principal Place 0 4 0 4

of Business In This State

o 2 0 2 Incorporated Gild Principal Placeof Business In Another State

Citizen of Another State o 5 05

Citizen or Subject of aForeign Country

o 3 0 3 Foreign Nation o 6 06

IV. NATURE OF SUIT (Place an "X" in One Box Only)Ib&1~i'4%%\2;';@tmN~~ftl~%11t1fi0';1\~o 110 Insuranceo 120 Marineo 130 Miller Acto 140 Negotiable Instrumento 150 Recovery of Overpayment

& Enforcement of Judgmento 15I Medicare Acto 152 Recovery of Defaulted

Student Loans(Excludes Veterans)

o 153 Recovery of Overpaymentof Veteran's Benefits

o 160 Stockholders' Suitso 190 Other Contracto 195 Contract Product Liabilityo 196 Franchise

PERSONAL INJURYo 365 Personal Injury -

Product Liabilityo 367 Health Care!

PharmaceuticalPersonal InjuryProduct Liability

o 368 Asbestos PersonalInjury ProductLiability

PERSONAL PROPERTY 0 710 Fair Labor Standards o 861 H1A (1395ft)o 862 Black Lung (923)o 863 D1WC/D1WW (405(go 864 ssm Title XVIo 865 RSI (405(g

PERSONAL INJURYo 310 Airplane0315 Airplane Product

Liabilityo 320 Assault, Libel &

Slandero 330 Federal Employers'

Liabilityo 340 Marineo 345 Marine Product

Liabilityo 350 Motor Vehicle 0 370 Other Fraud Act0355 Motor Vehicle 0 371 Truth in Lending 0 720 Labor/Management

Product Liability 0 380 Other Personal Relationso 360 Other Personal Property Damage 0 740 Railway Labor Act

Injury 0 385 Property Damage 0 751 Family and Medicalo 362 Personal Injury - Product Liability Leave Act

Medical Malpractice 0 790 Other Labor Litigation!fMS MWifli'EA'UitlR:Ol!:Ellij;y)iii WIN!? !liJMiM()mE\RtGlfl1s~r@;ii: %em 0i!tlRlSOlYF:R!P'E\lJl.ftf)ll)lSlS}T 0 791 Employee Retiremento 210 Land Condemnation 0 440 Other Civil Rights Habeas Corpus: Income Security Acto 220 Foreclosure 0 441 Voting 0 463 Alien Detaineeo 230 Rent Lease & Ejectment 0 442 Employment 0 510 Motions to Vacateo 240 Torts to Land 0 443 Housing! Sentenceo 245 Tort Product Liability Accommodations 0 530 Generalo 290 All Other Real Property 0 445 Amer. w/Disabilities - 0 535 Death Penalty

Employment Other:o 446 Amer. w/Disabilities - 0 540 Mandamus & Other

Other 0 550 Civil Rightso 448 Education 0 555 Prison Condition

o 560 Civil Detainee -Conditions ofConfinement

Act/Review or Appeal ofAgency Decision

o 950 Constitutionality ofState Statutes

o 422 Appeal 28 USC 158o 423 Withdrawal

28 USC 157

o 625 Drug Related Seizureof Property 21 USC 881

0690 Other

o 375 False Claims Acto 400 State Reapportionmento 410Antitrust

"""=========~0 430 Banks and Banking\ll%\j"libRERTi\%Rn:~ll!lit'''''%WF 0 450 Commerceo 820 Copyrights 0 460 Deportationo 830 Patent 0 470 Racketeer Influenced andl1'l 840 Trademark Corrupt Organizations

o 480 Consumer Credit.gggD~~gee.e:m!ii~!ilmimaee~0 490 Cable/Sat TVo 850 Securities/Commodities/

Exchangeo 890 Other Statutory Actionso 891 Agricultural Actso 893 Environmental Matterso 895 Freedom oflnformation

Acto 896 Arbitration

"'''~lli!-fjF-'...-E~D-E"',rus."'}""..t"'M!l1-.,.,-~-!X-fS-J=:nF-m=..S=il'''''i$i"."j,! ~0 899 Administrative Procedureo 870 Taxes (U.S. Plaintiff

or Defendant)o 871 IRS-Third Party

26 USC 7609

"'>Y;>JMMIO~T10N i'?" 'o 462 Naturalization Applicationo 465 Other Immigration

Actions

V. ORIGIN (Place an "X" in One Box Only))g{ I Original 0 2 Removed from

Proceeding State Courto 3 Remanded from

Appellate Courto 4 Reinstated 01'

Reopenedo 5 Transferred from

Another District(specify)

o 6 Multi districtLitigation

Cite the U.S. Civil Statute under which you are filing (DoIIOt citejurisdictlonalstatutes unlessdiversity):VI. CAUSEOFACTION~1_5_U_.S_._C~.~10_5_1_e_ts_e~q_. ----------------------------------------

Brief description of cause:TrademarkInfringement

VII. REQUESTED INCOMPLAINT:

o CHECK IF THIS IS A CLASS ACTIONUNDER RULE 23, F.R.Cv.P.

DEMAND $ CHECK YES only if demanded in complaint:JURY DEMAND: )ell Yes 0 No

VIII. RELATED CASE(S)IFANY JUDGE DOCKET NUMBER

(See instructions):

DATE

08/07/2014FOR OFFICE USE ONLY

SIGNATURE OF ATTORNEY OF RECORD

s/David Davenport

RECEIPT # APPLYING IFP JUDGE MAG. JUDGEAMOUNT

CASE 0:14-cv-03119 Document 1-1 Filed 08/07/14 Page 1 of 1

Documents

"Chicago Mix" lawsuits