Case 1:15-cv-00661 Document 1 Filed 03/31/15 USDC Colorado Page 1 of 13

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO
Civil Action No.: 15-cv-661
MODMARKET, LLC, a Colorado limited liability company,
Plaintiff,
v.
MOD SUPER FAST PIZZA, LLC, a Delaware limited liability company,
Defendant.

COMPLAINT AND DEMAND FOR JURY TRIAL

Plaintiff Modmarket, LLC (Modmarket) brings this complaint against Defendant MOD
Super Fast Pizza, LLC (MOD Pizza) and alleges as follows:
Parties
1.

Modmarket is a limited liability company organized under the laws of Colorado,

with its principal place of business located in Golden, Colorado. Modmarket is a fast-casual
restaurant chain that serves scratch-made, affordable breakfast, lunch, and dinner menu options
using farm-fresh, quality ingredients.
2.

MOD Pizza is a limited liability company organized under the laws of Delaware,

with its principal place of business located in Bellevue, Washington. On information and belief,
MOD Pizza is a pizza chain that uses an assembly-line model to offer customers customized
thin-crust pizzas.

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Jurisdiction and Venue

3.

This Court has jurisdiction over this action pursuant to 28 U.S.C. 1331,

1338(a), and 15 U.S.C. 1121 because it arises under the Lanham Act, 15 U.S.C. 1051, et
seq., as well pursuant to the Declaratory Judgment Act, 28 U.S.C. 2201.
4.

Venue is proper in the District of Colorado pursuant to 28 U.S.C. 1391(b)

because a substantial part of the events giving rise to this controversy occurred in Colorado, and
because MOD Pizza transacts business in this District and is therefore subject to personal
jurisdiction in the District of Colorado.
Modmarkets Business and Trademark Rights
5.

Founded in 2009, Modmarket is a fast-casual Colorado-based restaurant chain

that offers farm-fresh, made-from-scratch dishes using only simple, clean ingredients.
Modmarket has a seasonally-changing menu that includes farm-fresh salads, toasted sandwiches,
traditional homestyle plates, and brick-oven pizzas. Modmarket provides many gluten-free,
vegan, and vegetarian menu options, and also provides nutritional information for each of its
menu offerings. Modmarkets goal is to provide farm-to-table food in a fast, affordable format
that fits with todays modern lifestyle.
6.

Modmarket has nine locations in Colorado, including locations in Boulder,

Denver, Englewood, Glendale, Greenwood Village, Highlands Ranch, Lakewood, and

Longmont, Colorado, as well as a location at Denver International Airport. Modmarket is
scheduled to open three additional locations in Colorado in the next six months, including in
Colorado Springs and Littleton, Colorado, and a second location at Denver International Airport.
Modmarket also has three locations in Texas, including in Dallas, Flower Mound, and Plano,
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Texas. Modmarket is scheduled to open two additional locations in Texas in the next six months,
including in Richardson and Southland, Texas. Modmarket also has plans to expand into new
markets, including in Phoenix, Arizona, San Diego and San Francisco, California, and Austin,
Texas over the next 12 to 15 months.
7.

Since at least as early as September 4, 2009, Modmarket has used the term

MODMARKET as a trade name and trademark, and has used the MODMARKET mark in
connection with the marketing and promotion of the Modmarket brand. Modmarket owns U.S.
Trademark Registration No. 3,782,131 for MODMARKET for restaurant, bar and catering
services and take-out services, which was registered on April 27, 2010 and claims a priority
date of October 28, 2008. Modmarkets registration of the MODMARKET mark is valid and
subsisting. A copy of Modmarkets U.S. Registration No. 3,782,131 is attached hereto as
Exhibit A.
8.

The United States Patent and Trademark Office (USPTO) approved

Modmarkets MODMARKET mark for registration without citing any pending applications or
registrations as likely to be confused with the MODMARKET mark, including MOD Pizzas
then-pending application to register MOD PIZZA.

MOD Pizza also did not oppose the

MODMARKET mark when it was published for opposition by the USPTO on March 17, 2009.
9.

Modmarket has spent a considerable amount promoting, marketing and protecting

the MODMARKET mark and brand on a local and national level. As a result of Modmarkets
marketing and promotion of the MODMARKET mark, the MODMARKET mark has become
associated with Modmarkets restaurants and brand in the minds of consumers, and has come to

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represent and embody the valuable goodwill associated with Modmarkets farm-fresh, high
quality food and service.
10.

Modmarket has coexisted with MOD Pizza for nearly six years without any

known instances of consumer confusion.

MOD Pizzas Business and Trademark Rights
11.

On information and belief, MOD Pizza is a Washington-based pizza chain that

was founded in 2008. MOD Pizza uses an assembly-line model that allows customers to build a
customized pizza, or choose from several pre-designed offerings. Other menu options include
salads, milkshakes, beer, wine, and dessert. On information and belief, the term MOD in MOD
Pizza stands for Made-On-Demand, which reflects MOD Pizzas concept of fast, made-toorder, customized pizzas, as well as the 1960s British subculture known as Mod.
12.

On information and belief, MOD Pizza operates approximately 37 locations

throughout the United States, and is scheduled to open approximately 17 additional locations in
the near future. MOD Pizza operates in approximately nine different states, including one
location in Centennial, Colorado, two locations in Houston, Texas, and another in Pearland,
Texas. MOD Pizza is scheduled to open three additional locations in Texas, including two in
Austin, Texas, another location in Houston, Texas, and one in West Lake Hills, Texas.
13.

On information and belief, MOD Pizza uses the term MOD PIZZA as a trade

name and trademark. MOD Pizza owns U.S. Trademark Registration No. 3,577,268 for MOD
PIZZA for bar, restaurant and catering services, which was registered on February 17, 2009
and claims a priority date of September 6, 2007. A copy of MOD Pizzas U.S. Registration No.
3,577,268 is attached hereto as Exhibit B.
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Modmarket and MOD Pizzas Dispute

Mod Pizzas Threatened Claim of Infringement
14.

In approximately late September 2014, after five years of peaceful coexistence,

MOD Pizza informed Modmarket that it believes there is a likelihood of consumer confusion
between the MOD PIZZA and MODMARKET marks, and that as a result of such likelihood of
confusion, Modmarkets use of the MODMARKET mark constitutes infringement of MOD
Pizzas MOD PIZZA mark. MOD Pizza has also asserted that it has an exclusive right to use
MOD alone for restaurant services. And, MOD Pizza also threatened that if Modmarket did not
accept MOD Pizzas proposal to limit Modmarkets continued use of the MODMARKET mark,
MOD Pizza would initiate litigation alleging infringement of MOD Pizzas trademark rights.
15.

Contrary to MOD Pizzas contention, Modmarket believes that no likelihood of

confusion exists between the MOD PIZZA and MODMARKET marks because the marks are
dissimilar. Although both marks share MOD, the similarity stops there. MODMARKET is a
fanciful mark comprised of the unitary presentation of MOD and MARKET. In contrast, MOD
PIZZA is two words, with the second word being PIZZA to identify the nature of the food sold.
16.

Modmarket also contends that no consumer confusion is likely because, among

other things, the parties have coexisted without confusion for nearly six years offering entirely
different restaurant concepts with distinct dining experiences. Modmarkets concept focuses on
offering customers farm-fresh, made-from-scratch breakfast, lunch, and dinner menu options
using simple, whole ingredients that can be traced to a collection of local and regional suppliers,
while MOD Pizzas concept focuses almost exclusively on delivering fast pizza, offering
customers a choice between made-to-order customized or pre-designed pizzas.
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17.

Modmarket contends that consumer confusion is also not likely because, although

both the MODMARKET and MOD PIZZA marks have the term MOD in common, the term
mod as used in the MODMARKET mark and MOD as used in the MOD PIZZA mark
suggest a very different meaning and in each case creates a different commercial impression that
reflects the different concepts and brands associated with Modmarket and MOD Pizza. As used
in the mark MODMARKET, the term mod reflects Modmarkets focus on offering food that
fits with its customers modern lifestyle a modern farm-to-table dining experience that is
fast, fresh, and affordable. As used in the mark MOD PIZZA, the term MOD represents MOD
Pizzas Made-On-Demand concept, which offers customers the ability to create quick, madeto-order, customized pizzas, as well as the 1960s British subculture known as Mod.
18.

Modmarket believes that in addition to the entirely different concepts behind the

Modmarket and MOD Pizza brands, as well as the different meanings suggested by the term
mod in the MODMARKET mark and MOD in MOD PIZZA mark, there are also
substantial differences in the appearance and manner of display of the MODMARKET and
MOD PIZZA marks as they are encountered by a consumer in the marketplace. Modmarket
typically promotes its MODMARKET mark as one word in all lower-case letters, with the
phrase FARM FRESH EATERIES in all caps appearing underneath the mark, and with a
design logo of a kitchen fork, spoon, and knife fully enclosed in a circle above the mark, as
depicted below. By contrast, MOD Pizza typically promotes its MOD PIZZA mark as two
separate words in all caps, with the phrase SUPER FAST in all caps appearing underneath the
mark, and with the mark contained in a design logo of a shield or crest. MOD Pizzas design
logo was recently registered by the USPTO on January 13, 2015, and is depicted below. A
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comparison of the appearance and manner of display of the MODMARKET and MOD PIZZA
marks shown below reveals visually distinct marks that eliminate any likelihood of confusion:

19.

Given the different concepts behind the Modmarket and MOD Pizza restaurant

chains, the different significance of the term mod to the Modmarket brand and MOD to
the MOD Pizza brand, and the difference in the MODMARKET and MOD PIZZA marks in
terms of both appearance and manner of display, Modmarket contends that the MODMARKET
and MOD PIZZA marks create entirely different commercial impressions that are unlikely to
lead to any consumer confusion.
20.

Modmarket further contends that, if any likelihood of consumer confusion

between the MODMARKET and MOD PIZZA marks does exist in the markets in which
Modmarket and MOD Pizza are both present, it is attributed solely to MOD Pizzas recent shift
in marketing strategy, whereby it frequently uses the term MOD by itself to advertise and
promote the MOD Pizza brand. MOD Pizzas increased use of the term MOD standing alone,
as opposed to its established, federally-registered composite mark MOD PIZZA, increases the
likelihood of consumer confusion because the term MOD by itself is ambiguous and fails to
identify the nature of the restaurant concept with which it is associated.

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21.

On information and belief, MOD Pizza has filed an application with the USPTO

to register the term MOD as a stand-alone mark. Modmarket contends MOD Pizza does not
have any rights to use the term MOD by itself, and intends to oppose MOD Pizzas application
as soon as the USPTO publishes it for opposition.
22.

Given MOD Pizzas contention that the MODMARKET mark infringes its MOD

PIZZA mark, and Modmarkets contention that no likelihood of consumer confusion exists
between the MODMARKET and MOD PIZZA marks, there exists an actual controversy
between Modmarket and MOD Pizza as to whether Modmarkets use of the MODMARKET
mark constitutes infringement of MOD Pizzas MOD PIZZA mark.
Mod Pizzas Delay in Threatening its Claim of Infringement
23.

MOD Pizza has had constructive notice of Modmarkets intent to use the

MODMARKET mark since at least as early as October 28, 2008, when Modmarket filed its
application to register MODMARKET.

MOD Pizza had further constructive notice of

Modmarkets intent to use the MODMARKET mark when Modmarkets application to register
the MODMARKET mark was published for opposition by the USPTO on March 17, 2009.
24.

On information and belief, MOD Pizza also has been aware of Modmarkets use

of the MODMARKET mark since as early as 2011, when Modmarkets continued plans for
growth and expansion under its MODMARKET mark were discussed in prominent restaurant
trade publications that MOD Pizza is believed to have received and reviewed.
25.

MOD Pizza undeniably had actual knowledge of Modmarket and its

MODMARKET Mark on or about November 13, 2012, when Modmarkets founders met with
MOD Pizzas CEO and founder in Las Vegas, Nevada. MOD Pizzas CEO and founder had been
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aware of Modmarkets brand and concept, and the parties spoke in detail about Modmarkets
history, as well as Modmarkets plans for nationwide growth and expansion. During this
conversation, MOD Pizzas CEO and founder did not object to Modmarkets use of the
MODMARKET mark or its continued growth and expansion of its brand.
26.

Despite MOD Pizzas awareness of Modmarkets use of the MODMARKET

mark, including Modmarkets plans for growth and expansion and its continued use of the
MODMARKET mark to promote, grow, and expand the Modmarket brand, MOD Pizza did not
raise any objections to Modmarkets use of the MODMARKET mark until after peacefully
coexisting for nearly five years. During this time, Modmarket has spent considerable amounts
building its business and valuable goodwill in its MODMARKET mark.
27.

In between the time of Modmarket and MOD Pizzas conversation on or about

November 13, 2012 and MOD Pizzas initial objections to Modmarkets use of the
MODMARKET mark in late September 2014, Modmarket opened six additional Modmarket
locations, including five locations in Colorado and one location in Texas. During that time
period, Modmarket also invested significant time and money in plans to develop and open eight
additional locations, including four locations in Colorado and four locations in Texas. Also
during that time period, Modmarket developed plans to expand its business and open locations in
Arizona, California, and Illinois, which will occur in approximately the next 12 to 15 months.
28.

In addition to opening and making plans to open several additional Modmarket

locations since November 2012, Modmarket has invested substantial amounts in advertising and
promoting the Modmarket brand using the MODMARKET mark in an effort to build name

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recognition and goodwill in the MODMARKET mark, and investing in the MODMARKET
mark as the identity of the Modmarket brand in the minds of the consuming public.
29.

Given MOD Pizzas actual and constructive knowledge of Modmarkets use of its

MODMARKET mark for years, MOD Pizzas delay in objecting to Modmarkets use of the
MODMARKET mark is unreasonable, and results in substantial prejudice to Modmarket.
FIRST CLAIM FOR RELIEF
Declaration of Non-Infringement
30.

Modmarket realleges and incorporates by reference the allegations contained in

Paragraphs 1 through 29 above.

31.

There exists a substantial, present, and justiciable controversy between

Modmarket and MOD Pizza regarding Modmarkets use and registration of the MODMARKET
mark, and whether it infringes on MOD Pizzas MOD PIZZA mark.
32.

MOD Pizza has threatened to sue Modmarket on the basis that a likelihood of

confusion exists between the MODMARKET and MOD PIZZA marks, whereas MODMARKET
contends that no such confusion exists because, among other things, the Modmarket and MOD
Pizza brands are entirely different restaurant concepts offering distinct dining experiences, the
MODMARKET and MOD PIZZA marks suggest different meanings and have a different
significance to the Modmarket and MOD Pizza brands, and the MODMARKET and MOD
PIZZA marks are visually distinct in terms of both appearance and manner of display.
33.

Modmarket has valid and subsisting trademark rights in its MODMARKET mark,

which has coexisted with the MOD Pizza mark on the Principal Trademark Register for nearly
five years without objection and in commerce for nearly six years. Modmarkets use and
registration of the MODMARKET mark is not likely to cause confusion or mistake, or deceive
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as to the source of any goods or services, or as to any affiliation, connection, or association

between Modmarket and MOD Pizza.
34.

Modmarket is entitled to a declaration that its MODMARKET mark does not

infringe on MOD Pizzas claimed trademark rights to the mark MOD PIZZA.
SECOND CLAIM FOR RELIEF
Declaration that Claim of Infringement is Barred by Laches
35.

Modmarket realleges and incorporates by reference the allegations contained in

Paragraphs 1 through 34 above.

36.

There exists a substantial, present, and justiciable controversy between

Modmarket and MOD Pizza regarding Modmarkets use and registration of its MODMARKET
mark, whether it infringes on MOD Pizzas MOD PIZZA mark, and whether MOD Pizza has a
claim for infringement against Modmarket based on its use and registration of its
MODMARKET mark.
37.

MOD Pizza had constructive knowledge of Modmarkets intent to use the

MODMARKET mark as early as October 28, 2008, and actual knowledge of such use and plans
for expansion since at least as early as November 2012; yet, MOD Pizza did not object to
Modmarkets use and registration until years later.
38.

MOD Pizzas delay in objecting to Modmarkets use and registration of its

MODMARKET mark is unreasonable.

39.

During the period of MOD Pizzas unreasonable delay in objecting to

Modmarkets use and registration of the MODMARKET mark, Modmarket has invested
substantial time and resources in building a valuable business around the MODMARKET mark,
including but not limited to opening several additional Modmarket locations and investing a
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considerable amount in advertising and promoting the MODMARKET mark in an effort to build
brand recognition and goodwill.
40.

Given Modmarkets substantial investment in building a valuable business around

the MODMARKET mark, Modmarket would suffer substantial prejudice if MOD Pizza were
now permitted to proceed with its threatened claim that Modmarkets use and registration of the
MODMARKET mark constitutes infringement of MOD Pizzas MOD PIZZA mark.
41.

Given MOD Pizzas unreasonable delay in objecting to Modmarkets use and

registration of the MODMARKET mark, and the substantial prejudice that would result to
Modmarket if MOD Pizza were to now claim infringement, Modmarket is entitled to a
declaration that MOD Pizzas threatened claim of infringement is barred by the doctrine of
laches.
Request for Relief
WHEREFORE, Modmarket requests for relief as follows:
A.

A declaratory judgment that Modmarkets use and registration of its

MODMARKET mark does not infringe MOD Pizzas claimed trademark rights in its MOD
PIZZA mark;
B.

A declaratory judgment that MOD Pizzas threatened claim that Modmarkets use

and registration of its MODMARKET mark infringes MOD Pizzas MOD PIZZA mark is barred
by the doctrine of laches; and
C.

An award of such and further relief as may be just and equitable under the

circumstances.

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March 31, 2015

Respectfully submitted,
s/ Hope Hamilton_________________________
Hope Hamilton (CO Bar No. 48027)
HOLLAND & HART LLP
1800 Broadway, Suite 300
Boulder, Colorado 80302-5234
Tel: 303.473.4822
Fax: 303.416.8842
Email: hihamilton@hollandhart.com;
intaketeam@hollandhart.com
Attorneys for Plaintiff Modmarket, LLC

Plaintiffs address:
322 Crawford Street
Golden, Colorado 80401
7689039_1

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