Rainbow Cone v. SK Creameries New Lenox - Complaint

Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 1 of 21 PageID #:1
IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
RAINBOW CONE, LLC, and

FIVE FLAVORS, LLC
Plaintiff,
v. Case No.:
SK CREAMERIES HOMER GLEN LLC,

SK CREAMERIES MANHATTAN, LLC, and
SK CREAMERIES NEW LENOX LLC,
Defendants,
COMPLAINT
Plaintiffs Rainbow Cone, LLC and Five Flavors, LLC (collectively “Rainbow Cone”)
bring this Complaint against Defendants SK Creameries Homer Glen LLC, SK Creameries
Manhattan, LLC, and SK Creameries New Lenox LLC, (collectively “SK Creameries” or
“Defendants”) as follows:
Introduction
1. Since 1926, and from its location in Chicago’s Beverly neighborhood, Rainbow
Cone has delighted generations on the South Side and other visitors from across Chicago, Illinois
and around the world with its signature treat: THE ORIGINAL RAINBOW CONE ice cream
cone. This ice cream cone is a delicious 5-layer stack of ice cream starting with a base of
chocolate ice cream, topped by strawberry, then Palmer House (New York Vanilla with cherries
and walnuts), then pistachio, and capped with orange sherbet. The layers of ice cream are
carefully placed, one after the other, on a diagonal plane, by a special “tool” (not a scoop) onto a
cone. The finished ORIGINAL RAINBOW CONE ice cream cone has five adjacent, curved
bands of color, evocative of a rainbow in its curved shape and visual appearance.
2. Each genuine ORIGINAL RAINBOW CONE ice cream cone conforms to a
product configuration (hereinafter sometimes referred to as the “Rainbow Cone Product
Configuration”) that has become distinctive in the minds of the public as indicating the source
and origin of Rainbow Cone’s ice cream store services and of its ice cream products. This
product line later expanded to include RAINBOW CONE Cakes, RAINBOW CONE Cake Rolls,
and other ice creams.
3. Defendants entered into distribution agreements to promote and sell THE
ORIGINAL RAINBOW CONE ice cream cone at their ice cream shops. However, after the
termination of these agreements, Defendants continued to sell and promote what they have
referred to as THE ORIGINAL RAINBOW CONE ice cream cone, use Rainbow Cone’s
trademarks and service marks, and used other confusingly similar marks to market similar
products at their stores.
Parties
4. Plaintiff Rainbow Cone, LLC and Five Flavors, LLC are each limited liability
companies formed under the laws of Illinois.
5. Defendants are each limited liability companies formed under the laws of Illinois.
Jurisdiction and Venue
6. Jurisdiction over the parties and subject matter of this action is proper pursuant to
15 U.S.C. § 1121 (actions arising under the Lanham Act), 28 U.S.C. § 1331 (actions arising
under the laws of the United States), and §1338(a) (actions arising under an Act of Congress
relating to trademarks). Supplemental jurisdiction over the related state and common law causes
of action stated herein exists pursuant to 28 U.S. C. §1367(a).
2
7. This Court has personal jurisdiction over Defendants because they do business
and reside within this Judicial District.
8. Venue is proper in this judicial district pursuant to 28 U.S.C. §§1391(b) and (c)
and 1400(a) because Defendants reside in this district, and a substantial part of the events
occurred within this district.
The RAINBOW CONE Brand and Products
9. In 1926 Joseph Sapp founded THE ORIGINAL RAINBOW CONE ice cream
store on Chicago’s South Side. The business was passed down to Joseph’s son and was
incorporated into Original Rainbow Cone, Inc. Later, Joseph’s granddaughter, Lynn Sapp,
purchased the business. Lynn Sapp would form Sunshine & Rainbows, LLC, in part, to assist in
the distribution of THE ORIGINAL RAINBOW CONE branded products. Then, in 2018,
Rainbow Cone, LLC acquired the assets of Original Rainbow Cone, Inc. and Five Flavors, LLC
acquired the membership interests in Sunshine & Rainbows, LLC.
10. The Rainbow Cone business continues to render retail ice cream store services
and ice cream catering services from its original location at 9233 S. Western Ave. Chicago,
Illinois 60643 and it most recently expanded to its newest location at Navy Pier. Besides the
iconic cone, Rainbow Cone also sells other ice cream flavors, as well as RAINBOW CONE
Cakes and RAINBOW CONE Cake Rolls.
11. Rainbow Cone, and specifically THE ORIGINAL RAINBOW CONE ice cream
cone, consistently appear on lists of the best ice cream in Chicago.1 It has also appeared at the
1
https://www.zagat.com/b/8-best-ice-cream-shops-in-chicago (published June 29, 2015) last visited April
10, 2019.
https://www.timeout.com/chicago/restaurants/best-ice-cream-in-chicago (published April 25, 2018) last
visited April 10, 2019.
https://www.thrillist.com/eat/chicago/best-ice-cream-in-chicago (published July 6, 2015) last visited April
10, 2019.
3
“Taste of Chicago” food festival for more than 27 years.
12. THE ORIGINAL RAINBOW CONE ice cream cone, the RAINBOW CONE
Cake Roll and the RAINBOW CONE Cakes each include a particular five-layer design, color
combination and shape. The public has come to associate the design, color combination, and
shape of these products, including but not limited to the Rainbow Cone Product Configuration,
as having a distinctive and secondary meaning as indicia of the source, origin or sponsorship by
Rainbow Cone of its ice cream products and the ice cream store services.
13. From time to time, Rainbow Cone has also entered into distribution agreements
with other ice cream shops to render retail ice cream store services, to render ice cream services
and to market and sell RAINBOW CONE products.
14. Rainbow Cone has used a variety of trademarks and service marks for many years
in connection with the advertisement and sale of its products and services, including but not
limited to those detailed in this Complaint.
15. These marks are widely recognized and exclusively associated by consumers, the
public, and the trade as denoting high-quality retail ice cream store services, ice cream catering
services and ice cream products sourced from Rainbow Cone and have acquired a strong
secondary meaning.
https://foursquare.com/top-places/chicago/best-places-ice-cream (published April 4, 2019) last visited

April 10, 2019.
https://chicago.eater.com/maps/best-ice-cream-chicago (published June 14, 2018) last visited April 10,
2019.
https://www.theinfatuation.com/chicago/guides/ice-cream-chicago-power-rankings (published
4
Rainbow Cone Trademarks and Service Marks
16. In 2018, Rainbow Cone, LLC acquired the assets of Original Rainbow Cone, Inc.,
including the THE ORIGINAL RAINBOW CONE (Reg. No. 4,954,002) trademark and service
mark and the following:
Reg. No. 3,863,081
Reg. No. 3,863,082
Reg. No. 3,863,083
5
Reg. No. 4,954,003
17. An image of the Rainbow Cone Product Configuration appears prominently in
each of Reg. No. 3,863,081, Reg. No. 3,863,082, Reg. No. 3,863,083 and Reg. No. 4,954,003.
18. Reg. Nos. 4,954,002, 3,863,081, 3,863,082, 3,863,083 and 4,954,003 are
registrations on the Principal Register of the US Patent and Trademark Office, and are valid,
subsisting, and in full force and effect.
19. Reg. Nos. 3,863,081, 3,863,082 and 3,863,083 have become incontestable
pursuant to 15 U.S.C. §1065.
20. The federal registration of the marks is prima facie evidence of their validity, of
Rainbow Cone’s ownership of them, and of Rainbow Cone’s exclusive right to use the
trademarks in commerce in connection with their products and services. Relative to Reg. Nos.
3,863,081, 3,863,082 and 3,863,083, this evidence is conclusive.
21. The registration of the marks also provides sufficient notice to Defendants of
Rainbow Cone’s ownership and exclusive rights to the marks as of the dates of their registration,
all of which precluded Defendants’ acts complained of herein.
22. The above registered marks (together with the mark RAINBOW CONE and the
Rainbow Cone Product Configuration, collectively referred to herein as the “Rainbow Cone
Marks”) have been used continuously and exclusively and have never been abandoned.
6
Defendants’ Acts of Infringement and Unfair Competition
23. In 2015, Sunshine & Rainbows, LLC entered into distribution agreements with
Defendants to market and sell THE ORIGINAL RAINBOW CONE products and to render retail
ice cream store services at their retail ice cream shop locations. In those agreements, Defendants
were provided with training and specifications to prepare THE ORIGINAL RAINBOW CONE
ice cream cone, and the specialized tools known as “Rainbow Cone shovels”, as well as
marketing materials to market, promote, and sell THE ORIGINAL RAINBOW CONE ice cream
cone, the other ice cream products and the retail ice cream store services and ice cream catering
services.
24. In November, 2017, the Defendants’ distribution agreements with Sunshine
terminated automatically by virtue of Defendants’ failure to pay the Monthly Fee required by
each distribution agreement. To avoid filing a lawsuit, Plaintiffs repeatedly asked the
Defendants to, among other things, stop using the marks at issue in this litigation. Plaintiffs have
also requested that the Defendants meet with Plaintiffs to discuss and resolve their differences or,
if that is not successful, to mediate their differences. Defendants have ignored such requests.
25. Despite their distribution agreements terminating, Defendants continued to use the
marketing materials and the Rainbow Cone Marks to promote, market, and sell THE ORIGINAL
RAINBOW CONE ice cream cone, other ice cream products, retail ice cream store services and
ice cream catering services without authorization and/or used confusingly and deceptively
similar marks to market and sell competitive products and services.
26. For example, even after being directed to stop using the Rainbow Cone Marks,
and for more than a year after the Defendants’ authorization had ceased, the Defendants’ Internet
site continued to claim that Defendants offered THE ORIGINAL RAINBOW CONE ice cream
7
cone, continued to use Rainbow Cone’s popular trademark and continued to claim a connection
to Plaintiff’s flagship store founded in 1926:
27. In addition, the menu that the Defendants continued to use through early 2019
displayed the following, including the Plaintiffs’ trademark, in its desserts section:
8
28. After being instructed by Plaintiffs to stop using them, through early 2019, the
Defendants continued the following uses of the Rainbow Cone Marks:
A. The Homer Glen location marketed and sold: “RAINBOW CONE Ice Cream
Cake Rolls” and RAINBOW CONE ice cream sold on cones or hand-packed
pints. It also has on the wall a painting of the Plaintiffs’ store (with a
RAINBOW CONE on the roof) that has operated and provided RAINBOW
CONE ice cream since the 1920’s in the Chicago’s Beverly neighborhood,
thereby suggesting an affiliation.
B. The Manhattan location sold “RAINBOW CONE Cake Rolls” and sold a
product that it falsely advertised as an ORIGINAL RAINBOW CONE ice
9
cream cone, but which did not have the Rainbow Cone Product Configuration
and manifestly was not an ORIGINAL RAINBOW CONE ice cream cone:
C. The New Lenox location continued to use Rainbow Cone’s registered
trademark on its outdoor sign (as shown below) and, similarly, marketed
“RAINBOW CONE” cones and pints, as well as “RAINBOW CONE Cake
Rolls”. While the New Lenox location falsely described these ice cream
cones as RAINBOW CONE ice cream cones, they did not have the Rainbow
Cone Product Configuration.
29. Moreover, Defendants’ online presence uses Plaintiffs’ marks, and/or marks
deceptively similar to the Rainbow Cone Marks, in connection with products, retail ice cream
store services and ice cream catering services that are directly competitive with Plaintiffs’
products and services. For instance:
A. Defendants’ website “http://www.ourcreamery.com” states:
“Rainbow cones and great ice cream”.
10
B. Defendants’ website also sells a product called “Rainbow Cake
Roll”
30. Defendants’ actions have cause actual confusion to consumers. Multiple
posts on Defendants’ Facebook page and google reviews show customers believe they are
purchasing THE ORIGINAL RAINBOW CONE and/or RAINBOW CONE licensed or
sponsored products. For instance:
A. On the Google review webpage for the New Lenox location,
several reviewers in 2018 comment: “Love the Rainbow Cones!!” and “Love they
have ice cream from the original rainbow cone”.2:
B. Similarly, in 2018 on Google reviews for the Homer Glen location
one customer states: “They also serve Rainbow Cones”.3:
C. Defendant’s Facebook page has several posts from customers
referring their purchases of “Rainbow cones”.
31. Rainbow Cone’s reputation and goodwill have been damaged because
Defendants have sold inferior products which they have passed off as RAINBOW CONE
products.
32. For instance, Defendants’ Facebook page has a negative review where
Defendant’s location was “out of pistachio ice cream for rainbow cones” and “have
changed the rainbow cone to not even include Palmer house.” As the reviewer explains
https://www.google.com/search?q=the+creamery+new+lenox&rlz=1C1CHBF_enUS832US832&oq=The
+creamery+new+lenox&aqs=chrome.0.35i39j0l3.48367j0j7&sourceid=chrome&ie=UTF-
8#lrd=0x880e6f17e7a1f8a3:0x3a4d2bdc079c9f43,1,,, last visited April 12, 2019.
3
https://www.google.com/search?q=the+creamery+homer+glen&rlz=1C1CHBF_enUS832US832&oq=Th
e+creamery+homer+glen&aqs=chrome.0.35i39j69i60l3j0l2.3342j0j9&sourceid=chrome&ie=UTF-
8#lrd=0x880e4187b33d4179:0x14d96606f05a9381,1,,, last visited April 2, 2019.
11
“but, that is not a rainbow cone. Highly disappointed.”
33. Plaintiffs’ reputation and goodwill have also been damaged because
Defendants have rendered retail ice cream store services and have sold these infringing
and confusingly similar products from Defendants’ locations which are unclean and/or
are staffed by rude employees.
34. For instance, Defendants’ Facebook page features negative reviews
describing the New Lenox staff as “Extremely rude” and serving “sloppy” products. On
the Manhattan location’s unofficial Facebook page4, one reviewer remarked “I’m very
disappointed in customer service.” Another described the Manhattan location as
“Absolutely disgusting.”
COUNT I – TRADEMARK INFRINGEMENT

(15 U.S.C. § 1114)
35. Plaintiffs incorporate the foregoing allegations as if fully set forth herein.
36. Defendants, without authorization, have used and are continuing to use Rainbow
Cone’s federally registered marks or spurious designations that are confusingly similar to
Rainbow Cone’s federally registered marks.
37. Defendants’ acts are intended to cause, have caused, and are likely to continue to
cause confusion, mistake, and deception among customers and the public as to whether
Defendants’ products originate from, or are affiliated with, sponsored by or endorsed by,
Rainbow Cone.
38. Defendants have used one or more spurious marks which are identical with, or
substantially indistinguishable from, one or more of Plaintiffs’ registered marks. These spurious
4
https://www.facebook.com/pages/The-Creamery/201934336518152 last visited April 10, 2019. This
page erroneously lists the incorrect website for SK Creameries Manhattan, LLC.
12
marks are therefore counterfeits under 15 U.S.C. § 1127.
39. Defendants have acted with knowledge of Rainbow Cone’s ownership of the
federally registered marks and with deliberate intention or willful blindness to unfairly benefit
from the incalculable goodwill associated with Rainbow Cone.
40. Defendants’ acts constitute trademark infringement in violation of Section 32 of
the Lanham Act (15 U.S.C. § 1114).
41. Upon information and belief, Defendants have made and will continue to make
substantial profits and/or gains to which they are not in law or equity entitled.
42. Upon information and belief, Defendants intend to continue their infringing acts,
unless restrained by this Court.
43. Defendants’ acts have damaged and will continue to damage Rainbow Cone.
Rainbow Cone has suffered and continues to suffer irreparable harm, and has no adequate
remedy at law.
COUNT II – FALSE DESIGNATION OF ORIGIN AND FALSE ADVERTISING

(15 U.S.C. § 1125(a))
45. Defendants’ promotion, advertising, distribution, sale, and/or offering for sale of
competing products and services, using one or more of the Rainbow Cone Marks, is intended to
and is likely to confuse, mislead, or deceive consumers, the public, and the trade as to the origin,
source, sponsorship, or affiliation of the Defendants’ products and services, and is intended to
and is likely to cause such parties to believe in error that the Defendants’ products and services
have been authorized, sponsored, approved, endorsed or licensed by Rainbow Cone, or that
Defendants are in some way affiliated with Rainbow Cone.
46. Defendants market and sell an ice cream cone having multiple flavors of ice
13
cream that are confusingly similar to the Rainbow Cone Product Configuration that Plaintiffs’
employees painstakingly create for each cone they sell. Defendants call their multiflavor cones
RAINBOW CONES. Defendants’ use of the marks THE ORIGINAL RAINBOW CONE or of
RAINBOW CONE to identify their cones is a false and misleading representation of fact in
violation of Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a).
47. The cake roll product promoted, advertised, distributed, offered for sale and sold
by Defendants replicates and imitates the trade dress and product configuration of Rainbow
Cone’s THE ORIGINAL RAINBOW CONE cake roll, as it is precisely the same size, shape,
design, and uses the same particular order of ice creams, and replicates and imitates the
distinctive color combination of Rainbow Cone’s products.
48. Defendants’ acts constitute a false designation of origin, and false and misleading
descriptions and representations of fact, all in violation of Section 43(a) of the Lanham Act (15
U.S.C. § 1125(a)).
Rainbow Cone has suffered and continues to suffer irreparable harm and has no adequate remedy
at law.
COUNT III – TRADEMARK DILLUTION

(15 U.S.C. §1125(c))
53. The Rainbow Cone Marks are strong and distinctive marks that have been in use
14
for 93 years and have achieved widespread public recognition.
54. The Rainbow Cone Marks are famous within the meaning of Section 43(c) of the
Lanham Act.
55. Defendants’ continued use of the Rainbow Cone Marks on ice cream products and
in connection with ice cream store services and ice cream catering services, without
authorization from Rainbow Cone, is diluting the distinctive quality of the Rainbow Cone Marks
and is decreasing the capacity of such marks to identify and distinguish Rainbow Cone products
and services.
56. Defendants have intentionally and willfully diluted the distinctive quality of the
famous Rainbow Cone Marks in violation of Section 43(c) of the Lanham Act (15 U.S.C. §
1125(c)).
Rainbow Cone has suffered and will continue to suffer irreparable harm and has no adequate
remedy at law.
COUNT IV – COMMON LAW TRADEMARK INFRINGEMENT
61. Rainbow Cone owns all right, title, and interest in and to the Rainbow Cone
Marks, including all common law rights.
62. Defendants, without authorization from Rainbow Cone, have used and are
15
continuing to use spurious designations that are identical to, substantially indistinguishable from,
or confusingly similar to the Rainbow Cone Marks.
63. Defendants’ acts are intended to cause, have caused, and are likely to cause
confusion, mistake, and deception among consumers and the public as to whether Defendants’
products and services originate from, or are affiliated with, sponsored by, or endorsed by
Rainbow Cone.
64. Defendants have acted with knowledge of Rainbow Cone’s ownership of the
marks and with deliberate intention or willful blindness to unfairly benefit from the incalculable
goodwill associated with Rainbow Cone.
65. Defendants’ acts constitute trademark and service mark infringement in violation
the common law of the State of Illinois.
at law.
COUNT V –TRADEMARK DILUTION

(Common Law and Illinois Trademark Registration and Protection Act)
70. Defendant’s acts constitute trademark dilution in violation of Illinois common law
and the Illinois Trademark Registration and Protection Act (765 ILCS 1036/65).
71. The Rainbow Cone Marks are strong and distinctive marks that have been used
16
for almost a century (93 years) and have achieved widespread public recognition.
72. Through prominent, long, and continuous use in commerce, including commerce
within the State of Illinois, the Rainbow Cone Marks have become and continue to be famous
and distinctive.
73. Defendant’s use of the Rainbow Cone Marks, on ice cream products and in
connection with retail ice cream store services and ice cream catering services, without
authorization, is diluting the distinctive quality of the Rainbow Cone Marks and is decreasing the
capacity of such marks to identify and distinguish Rainbow Cone’s products and services and has
cause a likelihood of harm to Rainbow Cone’s business reputation.
74. Defendants have diluted the distinctive quality of the famous Rainbow Cone
Marks.
at law.
COUNT VI – UNFAIR COMPETITION

(Illinois Consumer Fraud and Deceptive Business Practice Act)
79. Defendants’ labelling and/or description of their multiflavor ice cream cones as
RAINBOW CONES, even where such cones have not been painstakingly assembled to have the
Rainbow Cone Product Configuration, constitutes a fraud on and a deception of Defendants’
17
consumers.
80. These and others of the Defendants’ acts constitute unfair competition in violation
of the Illinois Consumer Fraud and Deceptive Business Practices Act (815 ILCS 505 et seq.).
substantial profits and/or gains to which t hey are not in law or equity entitled.
Rainbow Cone is suffering and continues to suffer irreparable harm and Rainbow Cone has no
adequate remedy at law.
COUNT VII – COMMON LAW UNAIR COMPETITION
85. Defendants’ acts constitute unfair competition in violation of Illinois common
law.
at law.
COUNT VII -UNJUST ENRICHMENT
18
90. The foregoing acts constitute unjust enrichment of Defendants at Rainbow Cone’s
expense, in violation of the common law of the State of Illinois.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs, pray for entry of judgment in their favor and against
Defendants as follows:
A. Enter a permanent injunction restraining and enjoining Defendants and all of their
agents, partners, servants, employees, successors and assignees from:
I. Selling, marketing or advertising products or services under any of the
Rainbow Cone Marks or any other mark confusingly similar to any of the
Rainbow Cone Marks;
II. Selling, marketing or advertising products as “Rainbow Cones” or “Rainbow
Cake Rolls”;
III. Selling, marketing or advertising products, including ice cream placed on
cones, hand packed, or in a cake roll, that are in imitation of the Rainbow
Cone Product Configuration, or of the distinctive design, shape, and color
configuration and trade dress of Rainbow Cone’s Cake Roll or Rainbow Cone
Cake;
IV. Causing a likelihood of confusion or misunderstanding as to source,
sponsorship by, approval of, affiliation with, connection with, association
with, or certification of its products or services by Rainbow Cone or engaging
in any other conduct that similarly creates a likelihood of confusion or
misunderstanding or false representation with respect to Rainbow Cone.
B. Awarding Rainbow Cone, LLC damages in an amount sufficient to compensate it
19
for the injuries it has sustained by reason of Defendants’ unlawful acts, including
loss of goodwill, loss of past and/or future sales, and other damages caused by
Defendants’ acts.
C. That Rainbow Cone, LLC be awarded increased damages based upon the
intentional and willful nature of Defendants’ conduct of the kind complained
herein.
D. That the Court issue an order requiring Defendants to pay such damages as
Rainbow Cone, LLC has sustained as a consequence of Defendants’ infringement
of Rainbow Cone, LLC’s marks and unfair competition and to account for all
gains, profits and advantages derived by Defendants from selling products or
rendering services under the infringing marks and that the award to Rainbow
Cone, LLC be trebled as provided for under 15 U.S.C. § 1117; alternatively, that
Rainbow Cone, LLC be awarded statutory damages pursuant to 15 U.S.C. §
1117(c) of the full amount allowed by law per mark and per type of goods or
services for Defendants’ willful use of counterfeits of Plaintiffs’ federally
registered marks.
E. That the Court rule that this is an exceptional case, and order that Rainbow Cone,
LLC recover the costs of this action together with reasonable attorneys’ and
investigators’ fees and prejudgment interest in accordance with 15 U.S.C. § 1117.
F. That Rainbow Cone, LLC be awarded punitive damages for Defendants’ willful
and malicious acts of common law trademark infringement and unfair
competition.
G. That Defendants be ordered to deliver up for destruction all advertisements,
20
marketing materials, and any other item it its possession, custody, or control
bearing any Rainbow Cone Mark.
H. Grant Rainbow Cone, LLC and Five Flavors, LLC such other and further relief as
the Court may deem just, proper and equitable under the circumstances.
JURY TRIAL
Plaintiff demand a trial by jury for all issues so triable.
Respectfully submitted,
Rainbow Cone, LLC and Five Flavors, LLC
Dated: May 9, 2019 By: /s/ David J. Fish

One of Plaintiffs’ Attorneys
David Fish
dfish@fishlawfirm.com
Kimberly Hilton
khilton@fishlawfirm.com
John Kunze
jkunze@fishlawfirm.com
THE FISH LAW FIRM, P.C.
200 East Fifth Avenue, Suite 123
Naperville, Illinois 60563
Tel: 630.355.7590
Fax: 630.778.0400
admin@fishlawfirm.com
Jefferson Perkins
Perkins IP Law Group LLC
4200 Commerce Court, Suite 310
Lisle, IL 60532
jperkins@perkinsip.com
21

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Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 1 of 21 PageID #:1

IN THE UNITED STATES DISTRICT COURT

RAINBOW CONE, LLC, and

SK CREAMERIES HOMER GLEN LLC,

2. Each genuine ORIGINAL RAINBOW CONE ice cream cone conforms to a

product configuration (hereinafter sometimes referred to as the “Rainbow Cone Product

and other ice creams.

3. Defendants entered into distribution agreements to promote and sell THE

products at their stores.

companies formed under the laws of Illinois.

Jurisdiction and Venue

of action stated herein exists pursuant to 28 U.S. C. §1367(a).

and reside within this Judicial District.

occurred within this district.

The RAINBOW CONE Brand and Products

acquired the membership interests in Sunshine & Rainbows, LLC.

Cakes and RAINBOW CONE Cake Rolls.

“Taste of Chicago” food festival for more than 27 years.

and to market and sell RAINBOW CONE products.

limited to those detailed in this Complaint.

https://foursquare.com/top-places/chicago/best-places-ice-cream (published April 4, 2019) last visited

Rainbow Cone Trademarks and Service Marks

mark and the following:

Reg. No. 3,863,081

Reg. No. 3,863,082

Reg. No. 3,863,083

Reg. No. 4,954,003

17. An image of the Rainbow Cone Product Configuration appears prominently in

subsisting, and in full force and effect.

pursuant to 15 U.S.C. §1065.

3,863,081, 3,863,082 and 3,863,083, this evidence is conclusive.

all of which precluded Defendants’ acts complained of herein.

Defendants’ Acts of Infringement and Unfair Competition

24. In November, 2017, the Defendants’ distribution agreements with Sunshine

similar marks to market and sell competitive products and services.

to Plaintiff’s flagship store founded in 1926:

Defendants continued the following uses of the Rainbow Cone Marks:

thereby suggesting an affiliation.

product that it falsely advertised as an ORIGINAL RAINBOW CONE ice

C. The New Lenox location continued to use Rainbow Cone’s registered

“RAINBOW CONE” cones and pints, as well as “RAINBOW CONE Cake

Cone Product Configuration.

products and services. For instance:

A. Defendants’ website “http://www.ourcreamery.com” states:

“Rainbow cones and great ice cream”.

B. Defendants’ website also sells a product called “Rainbow Cake

30. Defendants’ actions have cause actual confusion to consumers. Multiple

purchasing THE ORIGINAL RAINBOW CONE and/or RAINBOW CONE licensed or

sponsored products. For instance:

A. On the Google review webpage for the New Lenox location,

have ice cream from the original rainbow cone”.2:

B. Similarly, in 2018 on Google reviews for the Homer Glen location

one customer states: “They also serve Rainbow Cones”.3:

C. Defendant’s Facebook page has several posts from customers

referring their purchases of “Rainbow cones”.

“but, that is not a rainbow cone. Highly disappointed.”

are staffed by rude employees.

34. For instance, Defendants’ Facebook page features negative reviews

disappointed in customer service.” Another described the Manhattan location as

COUNT I – TRADEMARK INFRINGEMENT

Rainbow Cone’s federally registered marks.

marks are therefore counterfeits under 15 U.S.C. § 1127.

from the incalculable goodwill associated with Rainbow Cone.

40. Defendants’ acts constitute trademark infringement in violation of Section 32 of