dS 44C/SDNY

REV. 4/2014

CIVIL COVER SHEET

ganfrCTfvicgjbfi

The JS-44 civilcover sheet and the information contained herein neither replace nor supplement the filing
pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the

Judicial Conference of the United States in Septemberlj^4,

;r1w4, isj^quired
isjjteuired fjf%lo|ltieClerk
fgranroWhe Clerkof
of Courtfc
Court forjhe purpose of

14 Cf

initiating the civil docket sheet.

nCCCMnAMTC
DEFENDANTS

PLAINTIFFS

^Jr

HUTZLER MANUFACTURING COMPANY, INC.

BRITE CONCEPTS INC. AND LAMI PRODUCTS, INC.

ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER

Turner P. Smith, Esq., Curtis, Mallet-Prevost, Colt & Mosle LLP

ATTORNEYS (IF KNOWN)

101 Park Avenue

New York, NY 10178

CAUSE OF ACTION (CITE THE U.S.CIVIL STATUTE UNDER WHICH YOU AREFILING AND WRITE A BRIEF STATEMENT OF CAUSE;
(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)

Counterfeiting/Trademark Infringement-15 U.S.C. 1114; Unfair Competition 15 U.S.C. 1125

Has this action, case, or proceeding, or one essentially the same been previously filed in SDNY atany time? NdIresEuyAgB^rev

If yes, was this case Vol. [x] Invol. Dismissed. No Yes \x\ If yes, give date 08/22/2014
IS THIS AN INTERNATIONAL ARBITRATION CASE?

No 0

YeS Q

TORTS

CONTRACT

ACTIONS UNDER STATUTES

PERSONAL INJURY

PERSONAL INJURY

FORFEITURE/PENALTY

[ J 367 HEALTHCARE/
]110
]120
1130
]140

[ ]150

[ ] 151
[ 1152

INSURANCE
MARINE
MILLER ACT
NEGOTIABLE
INSTRUMENT

[ ] 310 AIRPLANE
[ ] 315 AIRPLANE PRODUCT

RECOVERY OF
OVERPAYMENT 8,
ENFORCEMENT
OF JUDGMENT
MEDICARE ACT
RECOVERY OF

[ ] 330 FEDERAL

DEFAULTED

[ ] 350 MOTOR VEHICLE

[ ] 355 MOTOR VEHICLE

STUDENT LOANS

LIABILITY

[ ] 320 ASSAULT, LIBEL &

SLANDER
EMPLOYERS'
LIABILITY

[ ] 340 MARINE
[ ] 345 MARINE PRODUCT
LIABILITY

(EXCL VETERANS)
[ ]153

[ ]160

[ 1190
[ 1195

[ ] 360 OTHER PERSONAL

OF VETERAN'S
BENEFITS
STOCKHOLDERS
SUITS
OTHER
CONTRACT
CONTRACT
PRODUCT

[ ] 362 PERSONAL INJURY -

INJURY
MED MALPRACTICE

REAL PROPERTY

[ ] 220
[ ]230
[ ]240
[ 1245

LAND

CONDEMNATION
FORECLOSURE

PRODUCT LIABILITY

[ ] 368 ASBESTOS PERSONAL

SEIZURE OF PROPERTY
21 USC 881

LIABILITY

[ ] 440 OTHER CIVIL RIGHTS

(Non-Prisoner)

[ ] 441 VOTING
[ ] 442 EMPLOYMENT
[ ] 443 HOUSING/

RENT LEASE &

EJECTMENT
TORTS TO LAND
TORT PRODUCT
ALL OTHER

ACCOMMODATIONS

[ ] 445 AMERICANS WITH

DISABILITIES EMPLOYMENT

[ ] 422 APPEAL

28 USC 157

PROPERTY RIGHTS

[ ] 370 OTHER FRAUD

[ ] 371 TRUTH IN LENDING

SOCIAL SECURITY

[ ] 380 OTHER PERSONAL

LABOR

PROPERTY DAMAGE

[ ] 385 PROPERTY DAMAGE

[ ] 710 FAIR LABOR

STANDARDS ACT

VACATE SENTENCE
28 USC 2255

[ ] 530 HABEAS CORPUS

[ ] 535 DEATH PENALTY
[ ] 540 MANDAMUS & OTHER

[
[
[
[
[

]861
] 862
] 863
] 864
] 865

HIA(1395ff)
BLACK LUNG (923)
DIWC/DIWW (405(g))
SSID TITLE XVI
RSI (405(g))

[
[
[
[
[

] 410 ANTITRUST
] 430 BANKS & BANKING
] 450 COMMERCE
] 460 DEPORTATION
] 470 RACKETEER INFLU
ENCED & CORRUPT
ORGANIZATION ACT

(RICO)
[ ]480 CONSUMER CREDIT
[ ] 490 CABLE/SATELLITE TV

[ ] 850 SECURITIES/
COMMODITIES/
EXCHANGE

[ ] 890 OTHER STATUTORY

RELATIONS

ACTIONS

[ ] 740 RAILWAY LABOR ACT

[ I 751 FAMILYMEDICAL
LEAVE ACT (FMLA)
[ ] 790 OTHER LABOR
LITIGATION

[ ] 791 EMPL RET INC

SECURITY ACT
IMMIGRATION

PRISONER CIVIL RIGHTS

] 462 NATURALIZATION

[ ] 550 CIVIL RIGHTS

[ ] 555 PRISON CONDITION
[ ] 560 CIVIL DETAINEE

REAPPORTIONMENT

28 USC 158

[ ] 423 WITHDRAWAL

[ ] 820 COPYRIGHTS
[ ] 830 PATENT
H 840 TRADEMARK

PERSONAL PROPERTY

[ ] 463 ALIEN DETAINEE

[ ] 510 MOTIONS TO

CIVIL RIGHTS

OTHER STATUTES

[ 1375 FALSE CLAIMS

[ J 400 STATE

[ ] 690 OTHER

PRISONER PETITIONS

ACTIONS UNDER STATUTES

BANKRUPTCY

INJURY PRODUCT

[ ] 720 LABOR/MGMT

LIABILITY

[ ]290

INJURY/PRODUCT LIABILITY

[ ] 365 PERSONAL INJURY

PRODUCT LIABILITY

LIABILITY

[ 1210

PHARMACEUTICAL PERSONAL [ ] 625 DRUG RELATED

PRODUCT LIABILITY

RECOVERY OF
OVERPAYMENT

( ]196 FRANCHISE

&Case No 14 Civ. 4297

NATURE OF SUIT

(PLACE AN [x] IN ONE BOXONLY)

[
I
[
[

ltd

APPLICATION

] 465 OTHER IMMIGRATION

[ ] 891 AGRICULTURAL ACTS

FEDERAL TAX SUITS

[ ] 870 TAXES (U.S. Plaintiff or

] 893 ENVIRONMENTAL

Defendant)
[ ] 871 IRS-THIRD PARTY

] 895 FREEDOM OF

MATTERS
INFORMATION ACT

26 USC 7609

] 896 ARBITRATION
] 899 ADMINISTRATIVE
PROCEDURE ACT/REVIEW OR
APPEAL OF AGENCY DECISION

[ ] 950 CONSTITUTIONALITY OF
STATE STATUTES

ACTIONS

CONDITIONS OF CONFINEMENT

[ ] 446 AMERICANS WITH

DISABILITIES -OTHER

[ ] 448 EDUCATION

REAL PROPERTY

Checkifdemanded in complaint:

CHECK IF THIS IS A CLASS ACTION

UNDER F.R.C.P. 23

DEMAND $

OTHER

DO YOyjCLAjM THIS CASE IS RELATED TO ACIVIL CASE NOW PENDING IN S.D.N.Y.'

JUDGE

DOCKET NUMBER

Check YES only ifdemanded incomplaint

JURY DEMAND: YES mo

NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-32).

(PLACE AN x IN ONE BOX ONLY)

S 1 Original

Proceeding

ORIGIN

[_| 2 Removed from

state Court

L-1 3 Remanded Q 4 Reinstated or

from

a. all parties represented

Reopened

LJ 5 Transferred from fj 6 Multidistrict

(Specify District)

Litigation

fj 7 Appeal to District
Judge from

Magistrate Judge
Judgment

Appellate

| | b. Atleast one
party Is pro se.

(PLACEANxINONEBOXONLY)

1 U.S. PLAINTIFF

BASIS OF JURISDICTION

2 U.S. DEFENDANT [x] 3 FEDERAL QUESTION

IF DIVERSITY, INDICATE

4 DIVERSITY

CITIZENSHIP BELOW.

(U.S. NOT A PARTY)

CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)

(Place an [X] in one box for Plaintiff and one box for Defendant)
CITIZEN OF THIS STATE

CITIZEN OF ANOTHER STATE

PTF

DEF

[ ]1

[ ]1

[ ]2

[ ]2

PTF DEF
CITIZEN OR SUBJECT OF A
FOREIGN COUNTRY

[]3[]3

INCORPORATED or PRINCIPAL PLACE

[ ]4 [ ]4

INCORPORATED and PRINCIPAL PLACE

PTF

DEF

[ ]5

[ ]5

[]6

[ ]6

OF BUSINESS IN ANOTHER STATE

FOREIGN NATION

OF BUSINESS IN THIS STATE

PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)

Hutzler Manufacturing Company, Inc.

4 Grace Way
Canaan, CT 06018

DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)

Brite Concepts Inc.

1043 Grand Avenue #101, Saint Paul, Minnesota 55105-3002
LaMi Products, Inc.

860 Welsh Road, Huntingdon Valley, PA 19006

DEFENDANT(S) ADDRESS UNKNOWN
REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN
RESTOENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:

Checkone:

THIS ACTION SHOULD BE ASSIGNED TO:

WHITE PLAINS

|x] MANHATTAN

(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVIL RIGHTS
COMPLAINT.)

DATE 12/3/2014

SIGNATUKB-SF ffotfttH/iX OF RECORD

ADMITTED TO PRACTICE IN THIS DISTRICT

[ ] NO

[Xj YES (DATE ADMITTED MoPJ

RECEIPT #

Attorney Bar Code # TS 8052

Magistrate Judge is to be designated by the Clerk of the Court.

Magistrate Judge
Ruby J. Krajick, Clerk of Court by.

is so Designated.

, Deputy Clerk, DATED.

UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)

Yr. 1981

UNITED STATES DISTRICT COURT

.14_CVY 9556

SOUTHERN DISTRICT OF NEW YOR

' P'

%.

HUTZLER MANUFACTURING COMPANY, INC.

Plaintiff,

COMPLAINT

-against14 Civ.

BRITE CONCEPTS INC. AND LAMI PRODUCTS, INC.,

rvti

cr
CO

">

Defendants.

CO

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CD

p
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Co

Plaintiff Hutzler ManufacturingCompany, Inc. ("Hutzler''), for its complaint

against defendants Brite Concepts Inc. ("Brite Concepts") and LaMi Products, Inc. ("LaMi")
alleges as follows:
NATURE OF THE ACTION

1.

This is a civil action for injunctive relief and damages for counterfeiting and

trademark infringement under Section 32(1) of the Lanham Act (15 U.S.C. 1114(1)), unfair
competition under Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)), and for common

law trademark infringement, unfair competition, and tortious interference under New York law.
THE PARTIES

2.

Plaintiff Hutzler is a corporation organized and existing under the laws of

the State of New York. Hutzler does business in this judicial district.
3.

On information and belief, defendant Brite Concepts is a corporation

organized and existing under the laws of the state of Delaware, with a principal place of
business in Minnesota. On information and belief, Brite Concepts imports and distributes the
products at issue in this judicial district.

20392642

4.

On information and belief, defendant LaMi is a corporation organized and

existing under the laws of the state of Pennsylvania. On information and belief, LaMi imports
and distributes the products at issue in this judicial district.
JURISDICTION AND VENUE

5.

This Court has jurisdiction over the subject matter of this action pursuant to

15 U.S.C. 1221 and 28 U.S.C. 1331, 1338, and 1367.

6.

This Court has personal jurisdiction over defendants because defendants

continuously and systematically conduct business within the State of New York.

7.

Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b) and

1400(b) because on information and belief, defendants have engaged in the complained-of acts
of infringement in this judicial district.
PRELIMINARY STATEMENT

8.

This is an action to enforce and protect Hutzler's valuable intellectual

property rights. Plaintiff is a manufacturer and distributor of housewares; the products at issue
in this case are plastic containers, used for storing and preserving fruits, that bear the TOMATO

SAVER mark. Defendants Brite Concepts and LaMi have adopted Hutzler's exact trademark
to identify what can only be described as a knock-off food storage container. Defendants'
conduct constitutes trademark infringement, counterfeiting, unfair competition, and tortious
interference with business.

FACTUAL BACKGROUND
Hutzler's Business

9.

Hutzler, a manufacturer and distributor of housewares, has been family

owned and operated since 1938.

-2-

10.

Since its inception, Hutzler has been a pioneer in the housewares industry.

For example, in the 1960s, Hutzler began molding cooking and serving utensils with
MeLaMine, the highest quality plastic available. In the 1970s, Hutzler pioneered the

manufacture of fiberglass-reinforced nylon utensils. In the 1980s, Hutzler began manufacturing

unique, innovative baking gadgets.
11.

Over the past decade, the housewares industry has seen a major shift in

structure. There has been tremendous consolidation among retailers and many of the smaller
players have gone out of business. Many of Hutzler's customers have also become its
"competitors" in the direct importation of products. While Hutzler was one of the first in the
industry to secure the sourcing of products overseas, today many of Hutzler's customers have

the same ability due to globalization. This has caused Hutzler to take strategic steps and make
targeted investments to move up the innovation ladder in order to compete.
12.

In particular, Hutzler has had to develop new and unique products itself (or

innovate in the use of packaging), instead of relying on its manufacturing partners or selling
"knock-off products, as many importers now do. Hutzler now focuses on designing products

that are unique in features and/or design, and it has taken steps to protect these innovations
through the use of utility and design patents and through its use of trademarks to identify the

source of its goods. Nearly all of the company's revenue growth comes from new products.
13.

In 2005, Hutzler introduced a line of products used for storing and

preserving various types of produce. This line of plastic products is called the "Food Saver
Line." The Food Saver Line contains an array of food storage containers, including the Tomato
Saver. The Tomato Saver bears the TOMATO SAVER mark.

14.

Designing these products was not an easy task. Each product had its own

design challenges and the design process itself was an expensive and time-consuming

endeavor. A great deal of time and money was spent working with product development
consultants and 3D designers/model-makers. Each product went through numerous iterations
before arriving at its final design. The process took between six and twelve months for each
Food Saver product.

15.

Hutzler's Food Saver Line has quickly become the company's most popular

product line. The products in Hutzler's Food Saver Line sell for between $2.99 and $3.99 each.
Sales of products in the Food Saver Line represent approximately 25 percent of Hutzler's

domestic sales, and the Tomato Saver is one of Hutzler's best-selling products.
Hutzler's TOMATO SAVER Trademark

16.

On May 18, 2010, Hutzler filed a trademark application with the PTO for the

trademark TOMATO SAVER for International Class 021 for "Containers for household or

kitchen use; Containers for household use; Household containers for foods; Plastic storage
containers for household or domestic use; Plastic storage containers for household use; Portable

plastic containers for storing household and kitchen goods; Servingware for serving food."
17.

On December 7, 2010, the PTO issued Registration No. 3,886,427 for the

TOMATO SAVER trademark (the "TOMATO SAVER Mark") with Hutzler as the owner.

Attached hereto as Exhibit 1 is a true and correct copy of the registration certificate for the
TOMATO SAVER Mark. Hutzler is the owner of the entire right, title, and interest in and to
the TOMATO SAVER Mark which is in full force and effect.

18.

Hutzler also owns valid common law trademark rights in TOMATO

SAVER. By virtue of its adoption and continuous use in commerce since 2007, Hutzler's

-4-

TOMATO SAVER trademark has become firmly established in the minds of actual and
potential customers nationwide as distinctly identifying Hutzler's plastic storage containers,

and this occurred long before Brite Concepts and LaMi began selling their plastic storage
container products. Hereinafter, Hutzler's federal and common law TOMATO SAVER
trademarks are individually and collectively referred to as Hutzler's "TOMATO SAVER
Trademarks."

Defendants' Acts of Counterfeiting, Trademark Infringement,

Unfair Competition, and Tortious Interference With Business

19.

As explained in more detail below, defendants have engaged in acts of

trademark infringement, counterfeiting, unfair competition, and tortious interference with

business. Defendants have misappropriated Hutzler's protected trademarks to exploit the good
will and reputation of Hutzler with the intent to sow confusion between the two companies'

products. These acts of infringement also constitute counterfeiting, unfair competition, and
tortious interference with business.

20.

On information and belief, defendant Brite Concepts imports household

products manufactured from Asia into North America, where it distributes them.

21. On information and belief, defendant LaMi is a distributor and a clip-strip/

J hook supplier of household products. On information and belief, LaMi bought the products
bearing the infringing TOMATO SAVER Trademarks from Brite Concepts, and distributed

them to stores in this judicial district, including A&P, Waldbaum's, Pathmark, and SuperFresh
Supermarkets. In addition, LaMi distributed products bearing the infringing TOMATO
SAVER Trademarks to Tops Markets, LLC. Hutzler has also sold its Tomato Saver products to
these stores.

-5-

22.

Brite Concepts and LaMi have branded their tomato container with the

TOMATO SAVER trademark.

23.

Brite Concepts and LaMi are not affiliated with Hutzler and have never been

licensed or otherwise authorized by Hutzler to use its TOMATO SAVER Trademarks.

24.

Brite Concepts' and LaMi's misappropriation of Hutzler's TOMATO

SAVER Trademarks commenced over four years after Hutzler began using its Trademarks and
after Hutzler had obtained a federal registration for its Mark on the Principal Register. That
registration provides Hutzler with nationwide exclusive use to that Mark and any confusingly
similar trademarks.

25.

Finally, Brite Concepts and LaMi knowingly, willfully, and wrongfully

interfered with the relationship between Hutzler and its customers by selling or offering to sell
containers bearing infringing trademarks to Hutzler's customers either (a) without notifying
such customers that the infringing containers infringed certain trademark registrations held by
Hutzler, or (b) falsely representing that such infringing containers did not infringe such
trademarks.

The Parties' History

26.

In or about April of 2014, Hutzler learned that Brite Concepts and LaMi

were selling a knock-off version of Hutzler's Tomato Saver, which was labelled with Hutzler's
protected TOMATO SAVER Trademarks.

27.

On April 30, 2014, Hutzler sent a cease and desist letter to Brite Concepts,

demanding that Brite Concepts stop selling the infringing version of the Tomato Saver.
28.

On May 9, 2014, Michael G. Sehl, the President of Brite Concepts, stated via

electronic mail that he received Hutzler's cease and desist letter, and that Brite Concepts would

-6-

immediately cease and desist any further use of the TOMATO SAVER designation on both
packaging and on its website.
29.

On May 9, 2014, Hutzler responded to Mr. Sehl's email, demanding an

accounting for all past sales of any products bearing the TOMATO SAVER Trademarks.
30.

On May 27, 2014, Hutzler sent another cease and desist letter to Brite

Concepts, demanding that Brite Concepts stop selling the infringing version of the Tomato
Saver.

31.

On May 27, 2014, Hutzler sent a cease and desist letter to LaMi, demanding

that LaMi stop selling the infringing version of the Tomato Saver.
32.

On or about June 6, 2014, Brite Concepts responded to Hutzler's May 27,

2014 letter, stating that it would cease using the mark TOMATO SAVER on food storage
containers.

33.

In addition, LaMi verbally indicated that it would recall its products

containing the infringing TOMATO SAVER mark from Tops Markets, LLC.
Defendants' Actions Will Cause a Likelihood of Confusion

34.

Brite Concepts' and LaMi's actions have caused a likelihood of consumer

confusion or mistake, and have misled and deceived consumers, as to the source, origin,
connection, affiliation, sponsorship, or approval of Brite Concepts' and LaMi's goods, and

have diverted sales intended for Hutzler to Brite Concepts' and LaMi's competing goods.
35.

Brite Concepts' and LaMi's unauthorized sales, marketing, and advertising

using Hutzler's protected TOMATO SAVER Trademarks has misled consumers into

mistakenly believing that Brite Concepts' and LaMi's goods are owned, authorized, or
approved by, or affiliated with Hutzler.

-7-

36.

First, Hutzler's Trademarks are strong and are therefore entitled to

protection. Second, Brite Concepts' and LaMi's infringing marks are identical in appearance,
sound, and meaning to Hutzler's Trademarks. Third, Hutzler's products and Brite Concepts'
and LaMi's products directly compete with each other. Fourth, consumer confusion has

occurred and will occur if Brite Concepts and LaMi continue to use their infringing marks.
Fifth, Brite Concepts and LaMi adopted their infringing marks in bad faith in order to exploit
the good will and reputation of Hutzler with the intent to sow confusion between the two
companies' products. Sixth, Brite Concepts' and and LaMi's products are clearly inferior to

Hutzler's and are more cheaply manufactured than Hutzler's. Finally, because these products
are priced so inexpensively, consumers are generally less careful in making a purchase, and are
more likely to be confused by identical marks.

37.

As a result of Brite Concepts' and LaMi's conduct, Brite Concepts and LaMi

have profited because of their use of trademarks that infringe upon Hutzler's Trademarks.

38.

As a result of Brite Concepts' and LaMi's conduct, Brite Concepts and LaMi

have been unjustly enriched because of their use of trademarks that infringe Hutzler's
Trademarks.

COUNT I

Federal Counterfeiting - TOMATO SAVER

39.

Hutzler incorporates by reference as though fully set forth herein the

allegations contained in paragraphs 1 through 37 above.

40.

Hutzler continues to use its TOMATO SAVER federally registered

trademark in connection with its advertising and sale of plastic storage containers.
41.

Brite Concepts and LaMi have used their infringing "Tomato Saver"

trademark in a manner that is identical to, or substantially indistinguishable from, Hutzler's

TOMATO SAVER federally registered trademark, registered on the Principal Register of the
PTO in advertising and sale of plastic storage containers.

42.

Brite Concepts' and LaMi's use of their infringing Tomato Saver trademark

has caused and will cause a likelihood of confusion, mistake, and deception with Hutzler's
federally registered TOMATO SAVER trademark on the Principal Register by creating the
false and misleading impression that Brite Concepts' and LaMi's goods are connected with or
affiliated with, or sponsored, approved, or authorized by Hutzler.

43.

Brite Concepts and LaMi have engaged in bad faith in the adoption and use

of their infringing Tomato Saver trademark.

44.

Brite Concepts' and LaMi's intentional and willful use of their Tomato

Saver trademark which is identical to and indistinguishable from Hutzler's TOMATO SAVER
Trademark constitutes counterfeiting in violation of Section 32 of the Lanham Act (15 U.S.C.
1114(l)(a)).

45.

Hutzler has been damaged by Brite Concepts' and LaMi's counterfeiting of

its TOMATO SAVER trademark, in an amount to be determined at trial.

COUNT II

Federal and Common Law Trademark Infringement;

Federal Unfair Competition - TOMATO SAVER

46.

Hutzler incorporates by reference as though fully set forth herein the

allegations contained in paragraphs 1 through 44 above.

47.

Hutzler owns a valid federal trademark registration for TOMATO SAVER,

and continues to use its TOMATO SAVER federally registered trademark in connection with
its advertising and sale of plastic storage containers.

48.

Brite Concepts' and LaMi's use of their infringing Tomato Saver mark is

identical or nearly identical to Hutzler's TOMATO SAVER Trademarks.

49.

Brite Concepts' and LaMi's use of their infringing TOMATO SAVER mark

for plastic storage containers is similar in appearance, sound, and meaning to Hutzler's
TOMATO SAVER Trademarks for plastic storage containers.

50.

Brite Concepts' and LaMi's use of their infringing Tomato Saver mark for

plastic storage containers creates the same or nearly the same commercial impression as to one
or more of Hutzler's TOMATO SAVER Trademarks for plastic storage containers.
51.

Hutzler's products and Brite Concepts' and LaMi's products directly

compete with each other. In addition, Hutzler, Brite Concepts, and LaMi solicit some of the
same customers and use the same or similar channels of trade to advertise their products.

52.

Brite Concepts and LaMi adopted their infringing Tomato Saver mark in bad

faith in order to exploit the good will and reputation of Hutzler with the intent to sow confusion
between the two companies' products.
53.

Brite Concepts' and LaMi's products are clearly inferior to Hutzler's and are

more cheaply manufactured than Hutzler's.

54.

Because low cost plastic containers are priced inexpensively, purchasers are

generally not careful in making a purchase. They are more likely to be confused by similar
marks.

55.

On information and belief, Brite Concepts and LaMi knew about Hutzler

prior to their first use of their infringing Tomato Saver mark.

56.

Brite Concepts' and LaMi's use of Hutzler's identical TOMATO SAVER

Trademarks has caused and will cause a likelihood of confusion, mistake, and deception by
creating the false and misleading impression that Brite Concepts' and LaMi's goods are

connected with or affiliated with, or sponsored, approved, or authorized by Hutzler.

-10-

57.

Brite Concepts' and LaMi's intentional and willful use of their infringing

Tomato Saver trademark, that are identical to Hutzler's TOMATO SAVER Trademarks, will

cause a likelihood of confusion, mistake, and deception by confusing consumers as to the

source of the products, and constitutes infringement in violation of Section 32 of the Lanham
Act (15 U.S.C. 1114(1 )(a)).

58.

Brite Concepts' and LaMi's intentional and willful use of trademarks that are

identical, nearly identical, or similar to Hutzler's TOMATO SAVER Mark constitutes unfair
competition in violation of Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)).
59.

As a direct result of Brite Concepts' and LaMi's conduct, Hutzler has

suffered damages and Brite Concepts and LaMi have obtained profits and have been unjustly
enriched.

60.

Hutzler has been damaged by Brite Concepts' and LaMi's infringement and

unfair competition of its TOMATO SAVER Trademarks, in an amount to be determined at

trial.
COUNT III

Unfair Competition

61.

Hutzler incorporates by reference as though fully set forth herein the

allegations contained in paragraphs 1 through 59 above.

62.

Hutzler is the exclusive owner of the TOMATO SAVER Trademarks, which

are affixed to the Tomato Saver.

63.

Hutzler has created the Tomato Saver through extensive time, labor, skill,

64.

On information and belief, after seeing Hutzler's commercial success, Brite

and money.

Concepts and LaMi used Hutzler's Trademarks in competition with Hutzler, gaining an unfair

-11-

advantage, because Brite Concepts and LaMi bore little or no burden of expense of
development.

65.

By creating a product essentially identical to Hutzler's in name, Brite

Concepts and LaMi have misappropriated a commercial advantage belonging to Hutzler.

66.

By taking and using Hutzler's protected trademark to compete against

Hutzler, Brite Concepts and LaMi have misappropriated a commercial advantage belonging to
Hutzler.

67.

Brite Concepts and LaMi have also engaged in bad faith misappropriation of

the labors of Hutzler which has caused and is likely to cause confusion, or to deceive
purchasers as to the origin of the goods.

68.

Brite Concepts' and LaMi's actions have caused significant commercial

damage to Hutzler.
69.

Brite Concepts' and LaMi's acts have been intentional, willful, and in

conscious disregard of Hutzler's rights, entitling Hutzler to the remedies provided under New
York law.

COUNT IV

Tortious Interference With Business

70.

Hutzler incorporates by reference as though fully set forth herein the

allegations contained in paragraphs 1 through 68 above.

71.

On information and belief, at the time it sold or offered for sale their

containers bearing the infringing Tomato Saver mark, Brite Concepts and LaMi knew that
Hutzler was selling the Tomato Saver bearing the TOMATO SAVER Trademarks to customers
within the United States.

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72.

On information and belief, at the time it sold or offered for sale the

containers bearing the infringing Tomato Saver trademark, Brite Concepts and LaMi had notice
and actual knowledge that the TOMATO SAVER Trademarks were subject to trademark
registrations issued to Hutzler by the PTO.

73.

On information and belief, Brite Concepts and LaMi knowingly, willfully,

and wrongfully interfered with the relationship between Hutzler and its customers by selling or
offering to sell containers bearing infringing trademarks to Hutzler's customers either

(a) without notifying such customers that the infringing containers infringed certain trademark
registrations held by Hutzler, or (b) falsely representing that such infringing containers did not
infringe such trademarks.

74.

Brite Concepts and LaMi, through their tortious actions, directly and

proximately harmed Hutzler by causing Hutzler's customers to cease doing business with
Hutzler.

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WHEREFORE, plaintiff Hutzler demands judgment against defendants Brite

Concepts and LaMi as follows:
(1)

Adjudging that defendants' use of the TOMATO SAVER name constitutes

(2)

Adjudging that defendants' counterfeiting was willful and deliberate, and

counterfeiting;

deeming this case exceptional under 35 U.S.C. 285;

(3)

Adjudging that defendants' use of the TOMATO SAVER name constitutes

trademark infringement and unfair competition;

(4)

Adjudging that defendants' trademark infringement and unfair competition

was willful and deliberate, and deeming this case exceptional under 35 U.S.C. 285;
(5)

Adjudging defendants to have engaged in unfair competition with Hutzler;

(6)

Adjudging defendants to have tortiously interfered with Hutzler's business;

(7)

Ordering that defendants expressly abandon any trademark, trade name, or

business name filings or registrations that comprise or include the terms TOMATO SAVER which
it has made or secured;

(8)

Awarding Hutzler statutory damages in connection with Counts I and II for

defendants' intentional and willful violation of 15 U.S.C. 1114(l)(a) pursuant to 15 U.S.C.

1117;

(9)

Awarding Hutzler statutory damages in connection with Count II for

defendants' intentional and willful violation of 15 U.S.C. 1125(a) pursuant to 15 U.S.C. 1117;
(10)

Awarding Hutzler damages in connection with Counts II through IV in an

amount to be determined at trial;

-14-

(11)

Awarding Hutzler its costs and reasonable attorneys' fees pursuant to

15 U.S.C. 1117;

(12)

Awarding such other and further relief as the Court deems just and proper

under the circumstances.

New York, New York

December 3, 2014

Respectfully submitted,

CURTIS, MALLET-PREVOST,
COLT & MOSLE LLP

By:.

duuuvi c^>feTurner P. Smith (TS 8052)

Michael R. Graif (MG 4795)
Nicole M. Mazanitis (NM 1983)

101 Park Avenue

New York, New York 10178

(212) 696-6000

Attorneysfor Plaintiff

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Mttit<* states* of ^mer,w

VII'*

SHmteb g>tatetf patent anb {Erafcetnark Office

^H

Tomato Saver
Reg. No. 3,886,427

HUTZLER MANUFACTURING CO., INC. (NEW YORK CORPORATION)

4 GRACE WAY

Registered Dec. 7,2010

Int. CI.: 21

CANAAN, CT 06018
FOR: CONTAINERS FOR HOUSEHOLD OR KITCHEN USE; CONTAINERS FOR HOUSEHOLD

USE; HOUSEHOLD CONTAINERS FOR FOODS; PLASTIC STORAGE CONTAINERS FOR

HOUSEHOLD OR DOMESTIC USE; PLASTIC STORAGE CONTAINERS FOR HOUSEHOLD
TRADEMARK

USE; PORTABLE PLASTIC CONTAINERS FOR STORING HOUSEHOLD AND KITCHEN

PRINCIPAL REGISTER

GOODS; SERVINGWARE FOR SERVING FOOD, IN CLASS 21 (U.S. CLS. 2, 13, 23, 29, 30,
33,40 AND 50).
FIRST USE 3-1-2007; IN COMMERCE 3-1-2007.
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR

TICULAR FONT, STYLE, SIZE, OR COLOR.

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "TOMATO", APART FROM
THE MARK AS SHOWN.

SER. NO. 85-041,326, FILED 5-18-2010.

SARA BENJAMIN, EXAMINING ATTORNEY

Director ot" the L'nited States 1'utcnt mid fimlcnuirk Office