Topps v. Primary Colors - Ring Pop Trade Dress Complaint

UNITED STATES DISTRICT COURT SOUT I RN DISTRICT OF NEW YO

X

THE TOPPS COMPANY, INC.,

Plaintiff, EC

- against - COMPLAINT

JURY TRIAL DEMANDED PRIMARY COLORS DESIGN CORP. d/b/a PRIMARY COLORS CORP.,

Defendant. ------------ ------------- -------- ---------- --------------- X

Plaintiff, The Topps Company, Inc., by its attorneys, Ingram Yuzek Gainen Carroll &

Bertolotti, LLP, for its complaint against defendant, Primary Colors Design Corp., alleges as

follows:

Jurisdiction

1. This Court has subject matter jurisdiction under 28 U.S.C. 1331, 1338, 15

U.S.C. 1121, because this case arises under 15 U.S.C. 1051 et seq. This Court also has

subject matter jurisdiction under 28 U.S.C. 2201. This Court has supplemental jurisdiction

over the related state law claims under 28 U.S.C. 1338 and 1367.

2. This Court has personal jurisdiction over Primary Colors Design Corp. because,

upon information and belief, it transacts business in this state, and supplies goods or services in

this state.

The Parties

3. The Topps Company, Inc. ("Topps") is a Delaware corporation with its principal

place of business at 1 Whitehall Street, New York, New York 10004.

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Case 1:14-cv-06782-NRB Document 1 Filed 08/21/14 Page 1 of 20

4. Upon information and belief, Primary Colors Design Corp., doing business as

Primary Colors Corp. ("Primary Design"), is an Ohio corporation with its principal place of

business at 1899 Cottage Street, Ashland, Ohio 44805.

Factual Background

A. Topps' Ring Pop

5. Topps, and its predecessor company, have been in the business of manufacturing

and marketing candies and other confectionary products for children continuously since the mid-

1940s. During this period, Topps has attained widespread recognition among consumers and the

trade as a leading manufacturer of candy for children.

6. During the mid-1970s, Topps developed the Ring Pop lollipop, which consists of

a candy portion in the shape of an oversized solitaire jewel, mounted on a stylized plastic base

portion in the form of a stylized ring, which can be worn on a fmger while consumed ("Ring

Pop"). This configuration serves no particular manufacturing purpose or other functionality.

7. Topps has obtained a federal trademark registration for the configuration of the

Ring Pop (U.S. Trademark No. 1846873, the "Ring Pop Trade Dress"). This trade dress is in full

force and effect today, and is incontestable under 15 U.S.C. 1065. The Ring Pop Trade Dress is

reproduced below:

Sr- \

e.e.' II 444-

k:31 II

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8. Topps has also obtained a trademark registration for "Ring Pop" for "hard candy"

(U.S. Trademark No. 1040693, the "Ring Pop Trademark"). This trademark is in full force and

effect today, and is incontestable under 15 U.S.C. 1065.

9. Since its creation almost four decades ago, the Ring Pop Trade Dress and the

Ring Pop Trademark have been used in connection with the Ring Pop, on its packaging, point-

of-sales signs, and other marketing materials in a distinctively conspicuous manner, with the

intention of being especially appealing to and identifiable by consumers.

10. Ring Pops have been continuously sold in the registered configuration from its

inception to the present day through a wide range of retail outlets, including, without limitation,

candy stores, grocery stores, and convenience stores. The Ring Pop is one of Topps's most

successful products, having sold millions of units in the United States.

11. Topps expends significant sums each year on actively marketing and advertising

the unique configuration and appeal of the Ring Pop to consumers, especially children.

12. As a result of the unique and distinctive solitaire ring configuration of the Ring

Pop, and the extensive promotional efforts of Topps, the Ring Pop has acquired secondary

meaning and become associated with Topps in the minds of consumers and the tade. The Ring

Pop Trade Dress and Ring Pop Trademark distinguish Topps's products from those of other

manufacturers and indicate to consumers and the trade that Topps is the source of these solitaire

ring candies.

B. Primary Colors's Infringing Activity

13. Upon information and belief, Primary Colors designs and sells candy, snacks,

stationery, gifts, and party goods to retailers, such as CVS, Walgreens, Big Lots, Dollar Tree, as

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well as other smaller retail outlets. It contracts with major brands such as Fisher Price, Animal

Planet, and American Kennel Club to use their trademarks on its products.

14. Primary Colors has created a prototype of a product that infringes on Topps's

Ring Pop, called "Valentine Ring Lollipops," and is offering for sale and advertising that

product. The packaging for the Valentine Ring Lollipops shows an image of a ring lollipop with

what appears to be a candy jewel portion mounted on a plastic base in the form of a ring. This is

nearly identical to the Ring Pop Tradc Dress, and the product and packaging are clearly directed

to children as its primary customers.

15. Primary Colors advertised and offered the Valentine Ring Lollipops for sale at the

National Confectioners Association's Candy and Snack Show in Chicago, Illinois on May 20-22,

2014, a convention that connects retailers with "buyers from around the world." At the trade

show, Primary Colors had sell sheets with pictures and information of the Valentine Ring

Lollipops available to all attendees. An image of the Valentine Ring Lollipops from the sell sheet

is reproduced below:

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7009-PC 28-Pack Valentine Fun-2-Share Ring Lollipops

o 28 individual agnahie pouches

Classroom size 10g ring lollipops

Pack Weight: 9.802. / 280g Case Pack: 6 6 UPC: 8-45120-07009-6

LAI A reproduction of the full page sell sheet is attached as Exhibit A.

16. Upon information and belief, Primary Colors advertised and offered for sale its

infringing product with full knowledge of Topps and its widely-recognized trademark and trade

dress, Topps's prior extensive use of the trademark and trade dress, the good will associated with

the trademark and trade dress, and with the intention of trading on such good will.

17. Primary Colors's conduct is without authorization from Topps.

18. On June 26, 2014, Heather Greenberg, the Associate General Counsel of Topps,

sent Primary Colors a cease and desist letter identifying Topps's proprietary rights in Ring Pop,

and Primary Colors's infringement of the same (the "C&D Letter"). The C&D Letter is attached

as Exhibit B.

19. In response, Primary Colors, through its counsel, Jeffrey DiTolla, agreed to cease

and desist from manufacturing or selling the Valentine Ring Lollipops. 5

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20. On July 22, 2014, Ms. Greenberg sent Mr. DiTolla a Settlement Agreement that

memorialized Primary Colors's agreement to cease and desist the manufacturing and sale of the

infringing product and also included language that it would also cease and desist advertising,

promoting, or distributing the infringing product.

21. Primary Colors refused to execute the Settlement Agreement. Topps can see no

reason why Primary Colors would refuse to execute a straightforward Settlement Agreement that

encompasses what Primary Colors has previously agreed to do, unless Primary Colors does not

intend to cease and desist all of its infringing activity.

22. Upon information and belief, Primary Colors intends to continue its unauthorized

use of the Ring Pop Trade Dress.

COUNT I

Federal Trade Dress Infringement (15 U.S.C. 4 1125)

23. Topps repeats and realleges the preceding paragraphs of this complaint.

24. Topps's Ring Pop Trade Dress has garnered substantial goodwill and secondary

meaning through its unique, distinctive, non-functional designs, and through extensive

advertising and promotion of the product. As a result, the Ring Pop Trade Dress has become

well-known to the consuming public, which identifies Topps as the exclusive and unique source

of Ring Pops.

25. Topps's federally registered Ring Pop Trade Dress is valid and enforceable, and

was valid and enforceable before Primary Colors engaged in the unlawful conduct described in

this complaint.

26. Upon information and belief, Primary Colors is, without consent from Topps,

intentionally and knowingly selling, offering for sale, or advertising and promoting a

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confectionary product that is identical or substantially similar to Topps's Ring Pop and uses the

Ring Pop Trade Dress. This is likely to cause confusion among consumers as to whether there is

any affiliation between Primary Colors and Topps, and whether Primary Colors's Valentine Ring

Lollipops are associated with Topps.

27. Upon information and belief, Primary Colors's use of the Ring Pop Trade Dress is

intentional, willful, and in bad faith to evoke and cash-in on the goodwill associated with

Topps's Ring Pop Trade Dress.

28. Upon information and belief, Primary Colors's conduct will cause damage and

injury to Topps's business, goodwill, and reputation.

29. Upon information and belief, Primary Colors's Valentine Ring Lollipops violates

Topps's trade dress rights in the Ring Pop Trade Dress, under Section 43(a) of the Lanham Act.

30. Upon information and belief, unless enjoined by the Court, Primary Colors's

infringing activity will irreparably harm Topps, for which Topps has no adequate remedy at law.

COUNT II

Federal False Designation of Origin (15 U.S.C. 4 1125(a))


32. Topps's federally registered Ring Pop Trade Dress is valid and enforceable, and

was valid and enforceable before Primary Colors engaged in the unlawful conduct described in

this complaint.

33. Upon information and belief, Primary Colors's use and adoption of its product

configuration is likely to confuse, mislead, and deceive consumers into believing that Valentine

Ring Lollipops originate from, are affiliated with, or otherwise connected to Topps. Such actions

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trade unfairly on Topps's product and misappropriate the goodwill that Topps has expended

time, labor, and money to create over time.

34. Upon information and belief, Primary Colors's use and adoption of the solitaire

ring configuration is intentional, willful, in bad faith, and was committed with full knowledge of

Topps's ownership of the Ring Pop Trade Dress.



36. Upon information and belief, Primary Colors's conduct constitutes false

designation of origin and passing off in violation of 43(a) of the Lanham Act, 15 U.S.C.

1125(a).

37. Upon information and belief, unless enjoined by the Court, Primary Colors's acts

of unfair competition will irreparably harm Topps, for which Topps has no adequate remedy at

law.

COUNT III

Trade Dress Infringement under New York Common Law


39. Upon information and belief, Primary Colors is, without consent from Topps,

intentionally and knowingly selling, offering for sale, or advertising and promoting a

confectionary product that is identical or substantially similar to Topps's Ring Pop and uses its

product configuration. This is likely to cause confusion among consumers as to whether there is

any affiliation between Primary Colors and Topps, and whether Primary Colors's Valentine Ring

Lollipops are associated with Topps.

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40. Upon information and belief, by the conduct described above, Primary Colors has

intentionally engaged in acts of trade dress infringement in violation of the common laws of New

York.

41. Upon information and belief, Primary Colors's use of the Ring Pop Trade Dress is

intentional, willful, and in bad faith to evoke and cash-in on the goodwill associated with

Topps's Ring Pop Trade Dress.



43. Upon information and belief, unless enjoined by the Court, Primary Colors's

infringing activity will irreparably harm Topps, for which Topps has no adequate remedy at law.

COUNT IV

Unfair Competition under New York Common Law


45. Upon information and belief, Primary Colors's use of a product configuration that

is identical or nearly identical to the Ring Pop Trade Dress is likely to cause confusion among

consumers as to whether its Valentine Ring Lollipops are, in fact, Topps's Ring Pops.

46. Upon information and belief, Primary Colors is therefore unfairly competing with

Topps, the rightful owner of the Ring Pop Trade Dress and all of its associated good will and

other fruits of its investment of time, effort, and money, in bad faith and in violation of the

common law of New York.



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48. Upon information and belief, unless enjoined by the Court, Primary Colors's acts

of unfair competition will irreparably harm Topps, for which Topps has no adequate remedy at

law.

COUNT V

Declaratory Judgment (28 U.S.C. 4 2201)


50. Topps seeks a declaration that Primary Colors's use, impending use, imminent

use, and intended use of the Ring Pop Trade Dress for a candy constitutes intentional and willful

trade dress infringement, false designation of origin, and unfair competition under federal and

New York law, and violates Topps's Ring Pop Trade Dress.

WHEREFORE, Topps asks for the following relief against Primary Colors:

A. Under 15 U.S.C. 1116, preliminarily and permanently enjoining Primary Colors,

and its agents, servants, employees, successors and assigns, and all those in active concert or

participation with any of them, from:

a. Selling, offering for sale, promoting, or advertising, in any medium, any

good or service, using the Ring Pop Trade Dress, or any other mark or

designation confusingly similar to the Ring Pop Trade Dress;

b. Manufacturing, reproducing, distributing, adapting, displaying, advertising,

promoting, offering for sale, or selling any candy or other products that are

substantially similar to the Ring Pop;

C. Registering, imitating, copying, or making unauthorized use of the trade

dress or designs of the Ring Pop, in a manner likely to cause confusion,

deception, or mistake on or in connection with the manufacture,

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reproduction, distribution, adaptation, advertisement, promotion, offering for

sale, or sale of any products not manufactured by Topps, or not authorized

by Topps to be sold in connection with the Ring Pop;

d. From representing, suggesting in any manner to any third party, or

performing any act that may give rise to the belief that Primary Colors, or

any of its products, are authorized or sponsored by Topps;

e. From passing off, inducing, or enabling others to sell or pass off any goods

as products produced by Topps that are not, in fact, genuine Topps products,

or not produced under the control and supervision of Topps and approved by

Topps; and

f. From otherwise competing unfairly with Topps in any manner.

B. Directing Primary Colors to deliver to the Court for destruction all products, labels,

prints, signs, packages, dies, wrappers, plates, molds, matrices, and advertisements in its possession,

custody or control bearing the Valentine Ring Lollipops name and mark, or designs of the Ring Pop,

or the means for producing candies that are substantially similar to the designs of the Ring Pop,

under 15 U.S.C. 1118;

C. Declaring that thc Ring Pop Trade Dress is valid and has been infringed by Primary

Colors and will be infringed by Primary Colors's use of its present product configuration;

D. Granting Topps relief under 15 U.S.C. 1117(a);

E. Directing Primary Colors under 15 U.S.C. 1116(a) to file with the Court and serve

upon Topps within 30 days of the entry of injunction a written report under oath or affinned under

penalty of perjury stating in detail the form and manner in which it has complied with the

injunction;

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F. Damages in an amount to be determined at trial;

G. Punitive damages in an amount to be detennined at trial;

H. Pre-judgment and post-judgment interest on each and every damage award;

I. The costs and disbursements of this action, including reasonable attorneys' fees,

under 15 U.S.C. 1117(a)(3); and

J. Such other and further relief as to the Court appears just and proper.

Dated: New York, New York August 21, 2014

INGRAM YUZEK GAINEN CARROLL & BERTOLOTTI, LLP

Attorneys for Plaintiff, The Topps Company, Inc.

By: David G. Ebert ([email protected] ) Mioko C. Tajika ([email protected] ) Christina Y. Kim ([email protected] )

250 Park Avenue, 6th Floor New York, New York 10177 Tel: (212) 907-9600

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Exhibit A


EXHIBIT A

Page 3 of 4


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Exhibit B


VILfe HEATHER GREENBERG

TOIL: TOPPS COMPAN

ASSOCIATE GENERAL COUNSEL

One Whitehall Street, New York, NY 10004-2109 Telephone: (212) 376-0300 Fax: (212) 376-0573

6/26/2014

Via [FedEx & Electronic Maill President Primary Colors Corp. 1899 Cottage St. Ashland, OH 44805 Tel: 419-903-0403 Email: [email protected]

Re: Infringing "Valentine Ring Lollipops" Candy

Dear Sir or Madame:

My name is Heather Greenberg and I am Associate General Counsel for the Topps Company, Inc. ("Topps"), the well-known manufacturer of novelty candy products.

Continuously for more than thirty years, one of Topps' most successful products has been its RING POP lollipop. This product consists of a candy portion in the shape of a solitaire jewel, supported by a plastic base portion in the form of a stylized "ring," which is held by inserting a figure through the ring. Topps has sold millions of units of its RING POP lollipop in the United States and has widely advertised and promoted this product, such that the configuration of the RING POP lollipop has acquired a secondary meaning associated with Topps exclusively. Therefore, the configuration of this product (the "Ring Pop Trade Dress"), constitutes a valuable trademark of Topps. Topps owns U.S. Trademark Registration No. 1,846,873 for the Ring Pop Trade Dress, for which the registration is in full force and is incontestable.

In addition, Topps owns U.S. Registration No. 1,040,693 for the word trademark RING POP. This registration is also in full force and incontestable. The word mark RING POP and the Ring Pop Trade Dress shall be referred to collectively as the "Ring Pop Trademarks."

It has come to our attention your subsidiary, Primary Colors, has been manufacturing, distributing, advertising and promoting for sale a product called "Valentine Ring Lollipops". A photograph of the package of this product is enclosed as Exhibit A, bearing the UPC number 8-45120- 07008-9. It is our understanding that this product was found at the National Confectioners Association's "Candy and Snack Show" in Chicago, Illinois on May 20-22, 2014.

Your "Valentine Ring Lollipops" product is a slavish copy of the Ring Pop Trade Dress. Persons purchasing this product are likely to believe either that they are genuine RING POP lollipops or that they have been manufactured, sponsored, endorsed or licensed by the makers of genuine RING POP lollipops. Your offering for sale and sale of this product constitutes a clear and blatant infringement of the Ring Pop Trademarks in violation of the U.S. Trademark Act, 15 U.S.C. 1051 et seq., and also constitutes false designation of origin and unfair competition under state and federal law.

We therefore demand your prompt assurance, in writing, that you will immediately cease and desist from any further offering for sale, sale, advertising, promotion or distribution of the "Valentine


Ring Lollipops" product, or any other product which infringes either of the Ring Pop Trademarks. We demand further that you disclose (a) whether Primary Colors has sold this product to any customer, and to identify each such customer; (b) the total sales of Pop Rings to date, in units and dollars; (c) the total number of units in inventory or in process; and (d) the source(s) from which you have obtained this product.

If we have your compliance with the foregoing demands, Topps will be willing to discuss a mutually agreeable resolution in order to avoid the need for litigation. If we do not have your cooperation, however, Topps will not hesitate to take all legal measures necessary to protect its valuable intellectual property rights.

Topps considers this to be a serious matter. Please let us have your response to our offer of amicable resolution by no later than Thursday, July 3, 2014.

The foregoing is without prejudice to any of Topps' rights or remedies, all of which are expressly reserved.

Sincerely,

/s/Heather Greenberg Associate General Counsel

Page 2 of 4


EXHIBIT A

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Documents

Topps v. Primary Colors - Ring Pop Trade Dress Complaint