Bon Appetit v. Schwan's - Bon Appetit Trademark Complaint PDF

Case 2:15-cv-07227 Document 1 Filed 09/15/15 Page 1 of 13 Page ID #:1
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PAUL R. GARCIA [Pro Hac Vice to be filed]

pgarcia@partridgegarcia.com
COLIN T.J. OBRIEN [Pro Hac Vice to be filed]
colin@partridgegarcia.com
PARTRIDGE & GARCIA, P.C
321 North Clark, Suite 720
Chicago, Illinois 60654
Telephone: (312) 634-9500
PAUL D. SUPNIK [SBN 52842]
paul@supnik.com
9401 Wilshire Blvd., Suite 1250
Beverly Hills, CA 90212
Telephone: (310) 859-0100
Facsimile: (310) 388-5645
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Attorneys for Plaintiff

13 BON APPTIT DANISH, INC.
UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT COURT OF CALIFORNIA
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WESTERN DIVISION
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BON APPTIT DANISH, INC.

a California Corporation,
19 Plaintiff,
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)
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v.
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SCHWANS IP, LLC,
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a Minnesota Limited Liability
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Company, and
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SCHWANS CONSUMER
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BRANDS, INC.
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a Georgia Corporation,
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Defendants.
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____________________________ )
Civil Action No:

COMPLAINT FOR:
(1) VIOLATION OF SECTION
32 OF THE LANHAM ACT
43(A) OF THE LANHAM
ACT
17200 OF CALIFORNIA
BUSINESS AND
PROFESSIONS CODE
(4) CANCELLATION OF
FEDERAL TRADEMARK
REGISTRATION 15 U.S.C.
1119
DEMAND FOR JURY TRIAL
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COMPLAINT
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Bon Apptit Danish, Inc. (Bon Apptit), brings this action for trademark
infringement, unfair competition, and deceptive business practices against
Schwans IP, LLC and Schwans Consumer Brands, Inc. (collectively Schwans)
and states as follows:
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NATURE OF ACTION
1.
Bon Apptit asserts both Federal and State causes of action based
on Schwans infringement of Bon Apptits trademarks as follows: (1)

infringement of a registered trademark in violation of the Lanham Act, 15 U.S.C.
1114; (2) unfair competition in violation of the Lanham Act, 15 U.S.C.
1125(a)(1)(A); (3) infringement and unfair competition in violation of Section
17200 of the California Business and Professions Code; and (4) cancellation of
Schwans trademark registration 3,741,789 under 15 U.S.C. 1127.
2.
Bon Apptit brings this action due to Schwans unauthorized use of
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Bon Apptits registered trademark BON APPETIT in connection with the sale of
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pizza. Schwans infringing use of the BON APPETIT trademark is likely to cause
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confusion, harming the public and damaging Bon Apptits valuable rights.
JURISDICTION
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3.
This Court has original jurisdiction over Counts One to Four under
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28 U.S.C. 1338(a) and 28 U.S.C. 1331 because they arise under the laws of the
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United States, namely the Lanham Act, 15 U.S.C. 1051 et seq., which is an Act
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of Congress relating to trademarks and unfair competition.
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This Court has
supplemental jurisdiction over Count Three under 28 U.S.C. 1367(a) because it is

so related to the claims within the Courts original jurisdiction that it forms a part
of the same case of controversy under Article III of the United States Constitution.
4.
This Court also has original jurisdiction over the entirety of this
action under 28 U.S.C. 1332 because the matter in controversy exceeds the sum
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or value of $75,000, exclusive of interest and costs, and is between citizens of
different states.
PARTIES
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5.
Plaintiff Bon Apptit is a California corporation with its principal
place of business at 4525 District Blvd, Vernon, California 90058.

6.
On information and belief, Defendant Schwans IP, LLC is a
Minnesota limited liability company with a principal place of business at 115 West
College Drive, Marshall, Minnesota 56258.
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7.
On information and belief, Defendant Schwans Consumer Brands
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Inc. is a Georgia corporation with a principal place of business at 100 South 5th
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Street #1075, Minneapolis, Minnesota 55402.
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BON APPTITS PRIOR RIGHTS

8.
In the mid-1980s, Bon Apptit first began selling fresh pastries
delivered in baskets to retailers in the Los Angeles area.

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Bon Apptits pastries soon achieved a following among Los
Angelenos which allowed the business to expand and grow quickly.

10.
Capitalizing on its early success, Bon Apptit began selling
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danishes, cakes and muffin pastries for on the go consumers under the BON
APPETIT mark in 1990.
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Since its humble start, Bon Apptit has become the premier on the
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go baker in North America.
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APPETIT, BON APPETIT AMERICAS PASTRY CHEF, and BUON APPETITO
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(collectively BON APPETIT Marks) products in thousands of retail locations
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throughout the United States.
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12.
Currently, Bon Apptit sells its branded BON
To protect and give further notice of its rights, Bon Apptit owns a
federal trademark registration for BON APPETIT, Reg. No. 1,826,501 for danish,
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cakes and muffin pastries, with the marks date of first use and first use in
commerce on August 1, 1990. This registration issued on March 15, 1994. A copy
of the Registration certificate for this mark is attached as Exhibit A. The BON
APPETIT registration is valid and subsisting, and in accordance with 1057(b) of
the Lanham Act, is prima facie evidence of Bon Apptits ownership of the mark,
the validity of the mark, and its exclusive right to use the mark in connection with
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the above identified goods. Further, the BON APPETIT mark has been held
incontestable in accordance with 15 U.S.C. 1065 of the Lanham Act, which
constitutes conclusive evidence of the validity of the BON APPETIT mark and
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registration and Bon Apptits exclusive right to use the registered mark in
commerce.
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Bon Apptit also owns a federal trademark registration for BUON
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APPETITO, Reg. No. 1,960,572 for bakery goods, with the marks date of first
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use and first use in commerce on November 12, 1994. This registration issued on
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March 5, 1996. A copy of the Registration certificate for this mark is attached as
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Exhibit B. The BUON APPETITO registration is valid and subsisting, and in
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accordance with section 1057(b) of the Lanham Act, is prima facie evidence of
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Bon Apptits ownership of the mark, the validity of the mark, and its exclusive
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right to use the mark in connection with the above identified services.
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Bon Apptit further owns a federal trademark registration for BON
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APPETIT AMERICAS PASTRY CHEF, Reg. No. 3,441,174 for bakery
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products, with the marks date of first use and first use in commerce on 2004.
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This registration issued on June 3, 2008. A copy of the Registration certificate for
this mark is attached as Exhibit C. The BON APPETIT AMERICAS PASTRY
CHEF registration is valid and subsisting, and in accordance with section 1057(b)
of the Lanham Act, is prima facie evidence of Bon Apptits ownership of the
mark, the validity of the mark, and its exclusive right to use the mark in connection
with the above identified services
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Bon Apptit has sold millions of dollars of goods using its BON
APPETIT Marks and has spent millions of dollars to promote and distribute its
goods bearing the marks throughout the United States.
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By virtue of its use for approximately three decades and substantial
investment, Bon Apptit owns valuable trademark rights in its BON APPETIT
Marks.
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As a result of Bon Apptits long use, advertising and promotion, its
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BON APPETIT Marks are strongly associated with Bon Apptit and represent an
extremely valuable goodwill owned by Bon Apptit throughout the United States.
SCHWANS INFRINGEMENT OF THE BON APPETIT MARKS
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Recently, Schwans launched a new and confusingly similar BON
APPETIT pizza product, which Schwans touts on a new BON APPETIT website
<www.bonappetitpizza.com>:
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Schwans also touts the introduction of its new BON APPETIT
pizza product on the website <www.schwans.com>:
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Schwans launched its new and confusingly similar BON APPETIT
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product even after the United States Patent and Trademark Office (USPTO)
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expressly told Schwans that its use of the BON APPETIT mark on such products
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is likely to cause confusion with Bon Apptit because of Bon Apptits prior rights.
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Specifically, on November 21, 2013, Schwans applied to register
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(Application Ser. No. 86/124,996) for use in connection with

pizza.
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On December 30, 2013, the USPTO issued an Office Action
refusing Schwans registration based on a likelihood of confusion with Bon
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Apptits preexisting BON APPETIT Marks.

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In particular, the USPTO concluded: The goods of applicant
[Schwans] and registrant [Bon Apptit] are closely related because the goods are
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all baked dough-based food items that often emanate from a single source under a
single trademark.
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On May 9, 2014, Schwans filed a response in which it tried to
convince the USPTO that there is no likelihood of confusion between Schwans
use of BON APPETIT for pizza and Bon Apptits BON APPETIT Marks.
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One of the arguments Schwans unsuccessfully advanced to the
USPTO is that Schwans own BON APPETIT trademark registrations for use on
other productsall of which post-date Bon Apptits trademark registrations
somehow permit Schwans new and expanded use of BON APPETIT.
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Specifically, Schwans unsuccessfully argued to the USPTO that
Registration No. 4,162,482 for the following design:
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which issued on June 19, 2012, for use in connection with
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frozen prepared entrees consisting primarily of meat, fish, poultry or vegetables,
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justified Schwans expansion into new products.
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Schwans also unsuccessfully argued to the USPTO that
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Registration No. 4,139,732 for BON APPETIT, which issued on May 8, 2012, for
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use in connection with frozen prepared entrees consisting primarily of meat, fish,
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poultry or vegetables, justified Schwans expansion into new products.
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Registration
Schwans further unsuccessfully argued to the USPTO that

No.
3,741,789
for
the
following
design
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which issued on January 26, 2010, for use in

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connection with frozen hors doeuvres comprised of meat, cheese and vegetables,
excluding fish, in pastries, justified Schwans expansion into new products.
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The USPTO disagreed with Schwans as to all three registrations.
Indeed, on May 29, 2014, the USPTO rejected Schwans arguments and
maintained the rejection of Schwans application Ser. No. 86/124,996 because of a
likelihood of confusion stemming from Bon Apptits preexisting BON APPETIT
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Marks.
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Despite being told by the USPTO that its use of BON APPETIT in
connection with pizza is likely to cause confusion with Bon Apptits BON
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APPETIT Marks, Schwans brazenly proceeded with the launch of its confusingly
similar BON APPETIT product.
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Above and beyond being advised by the USPTO of Bon Apptit
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and its BON APPETIT Marks, Schwans was, on information and belief, aware of
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Bon Apptit and its BON APPETIT marks well prior to Schwans application for
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or acquisition of any BON APPETIT registration.
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Schwans acts are without Bon Apptits authorization or approval.
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33.
Schwans acts are greatly and irreparably damaging to Bon Apptit
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and will continue to damage Bon Apptit, and the public, unless and until enjoined
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by this Court; wherefore, Bon Apptit is without adequate remedy at law.
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COUNT I TRADEMARK INFRINGEMENT
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34.
Bon Apptit re-alleges the preceding paragraphs as if fully set forth
herein.
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Bon Apptits U.S. Registration No. 1,826,501 is valid, enforceable,
and in full force and effect.

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Schwans use in commerce of BON APPETIT for pizza is likely to
cause confusion or mistake, or to deceive as to source, affiliation, or sponsorship,
in violation of the Lanham Act, 15 U.S.C. 1114.
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39.
Bon Apptit has been, and will continue to be, damaged by
Schwans infringement in an amount to be determined at trial.

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On information and belief, Schwans conduct is willful, deliberate,
intentional, and in bad faith, making this an exceptional case.
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By reason of the foregoing acts, Schwans has caused, and unless
permanently enjoined will continue to cause, irreparable harm to Bon Apptit and
to the public. Bon Apptit has no adequate remedy at law.
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COUNT II FEDERAL UNFAIR COMPETITION
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herein.
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Bon Apptit has common law rights in its BON APPETIT Marks,
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which are uniquely associated with Bon Apptit as the source of goods offered in
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connection therewith.
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44.
Schwans foregoing use in commerce of the BON APPETIT
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trademark is likely to cause confusion or mistake, or to deceive as to source,
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affiliation, or sponsorship, in violation of the Lanham Act, 15 U.S.C.
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1125(a)(1)(A).
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Bon Apptit has been and will continue to be damaged by Schwans
infringement, in an amount to be determined at trial.

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On information and belief, Schwans conduct is willful, deliberate,
intentional, and in bad faith, making this an exceptional case.

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By reason of the foregoing acts, Schwans use has caused and will
continue to cause irreparable harm to Bon Apptit, and to the public, unless and
until enjoined. Bon Apptit has no adequate remedy at law.
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COUNT III CALIFORNIA BUSINESS AND PROFESSIONS CODE
SECTION 17200
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herein.
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The foregoing acts of infringement and unfair competition violate
Section 17200 of the California Business and Professions Code.

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Bon Apptit is entitled to an injunction against further infringement
and unfair competition.

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Bon Apptit is entitled to restitutionary relief according to proof.
COUNT IV CANCELLATION OF REGISTRATION NUMBER 3,741,789
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52.
herein.
53.
On or about July 7, 2010, Schwans purported to acquire rights
from Burris-Phila, Inc. in Registration No. 3,741,789 for the following design
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for use in connection with frozen hors

d'oeuvres comprised of meat, cheese and vegetables, excluding fish, in pastries.
54.
On information and belief, for at least the last three consecutive
years, Schwans has not used in commerce
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for the goods identified in Registration No.
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3,741,789, creating a presumption of abandonment under 15 U.S.C. 1127.

55.
Indeed, on information and belief, since its acquisition of
Registration No. 3,741,789 in July of 2010, Schwans has never used in commerce
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for the goods identified Registration No.

3,741,789.
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On information and belief, Schwans does not have a bona fide
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intent to resume use in commerce of
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for the goods identified in Registration No.
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3,741,789.
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Accordingly, Schwans has abandoned any rights in said mark for
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the goods identified in Reg. No. 3,741,789, requiring that said registration be
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cancelled under 15 U.S.C. 1127.

PRAYER FOR RELIEF
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WHEREFORE, Bon Apptit respectfully asks this Court to:
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A.
Enter judgment that Schwans has violated the Lanham Act, 15 U.S.C.
1114 and 1125(a)(1)(A), the California Business and Professions Code
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Section 17200;
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B.
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agents, employees, attorneys, successors, and assigns, and all other in active
Preliminarily and permanently enjoin Schwans, its officers, directors,
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concert or participation with any of them, from directly or indirectly
engaging in any further trademark infringement, unfair competition, or
deceptive business practices;
c.
Trademark Office, pursuant to Section 37 of the Lanham Act, 15 U.S.C.
1127, ordering the Director to enter upon the records of the Patent and
Issuing a certified Order to the Director of the U.S. Patent and
Trademark Office a cancellation of Schwan's Registration No. 3,741,789.

D.
Order Schwan's to pay:
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1.
All monetary gain and advantages obtained by Schwan' s from
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its unlawful conduct;

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All monetary damages sustained and to be sustained by
Schwan's as a consequence of Schwan's unlawful conduct; including lost

monetary gains, in an amount to be determined at trial;
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Exemplary damages;
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Bon Appetit's costs and disbursements in this action, including
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its reasonable attorneys' fees; and
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E.
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necessary and just.
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Respectfully submitted,
Award Bon Appetit such other and further relief as this Court deems
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Paul R. Garcia
Colin T. J. O'Brien
PARTRIDGE & GARCIA, P.C.
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Paul D. Supnik
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Dated: September 15, 2015
By:_
il_vJfJ
_.~-'_
Paul D. Supnik
BON APPETIT DANISH, INC.
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DEMAND FOR A JURY TRIAL
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Pursuant to FED. R. Crv. P. 38(b), Bon Appetit respectfully demands a

trial by jury of all issues triable by a jury.
Respectfully submitted,
Paul R. Garcia
Colin T. J. O'Brien
PARTRJDGE & GARCIA, P.C.
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Paul D. Supnik
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Dated: September 15, 2015
By:_o_~
_o_
.~
_~_
Paul D. Supnik
BON APPETIT DANISH, INC.
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Case 2:15-cv-07227 Document 1 Filed 09/15/15 Page 1 of 13 Page ID #:1

PAUL R. GARCIA [Pro Hac Vice to be filed]

Attorneys for Plaintiff

CENTRAL DISTRICT COURT OF CALIFORNIA

BON APPTIT DANISH, INC.

Civil Action No:

Case 2:15-cv-07227 Document 1 Filed 09/15/15 Page 2 of 13 Page ID #:2

infringement, unfair competition, and deceptive business practices against

and states as follows:

on Schwans infringement of Bon Apptits trademarks as follows: (1)

Bon Apptit brings this action due to Schwans unauthorized use of

of Congress relating to trademarks and unfair competition.

This Court has

supplemental jurisdiction over Count Three under 28 U.S.C. 1367(a) because it is

Case 2:15-cv-07227 Document 1 Filed 09/15/15 Page 3 of 13 Page ID #:3

or value of $75,000, exclusive of interest and costs, and is between citizens of

Plaintiff Bon Apptit is a California corporation with its principal

place of business at 4525 District Blvd, Vernon, California 90058.

On information and belief, Defendant Schwans IP, LLC is a

College Drive, Marshall, Minnesota 56258.

On information and belief, Defendant Schwans Consumer Brands

Street #1075, Minneapolis, Minnesota 55402.

BON APPTITS PRIOR RIGHTS

In the mid-1980s, Bon Apptit first began selling fresh pastries

delivered in baskets to retailers in the Los Angeles area.

Bon Apptits pastries soon achieved a following among Los

Angelenos which allowed the business to expand and grow quickly.

Capitalizing on its early success, Bon Apptit began selling

go baker in North America.

APPETIT, BON APPETIT AMERICAS PASTRY CHEF, and BUON APPETITO

(collectively BON APPETIT Marks) products in thousands of retail locations

throughout the United States.

Currently, Bon Apptit sells its branded BON

Case 2:15-cv-07227 Document 1 Filed 09/15/15 Page 4 of 13 Page ID #:4

APPETIT registration is valid and subsisting, and in accordance with 1057(b) of

Bon Apptit also owns a federal trademark registration for BUON

Exhibit B. The BUON APPETITO registration is valid and subsisting, and in

Bon Apptit further owns a federal trademark registration for BON

APPETIT AMERICAS PASTRY CHEF, Reg. No. 3,441,174 for bakery

Case 2:15-cv-07227 Document 1 Filed 09/15/15 Page 5 of 13 Page ID #:5

with the above identified services

goods bearing the marks throughout the United States.

By virtue of its use for approximately three decades and substantial

As a result of Bon Apptits long use, advertising and promotion, its

Recently, Schwans launched a new and confusingly similar BON

Case 2:15-cv-07227 Document 1 Filed 09/15/15 Page 6 of 13 Page ID #:6

Schwans also touts the introduction of its new BON APPETIT

pizza product on the website <www.schwans.com>:

Schwans launched its new and confusingly similar BON APPETIT

Specifically, on November 21, 2013, Schwans applied to register

(Application Ser. No. 86/124,996) for use in connection with

On December 30, 2013, the USPTO issued an Office Action

refusing Schwans registration based on a likelihood of confusion with Bon

Apptits preexisting BON APPETIT Marks.

In particular, the USPTO concluded: The goods of applicant

Case 2:15-cv-07227 Document 1 Filed 09/15/15 Page 7 of 13 Page ID #:7

On May 9, 2014, Schwans filed a response in which it tried to

convince the USPTO that there is no likelihood of confusion between Schwans

One of the arguments Schwans unsuccessfully advanced to the

Specifically, Schwans unsuccessfully argued to the USPTO that

Registration No. 4,162,482 for the following design:

which issued on June 19, 2012, for use in connection with