Popcorn Factory v Peace Love Popcorn

8/8/2019 Popcorn Factory v Peace Love Popcorn

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UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

THE POPCORN FACTORY, INC.

Plaintiff,

v.

PEACE, LOVE, POPCORN, LLC and

GARY PAPARELLA,

Defendants.

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Civil Action No.:

COMPLAINT

Plaintiff The Popcorn Factory, Inc. states the following for its Complaint against

Defendants Peace, Love, Popcorn, LLC and Gary Paparella (collectively "Defendants"):

Nature of the Action

1. This is an action at law and in equity for trademark infringement, cybersquatting,

and unfair competition arising under the federal Lanham Act, codified as amended at 15 U.S.C.

1051-1127, the Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d), and state

statutory and common law, arising out of the Defendants' adoption and use of the LOVE PEACE

POPCORN & Design trademark which is confusingly similar to Plaintiff's previously established

PEACE LOVE POPCORN & Design Mark.

Jurisdiction and Venue

2. This Court has subject matter jurisdiction under Section 39 of the Lanham Act, 15

U.S.C. 1121, and under 15 U.S.C. 1331 and 1338.

3. This Court has personal jurisdiction over Defendants because, through their

infringing interactive website, Defendants are transacting business within this district, have

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Case: 1:10-cv-08125 Document #: 1 Filed: 12/22/10 Page 1 of 11 PageID #:1


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engaged in acts or omissions within this district causing injury, or have otherwise made or

established contacts with this district sufficient to permit the exercise of personal jurisdiction.

4. Venue is proper in this district under 28 U.S.C. 1391 because a substantial part of

the events giving rise to the claim have occurred and are occurring in this district.

Parties

5. Plaintiff The Popcorn Factory is a corporation organized under the laws of the State

of Delaware with its principal place of business located in this District, in Lake Forest, Illinois.

The Popcorn Factory is the owner of the trademark at issue in this suit.

6. Defendant Peace, Love, Popcorn, LLC is a limited liability company organized

under the laws of the State of Texas, with a principal place of business at 2456 Greenbrook Drive,

Little Elm, Texas, 75068. Defendant Peace, Love, Popcorn, LLC is the owner of the trademark

registration at issue in this case, and together with Defendant Paparella, operates a website under a

domain name consisting of the trademark.

7. Defendant Gary Paparella is an individual who may be served at 8873 Coleman

Boulevard, Frisco, Texas, 75034. Defendant Paparella is the owner of the infringing domain

names at issue in this case, and together with Peace, Love, Popcorn, LLC, operates a website

accessible through the infringing domain names.

8. Defendants are acting jointly and severally to use and promote the infringing mark

and domain name at issue in this case.

FACTUAL BACKGROUND

The Popcorn Factory's Trademark Rights

9. For over thirty years, The Popcorn Factory has been selling popcorn, bakery

products, nuts, and candy to consumers throughout the United States through a mail order and

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catalogue business, and for over ten years, The Popcorn Factory has also offered its products

online. With extremely high quality food products and exceptional service, The Popcorn Factory

has long been recognized for its excellence as the "popcorn authority." Delighting consumers with

premium products and impressive gift tins, The Popcorn Factory sells over one million pounds of

popcorn every year.

10. Known for the creativity and variety of its products and packaging, in September,

2007, The Popcorn Factory began developing a new theme product which it named "Peace Love &

Popcorn." The Popcorn Factory adopted the following word and design mark, including depictions

of a peace symbol, heart, and piece of popped popcorn, to identify and promote the product:

(the "PEACE LOVE POPCORN Mark").

11. The Popcorn Factory began marketing the PEACE LOVE POPCORN Mark

branded product in late spring, 2008. Since then, The Popcorn Factory has expended substantial

time, money, and effort marketing its products under the PEACE LOVE POPCORN Mark, in

numerous catalogues, distributed to millions of consumers and businesses each year, and online at

the website located at thepopcornfactory.com, which receives more than 2,500,000 visits each

year. Examples of promotion of the PEACE LOVE POPCORN Mark in Plaintiff's catalogues are

attached as Exhibit A, and pages featuring the PEACE LOVE POPCORN Mark on the website are

attached as Exhibit B. Indeed, since introduction of the PEACE LOVE POPCORN Mark product,

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The Popcorn Factory has spent tens of millions of dollars on marketing that includes the PEACE

LOVE POPCORN Mark brand. As a result of its marketing, since June, 2008, The Popcorn

Factory has sold hundreds of thousands of dollars worth of product under the PEACE LOVE

POPCORN Mark, and the public has come to associate the mark exclusively with products sold by

The Popcorn Factory.

Defendants' Wrongful Acts

12. Well after The Popcorn Factory had adopted and begun using the PEACE LOVE

POPCORN Mark, in August 2008, Defendants formed their company, using as its name "Peace

Love & Popcorn." Defendants then applied to register the trademark LOVE PEACE POPCORN

with design elements of a peace symbol, heart, and piece of popcorn, as shown below, for retail

store and online retail store services featuring popcorn, and gourmet and packaged candy:

(the "LOVE PEACE POPCORN Mark" or the "Infringing Mark").

13. Defendant Paparella also registered three domain names lovepeacepopcorn.com,

peacelovepopcorn.com, and peacelovepopcorn.net (the "Infringing Domain Names"), as shown in

Exhibit C, and sometime later, Defendants began using the domain lovepeacepopcorn.com for a

website on which they market popcorn products, as shown in Exhibit D (and to which they have

pointed the domains, peacelovepopcorn.com and peacelovepopcorn.net). Further, Defendants

registered LOVE PEACE POPCORN user names with Twitter, Facebook, and for an email

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account, and adopted the tagline "Peace Out. Love Popcorn.", which is confusingly similar to

Plaintiff's Mark.

14. Defendants began using the Infringing Mark to market and sell popcorn and candy

products in December, 2008, when, according to their website, they opened their store. In addition

to operating a retail location and marketing popcorn products online, Defendants also began

offering to assist others in developing retail popcorn stores based on Defendants' model and using

Defendants' recipes, as shown in Exhibit E. Defendants are thus using the Infringing Mark in

direct competition with Plaintiff.

15. After obtaining a registration of their mark in September, 2010, Defendants sent a

demand letter to The Popcorn Factory, as shown in Exhibit F. Defendants contend in the letter that

Plaintiff's PEACE LOVE POPCORN Mark is infringing their LOVE PEACE POPCORN Mark.

Defendants' demand to Plaintiff is unfounded because Plaintiff's use of its mark pre-dates

Defendants' use; and thus, Defendants' mark is infringing Plaintiff's rights. Defendants' letter

constitutes an admission that their mark is confusingly similar to Plaintiff's mark and that,

accordingly, their use of the LOVE PEACE POPCORN Mark is infringing Plaintiff's rights.

16. Because Defendants are using a mark that is confusingly similar to Plaintiff's mark

in connection with the same goods and services for which Plaintiff uses its mark, and are

marketing and selling their products and services in the same channels as Plaintiff, Defendants are

trading on Plaintiff's goodwill and consumers are likely to be confused that Defendant's goods or

services are associated with Plaintiff's. Plaintiff therefore brings this action to prevent consumer

confusion and to protect its goodwill.

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COUNT I

FEDERAL UNFAIR COMPETITION

17. The Popcorn Factory repeats and incorporates by reference the allegations contained

in Paragraphs 1 through 16 as if set forth fully herein.

18. Defendants' use of confusingly similar imitations of The Popcorn Factory's PEACE

LOVE POPCORN Mark is causing and is likely to cause confusion, deception, and mistake by

creating the false and misleading impression that Defendants' business is affiliated, connected, or

associated with The Popcorn Factory or has the sponsorship, endorsement, or approval of The

Popcorn Factory, in violation of 15 U.S.C. 1125(a).

19. Defendants' actions demonstrate an intentional, willful, and bad faith intent to trade

on The Popcorn Factory's goodwill and to cause confusion, deception, and mistake in the minds of

The Popcorn Factory's customers and potential customers by implying a nonexistent affiliation or

relationship between Defendants and The Popcorn Factory to the great and irreparable injury of

The Popcorn Factory.

20. Because Defendants' unfair competition is causing and is likely to cause substantial

injury to the public and to The Popcorn Factory, The Popcorn Factory is entitled to injunctive

relief, and to recover Defendants' trebled profits associated with the infringement, The Popcorn

Factory's costs, and The Popcorn Factory's reasonable attorneys' fees pursuant to 15 U.S.C.

1116 and 1117.

COUNT II

VIOLATION OF THE ANTICYBERSQUATTING CONSUMER

PROTECTION ACT



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22. By registering and using the Infringing Domain Names, Defendants have registered,

trafficked in, and used domain names that are confusingly similar to The Popcorn Factory's

PEACE LOVE POPCORN Mark. Defendants registered the Infringing Domain Names with the

bad faith intent of profiting unlawfully from The Popcorn Factory's PEACE LOVE POPCORN

Mark.

23. Defendants registered and are using the Infringing Domain Names with the intent to

divert consumers from The Popcorn Factory's online locations to Defendants' website accessible

through the Infringing Domain Names and with the bad faith intent to profit from Plaintiff's mark

by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of the

sites.

24. Defendants are operating their site with the intent to profit from the use of the

Infringing Domain Names and the consequent confusion of internet users.

25. Defendants' actions constitute cyberpiracy in violation of 15 U.S.C. 1125(d).

26. The unauthorized registration and use of the Infringing Domain Names have caused

and, unless enjoined, Defendants' registration and continued use of the Infringing Domain Names

will continue to cause, irreparable injury to The Popcorn Factory and to the goodwill associated

with The Popcorn Factory's PEACE LOVE POPCORN Mark.

27. Because Defendants' infringing conduct is causing and is likely to cause substantial

injury to the public and to The Popcorn Factory, The Popcorn Factory is entitled to injunctive

relief, and to recover either statutory damages under 15 U.S.C. 1117(d) or Defendants' trebled

profits, together with The Popcorn Factory's costs and reasonable attorneys' fees pursuant to 15

U.S.C. 1117(a).

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COUNT III

DECEPTIVE TRADE PRACTICES UNDER STATE LAW.



29. Defendants have caused a likelihood of confusion as to source, sponsorship, or

affiliation and have passed off their goods as those of Plaintiff.

30. Defendants' acts constitute deceptive trade practices under the Illinois Uniform

Deceptive Trade Practices Act, 815 Ill. Code 510 and under the Deceptive Trade Practice Acts of

the various States in which Defendants have conducted their business.

31. Defendants' infringement has been willful and in bad faith, making this case

appropriate for the award of attorneys' fees under 815 Ill. Code 510. Plaintiff is therefore entitled

to injunctive and monetary relief, as well as reimbursement of its attorneys' fees.

COUNT IV

COMMON LAW INFRINGEMENT AND UNFAIR COMPETITION



33. Defendants have used confusingly similar imitations of The Popcorn Factory's

PEACE LOVE POPCORN Mark with full knowledge of The Popcorn Factory's rights to the marks

and with the willful and calculated purpose of trading upon The Popcorn Factory's established

goodwill and business reputation, and in a manner calculated to imply false sponsorship of or

approval by The Popcorn Factory, for the purpose of misleading and deceiving the public.

34. Defendants' conduct constitutes infringement of The Popcorn Factory's common

law rights to the PEACE LOVE POPCORN Mark and has damaged and will continue to damage

irreparably The Popcorn Factory's goodwill and reputation unless enjoined by this Court.

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35. Independent of their liability for common law infringement, Defendants also

engaged in unfair competition under the common law of Illinois and the other states in which they

have engaged in their activities through their reliance on consumer mistakes and confusion, and

their deliberate efforts to poach upon The Popcorn Factory's goodwill.

COUNT V

CANCELLATION OF REGISTRATION NO. 3,850,672

Lanham Act (15 U.S.C. 1064 and 1119)



37. Defendant Peace, Love, Popcorn, LLC is not entitled to maintain any rights to the

LOVE PEACE POPCORN Mark, including those rights accompanying federal registration.

Accordingly, the Court should cancel Defendants' registration pursuant to 15 U.S.C. 1064 and

1119.

PRAYER FOR RELIEF

WHEREFORE, The Popcorn Factory prays:

1. That Defendants, their partners, agents, employees, and all persons in active concert

or participation with Defendants, be permanently enjoined and restrained from:

a) using the Infringing Mark, the Infringing Domain Names, and any

trademark, company name, or domain name that is confusingly similar to

The Popcorn Factory's PEACE LOVE POPCORN Mark;

b) engaging in any other conduct which will cause, or is likely to cause,

confusion, mistake, deception, or misunderstanding as to the affiliation,

connection, association, origin, sponsorship, or approval of Defendants'

online businesses or services with or by The Popcorn Factory;

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c) otherwise infringing upon The Popcorn Factory's PEACE LOVE

POPCORN Mark or unfairly competing with The Popcorn Factory in any

manner whatsoever; and

2. That Defendants be ordered to transfer and assign to The Popcorn Factory or its

designee the Infringing Domain Names and cancel the Facebook, Twitter, and email account

names that include LOVE PEACE POPCORN.

3. That Defendant Peace Love Popcorn LLC's trademark registration for the LOVE

PEACE POPCORN Mark, Registration No. 3,850,672, be ordered cancelled.

4. That an accounting be ordered and judgment be rendered against Defendants for all

profits received from the sale or provision of products or services directly or indirectly in

connection with, or advertised or promoted in any manner, utilizing the Infringing Mark, the

Infringing Domain Name, and any confusingly similar imitations of The Popcorn Factory's PEACE

LOVE POPCORN Mark.

5. That the award of profits resulting from Defendants' infringement, unfair

competition, and false designation of origin of products and services be trebled.

6. That The Popcorn Factory recover its actual damages.

7. That the award of actual damages from Defendants' infringement, unfair

competition, and false designation of origin of products and services be trebled.

8. That The Popcorn Factory recover statutory damages under 15 U.S.C. 1117(d) in

the amount of $100,000.00 per Infringing Domain Name.

9. That Defendants be required to deliver up for destruction all advertising and

promotional materials, all packaging materials, and all business documents used for sales,

including labels, cartons, brochures, business stationary, calling cards, information sheets, posters,

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signs, and any and all other printed or graphic materials of any type, including the plates, molds, or

other means of producing the materials, which bear references to confusingly similar imitations of

The Popcorn Factory's PEACE LOVE POPCORN Mark, or to the Infringing Domain Names.

10. That Defendants be directed to file with the Court and serve on The Popcorn

Factory, within thirty (30) days after entry of a final injunction, a report in writing under oath

setting forth in detail the manner and form in which Defendants have complied with the injunction.

11. That The Popcorn Factory be awarded its costs in connection with this suit,

including reasonable attorneys' fees and expenses.

12. That The Popcorn Factory have such other and further relief as the Court may deem

just and proper.

Respectfully submitted,

/s/ Scott E. RogersWilliam J. Ryan (#6208379)Scott E. Rogers (#6237984)Bradley D. Hergott (#6280208)SCANDAGLIA & RYAN55 E. Monroe St., Suite 3440Chicago IL 60603(312) 580-2020 (telephone)(312) 782-3806 (facsimile)

Attorneys for Plaintiff

Of Counsel:

Judith A. PowellGeorgia Bar No. 586125KILPATRICK STOCKTON LLP

1100 Peachtree StreetSuite 2800Atlanta, Georgia 30309(404) 815-6500 (telephone)(404) 815-6555 (facsimile)

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Documents

Popcorn Factory v Peace Love Popcorn