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Attorney for Stacked Wines, LLC
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Plaintiff,
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v.
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Case No.
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and
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Stacked Wines, LLC (Stacked), by and through its counsel, for its Complaint against Cape
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Classics Brands, LLC and Cape Classics, Inc. (Cape Classics), alleges and states as follows on
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information and belief:
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COMPLAINT FOR DECLARATORY RELIEF
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JURISDICTION
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This action arises out of the Lanham Act, 15 U.S.C. 1114, 1125 (a) and the
Declaratory Judgments Act, 28 U.S.C. 2201. This Court has subject matter jurisdiction over the
Federal claims pursuant to 28 U.S.C. 1331, 1338 (a), 2201 and 15 U.S.C. 1121. The Court has
personal jurisdiction because Plaintiff resides in this District, the Defendants do business in this
District, the harm caused by Defendants will be suffered by Plaintiff in this District, Defendants
conduct has specifically targeted Plaintiff and its business in this District, and Defendants wines are
2.
Venue is proper in this Court pursuant to 28 U.S.C. 1391 (b) because Defendants
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transact business in this District and a substantial part of the events giving rise to the claims asserted
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THE PARTIES
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Cape Classics Brands, LLC is a Florida limited liability company having a principal
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place of business at 220 Puritan Road, West Palm Beach, Florida 22405. It is the record owner of the
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Cape Classics, Inc. is a New York corporation having a principal place of business at 16
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West 36th Street, Floor Penthouse, New York, NY 10018. It is an importer, distributor and marketer
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of the wine at issue in this case. On information and belief, both Defendants share common
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It arises from a demand made by Cape Classics, during the national roll-out Stackeds XO, G wine,
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COMPLAINT FOR DECLARATORY RELIEF
that Stacked cease using the allegedly infringing trademark with seven days. This has caused in
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By this action, Stack seeks a declaration by the Court that: (a) Cape Classics has no
trademark rights in the alleged trademark, (b) assuming that Cape Classics has trademark rights in its
alleged trademark, that Stackeds use of its packaging design (1) does not infringe any rights of Cape
Classics, and (2) is unlikely to cause consumers falsely to associate XO, G with Cape Classics.
BACKGROUND
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Stacked is a wine seller and marketer. It owns the patented StackTek single serve
packaging system. This system consists of four (4) 187 milliliter plastic wine glasses that are
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designed to snap together vertically to form the equivalent of a 750 milliliter bottle. This allows the
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consumer to purchase wine in the single serve format in the same amount as traditional 750 milliliter
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bottles.
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In mid-2014, Stacked developed the concept for an XO, G wine sold in the StackTek
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system. The wine would be sold to a single national chain retailer and would be supported by a
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celebrity spokesperson. The program was launched in early November and is currently in the process
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of a national roll-out. The current product line features a Ros, Pinot Noir and Pinot Grigio. The
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COMPLAINT FOR DECLARATORY RELIEF
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Stacked has invested a substantial amount of capital and goodwill in the development of
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the XO, G program and its success is critical to the financial success of the business in 2015. Stacked
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would suffer significant injury and damage, both financial and in its relationship with the trade, if it
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was required to cease using its packaging immediately. This would likely cause Stacked to go out-of16
stock during the current national launch and would significantly damage Stackeds relationship with
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the national chain retailer, the trade and consumers.
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11.
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Cape Classics sells a wine called JAM JAR. This is marketed as a sweet wine and is
currently sold in two flavors: sweet white and sweet shiraz. Cape Classics sells these wines at
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various chain retailers in this District, including Whole Foods and Cost Plus. The packaging is
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depicted below:
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COMPLAINT FOR DECLARATORY RELIEF
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On October 20, 2010, Cape Classics applied to register the following trademark for wine
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The application was assigned serial number 85/157,079. Cape Classics refers to this as the Diamond
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Design.
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Design. She concluded that the Diamond Design was merely ornamental, not inherently distinctive
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and did not function as a trademark. This conclusion was correct as the Diamond Design is a
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common type of ornamentation that is used on a variety of goods and services such as paper cups.
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COMPLAINT FOR DECLARATORY RELIEF
14.
Cape Classics responded to the Office Action on April 12, 2011. It did not attempt to
persuade the Examining Attorney that her conclusions were wrong. Instead, it asked the Examining
Attorney to register the mark on the Supplemental Register. Such a registration was issued on June
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On January 13, 2015, Stacked received a letter dated one day earlier from Cape
Classics attorney with the large international law firm of Kelley Drye & Warren in New York City.
The letter asserted that Cape Classics owned trademark registration no. 3,987,424, that Stackeds
XO, G packaging was substantially and confusingly similar to the Diamond Design, and that this
infringed Cape Classics trademark rights and created a false association with Cape Classics. The
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There is a real and substantial dispute between Stacked and Cape Classics. The facts are
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well-established: does Cape Classics have trademark rights and are they infringed by the Stacked
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packaging? Stacked has a real and genuine apprehension of litigation and injury: Cape Classics is
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represented by one of the largest law firms in the country and given the demand to cease and desist
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Stacked would act at its peril if it did not comply with the demand. Stacked reasonably assumes that
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Defendants and their major international law firm has ample skills and resources to follow-through
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on the implicit threat of litigation if Stacked did not capitulate immediately. Stacked cannot cease
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and desist as demanded because this would destroy the ongoing national rollout.
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Changing the packaging of XO, G could destroy the program and cause extraordinary
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injury and damage to Stacked. Stacked was unaware of the JAM JAR packaging when it developed
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the ornamentation for the XO, G packaging. The design motif is merely a play on the X and O in the
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trademark.
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COMPLAINT FOR DECLARATORY RELIEF
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In making its demand, Cape Classics has deliberately and intentionally targeted
Stackeds business, its brand and its goodwill. Cape Classics did so knowing that its claim that it had
enforceable trademark rights in a registered Diamond Design trademark was not true.
CLAIM ONE
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Stacked repeats and incorporates by reference each the allegations of Paragraphs 1-18 as
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Because of the allegations of infringement made by Cape Classics and the demand that
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Stacked cease using its packaging forthwith, and the great injury and damage that would be caused by
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such a cessation of use, a controversy has arisen between Stacked and Cape Classics under 15 U.S.C.
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1114 and 1125 (a) concerning whether the packaging for XO, G wines infringes Cape Classics
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The Diamond Design is merely ornamental and does not serve the source-identifying
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indicator of source.
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By asking the Examining Attorney to register the Diamond Design on the Supplemental
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Register, Cape Classics acknowledged that the design was not inherently distinctive and is therefore
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and are not entitled to any of the presumptions or benefits offered by the Lanham Act. Cape Classics
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COMPLAINT FOR DECLARATORY RELIEF
must therefore prove its exclusive ownership of the Diamond Design, that it functions as a trademark,
that it is a common law trademark and the geographic area of any proven common law trademark
rights.
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The Diamond Design is not inherently distinctive. The Diamond Design has not
acquired distinctiveness through its promotion and use by Cape Classics. Cape Classics has done no
look for advertising or taken any actions that would cause consumers to view the Diamond Design
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Both Cape Classic and Stacked use their designs as aesthetically functional
ornamentation for their packaging and not as an indicator of source. The trade dress of the JAM JAR
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and XO, G packaging are dissimilar and not likely to cause consumers to believe that XO, G
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originated from the same source, was sponsored by, or was otherwise associated with Cape Classics.
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Accordingly, Stacked has not violated the Lanham Act by engaging in trademark
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infringement. There is a justiciable controversy between Stacked and Cape Classics and Stacked is
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For the reasons set forth herein, consumers are unlikely to believe falsely based on the
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XO, G background ornamentation that Cape Classics is the source, sponsor or licensee of the wine.
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Accordingly, Stacked has not violated the Lanham Act by engaging in false association. There is a
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justiciable controversy between Stacked and Cape Classics and Stacked is entitled to a declaratory
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COMPLAINT FOR DECLARATORY RELIEF
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That Cape Classics has no trademark rights in the Diamond Design; and
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That the XO, G packaging does not infringe any rights of Cape Classics; and
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That consumers are unlikely to falsely associate XO, G with Cape Classics; and
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That Stacked is entitled to the costs of suit, including Stackeds reasonable attorneys
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fees; and
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Respectfully Submitted,
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By: /s/ Paul W. Reidl
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Attorney for Stacked Wines, LLC.
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COMPLAINT FOR DECLARATORY RELIEF