Trinity Groves v. Trader Joe's - Amended Complaint

Case 3:20-cv-03364-N Document 7 Filed 11/20/20 Page 1 of 21 PageID 44
UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
TRINITY GROVES RESTAURANT §

INCUBATOR PARTNERS, LP, a Texas §
Limited Partnership, and CHOCOLATE §
HOUSE INCUBATOR RETAIL, LLC, a §
Texas Limited Liability Company, §
§
Plaintiffs, §
§ CASE NO. 3:20-CV-03364-N
v. §
§ JURY TRIAL DEMANDED
TRADER JOE’S COMPANY, a California §
Corporation, and TRADER JOE’S EAST §
INC., a Massachusetts Corporation, §
§
Defendants. §
PLAINTIFFS’ FIRST AMENDED COMPLAINT
This is an action for trademark and trade dress infringement, unfair competition,
and dilution by Trinity Groves Restaurant Incubator Partners, LP and Chocolate House
Incubator Retail, LLC d/b/a Kate Weiser Chocolates (collectively, “Kate Weiser” or
“Plaintiffs”) against Trader Joe’s Company and Trader Joe’s East Inc. (“Defendants”).
PARTIES
1. Trinity Groves Restaurant Incubator Partners, LP (“Trinity”) is a Texas
limited partnership with its principal place of business at 331 Singleton Boulevard, Suite
200, Dallas, Texas 75212.
2. Chocolate House Incubator Retail, LLC (“Chocolate House”) is a Texas
limited liability company with its principal place of business at 331 Singleton Boulevard,
Suite 200, Dallas, Texas 75212.
Plaintiffs’ First Amended Complaint Page 1

3. Trader Joe’s Company is a California corporation with its principal place of
business at 800 S. Shamrock Avenue, Monrovia, California 91016. Trader Joe’s Company
may be served through its registered agent, Paracorp Incorporated, at 3610-2 N. Josey
Lane, Suite 223, Carrollton, Texas 75007.
4. Trader Joe’s East Inc. is a Massachusetts corporation with its principal place
of business at 160 Federal Street, Boston, Massachusetts 02110. Trader Joe’s East Inc. may
be served through its registered agent, Paracorp Incorporated, at 3610-2 N. Josey Lane,
Suite 223, Carrollton, Texas 75007.
JURISDICTION AND VENUE
5. This action arises under the trademark laws of the United States, 15 U.S.C.
§ 1051, et seq., and includes claims for Texas common law trademark and trade dress
infringement, unfair competition, and dilution under TEX. BUS. & COM. CODE § 16.102.
6. This Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 and 28
U.S.C. §§ 1331, 1338, and 1367.
7. This suit is based on federal questions and statutes, namely 15 U.S.C. § 1051 et
seq.
8. In addition, jurisdiction under 28 U.S.C. § 1332 exists because the parties have
diversity of citizenship and the matter in controversy exceeds $75,000, exclusive of
interest and costs.
9. Supplemental jurisdiction over the causes of action under state law is proper,
as they are substantially related to those causes over which the court has original
jurisdiction, pursuant to 28 U.S.C. § 1367.

10. Upon information and belief, Trade Joe’s Company and Trader Joe’s East Inc.
are jointly owned and managed companies that operate as a single joint business
enterprise doing business as Trader Joe’s (collectively, “Trader Joe’s” or “Defendants”)
with at least Dan Bane, Sharon Drabeck, and Mitch Nadler as directors of Trader Joe’s.
11. This Court has personal jurisdiction over Defendants because Defendants
own and operate Trader Joe’s retail stores in the Northern District of Texas and
throughout Texas, and market, offer for sale and sell the accused products through the
Trader Joe’s retail stores and the Trader Joe’s website (www.traderjoes.com). Defendants
regularly conduct business in Texas and in this District via their Trader Joe’s retail stores
and website and have committed and continue to commit acts of trademark and trade
dress infringement, unfair competition, and trademark dilution in Texas and in this
District.
12. Defendants are subject to this Court’s jurisdiction because Defendants have
established minimum contacts with the forum such that the exercise of jurisdiction over
Defendants would not offend traditional notions of fair play and substantial justice by
deriving substantial revenue from the sale and use of products and services, including
the accused product, within this District; expecting or being in a position to reasonably
expect its actions to have consequences within this District; and regularly doing
business, soliciting business, engaging in other persistent acts of conduct; and deriving
substantial revenue from goods and services provided to individuals in Texas and in this
District.

13. Plaintiffs are Texas business entities with their principal places of business in
this District. These acts cause injury to Plaintiffs within this District.
14. Venue is proper in this District under 28 U.S.C. § 1391 because a substantial
part of the events or omissions giving rise to Plaintiffs’ claims occurred, or a substantial
part of the property that is the subject of the action is situated, in this District.
CARL THE SNOWMAN
15. Kate Weiser makes unique and decorative chocolates that incorporate various
distinct elements exclusively used by Kate Weiser. Such elements are often relied upon
by consumers to indicate the source of the chocolates as Kate Weiser’s brand. Kate
Weiser’s products have been featured in numerous ads and articles about premier
chocolates since 2014. In addition to their retail presences online and in their own stores,
Kate Weiser partners with Neiman Marcus nationwide. One of Kate Weiser’s most
famous products, Carl the Snowman (“CARL”), was on Oprah’s Favorite Things List for
2018 (https://www.oprahmag.com/life/a24483259/oprah-favorite-things-2018/).
16. Kate Weiser is the owner of all rights, title and interest in and to (1) U.S.
Trademark No. 5,030,523 (attached as Exhibit A) which covers the CARL product and
design for “chocolates and chocolate based ready to eat candies and snacks; drinking
chocolate, namely, chocolate based beverages; and marshmallows, all sold as a kit”
(referred to as “the ‘523 Registration”), 1 and (2) all common law trademark and/or trade
dress rights in the shape and design of the CARL product for chocolate-based candies,
snacks and beverages (collectively, the “CARL Trade Dress”), as shown below:
1
Trinity owns the ’523 Registration, which is used exclusively by Chocolate House.

..
ACCUSED PRODUCT
17. Defendants make, use, import, sell, offer for sale, advertise and market a
Trader Joe’s branded product known as “Hot Cocoa Snowman,” which was posted in
the fall of 2019 on their website
(https://www.traderjoes.com/FearlessFlyer/Article/5248) and which was covered in
news articles (https://www.sheknows.com/food-and-recipes/articles/2131920/trader-
joes-new-holiday-products-2019/) (the “Accused Product”).
18. An image of the Accused Product is reproduced hereinbelow:

19. The Accused Product impermissibly replicates CARL’s distinctive features,
which are covered by the ‘523 Registration and the CARL Trade Dress. Namely, both
products consist of: (a) a white-color winter or holiday themed chocolate figure; (b) a
snowman in which the snowman figure is made up of one larger rounded base with a
smaller rounded ball stacked on top of the larger base to form snowman shape; (c) a
snowman having two brown-color chocolate-based eyes with a triangular orange-color
nose; (d) a snowman wearing a hat which is positioned slightly askew to the right of the
snowman; and (e) a snowman made of an outer chocolate shell, which is meant to be
dissolved in hot liquid to form a chocolate-based beverage. A side-by-side comparison of
Defendants’ Accused Product and Plaintiffs’ CARL product that demonstrates the
foregoing is set forth below:

COUNT ONE
FEDERAL TRADEMARK INFRINGEMENT (15 U.S.C. § 1114(a))
U.S. Registration No. 5,030,523
20. Plaintiffs repeat and re-allege the allegations in the foregoing paragraphs.
21. Kate Weiser owns the ‘523 Registration which covers a three-dimensional
product having a shape and design comprising a configuration of a snowman with eyes,
a nose and a button, wearing a hat, sitting atop a square piece of chocolate. The product
shape and design of the Accused Product is confusingly similar to Kate Weiser’s
registered mark comprising the product shape and design as set forth in the ‘523
Registration, and Defendants’ use, manufacture, advertising, marketing, distribution
and/or sale of the Accused Product is likely to cause confusion, mistake or deceive
relevant consumers as to source or origin.
22. Defendants’ use, manufacture, advertising, marketing, distribution and/or
sale of the Accused Product is likely to cause confusion, or to cause mistake, or to
deceive the consumer as to the affiliation, connection or association of Defendants with
Kate Weiser, or as to the origin, sponsorship, or approval by Kate Weiser of Defendants’
goods or commercial activities.
sale of the Accused Product enables Defendants to unfairly benefit from Kate Weiser’s
reputation, success and goodwill in its registered mark, thereby giving Defendants’
Accused Product sales and commercial value it would not have otherwise.
24. Prior to Defendants’ use of Kate Weiser’s registered mark, Defendants were
aware of Kate Weiser’s business and had either actual notice and knowledge or

constructive notice of Kate Weiser’s ’523 Registration and use and sale of its CARL
products.
25. Defendants’ unauthorized use of Kate Weiser’s registered mark for its
Accused Product is likely, if not certain, to deceive or to cause confusion or mistake
among consumers as to the origin, sponsorship, or approval of the Accused Product
and/or to cause confusion or mistake as to any affiliation, connection or association
between Kate Weiser and Defendants, and between Kate Weiser’s and Defendants’
respective products, in violation of 15 U.S.C. § 1114(a).
26. Kate Weiser is informed and believes, and on that basis alleges, that
Defendants’ infringement of Kate Weiser’s registered mark as described herein has been
and continues to be intentional, willful, and without regard to Kate Weiser’s rights.
Defendants have gained profits by virtue of their infringement of Kate Weiser’s
registered mark.
28. Kate Weiser will suffer and is suffering irreparable harm from Defendants’
use of Kate Weiser’s registered mark in connection with the commercialization of
Defendants’ Accused Product insofar as Kate Weiser’s invaluable goodwill is being
eroded by Defendants’ continuing infringement. Kate Weiser has no adequate remedy at
law to compensate it for the loss of business reputation, customers, market position,
confusion of potential customers and goodwill flowing from Defendants’ infringing
activities. Pursuant to 15 U.S.C. § 1116, Kate Weiser is entitled to an injunction against

Defendants’ continuing infringement of Kate Weiser’s registered mark. Unless enjoined,
Defendants will continue their infringing conduct.
29. Because Defendants’ actions have been committed with intent to damage
Kate Weiser and to confuse and deceive the public, Kate Weiser is entitled to treble its
actual damages or Defendants’ profits, whichever is greater, and to an award of costs
and, this being an exceptional case, reasonable attorneys’ fees pursuant to 15 U.S.C.
§ 1117(a) and 15 U.S.C. § 1117(b).
COUNT TWO
FEDERAL UNFAIR COMPETITION/FALSE DESIGNATION
OF ORIGIN (15 U.S.C. § 1125(a))
The CARL Trade Dress
31. Kate Weiser is the owner of all right and title to the distinctive CARL Trade
Dress. The CARL Trade Dress is inherently distinctive and not functional, or has
otherwise acquired secondary meaning in the marketplace.
32. Kate Weiser has extensively promoted the distinctive CARL Trade Dress
which has resulted in Kate Weiser’s acquisition of valuable, legally protected rights in
the CARL Trade Dress as well as considerable goodwill.
33. Defendants have unfairly competed with and infringed the CARL Trade
Dress by using, manufacturing, advertising, marketing, distributing and/or selling their
Accused Product that includes a combination of several elements of the CARL Trade
Dress, such as: (a) a white-color winter or holiday themed chocolate figure; (b) a
smaller rounded ball stacked on top of the larger base to form a snowman shape; (c) a

dissolved in hot liquid to form a chocolate-based beverage. By appropriating the CARL
Trade Dress, Defendants intended to trade on Kate Weiser’s and CARL’s reputation and
goodwill.
34. Defendants’ use, manufacture, distribution, advertising, marketing and
selling of the Accused Product constitutes a false designation of origin which has caused
confusion, or is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of Defendants with Kate Weiser, or as to the origin,
sponsorship, or approval of Defendants’ Accused Product or commercial activities by
Kate Weiser. Defendants’ actions have enabled Defendants to benefit unfairly from Kate
Weiser’s reputation and success, thereby giving Defendants’ Accused Product sales and
commercial value it would not have otherwise.
35. Defendants’ actions constitute unfair competition, false designation of origin
and trade dress infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C.
§ 1125(a).
36. Upon information and belief, Defendants had knowledge of Kate Weiser’s
CARL product when they designed their Accused Product and, therefore, Defendants’
infringement has been and continues to be intentional, willful and without regard to
Kate Weiser’s rights in the CARL Trade Dress.

37. Kate Weiser has been and will continue to be irreparably harmed and
damaged by Defendants’ conduct, and Kate Weiser lacks an adequate remedy at law to
compensate for this harm and damage.
Defendants have gained profits by virtue of their infringement of Kate Weiser’s CARL
Trade Dress.
39. Kate Weiser has also sustained damages as a direct and proximate result of
Defendants’ infringement of the CARL Trade Dress.
40. Because Defendants’ actions have been willful, Kate Weiser is entitled to
treble its actual damages or Defendants’ profits, whichever is greater, and to an award of
costs and, this being an exceptional case, reasonable attorneys’ fees pursuant to 15 U.S.C.
§ 1117(a).
COUNT THREE
FEDERAL TRADEMARK/TRADE DRESS DILUTION (15 U.S.C. § 1125(c))
U.S. Registration No. 5,030,523 and the CARL Trade Dress
42. Kate Weiser’s respective registered mark and the CARL Trade Dress each are
famous and have been in use on products and advertised continuously throughout the
United States since December 1, 2014.
43. Kate Weiser’s respective registered mark and the CARL Trade Dress each
have received extensive publicity through third-party recognition and are famously
associated and recognized with Kate Weiser’s products.

44. Both the registered mark and the CARL Trade Dress became famous prior to
Defendants’ use, manufacture, distribution, advertising, marketing and selling of the
Accused Product.
45. The foregoing acts of Defendants have caused dilution, or are likely to cause
dilution, of the registered mark and the CARL Trade Dress, and have induced others to
act in a manner that dilutes or is likely to dilute the distinctive quality of the registered
mark and the CARL Trade Dress and is intended to undermine the uniqueness and
distinctiveness of the registered mark and the CARL Trade Dress, constituting a
violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
46. Defendants have willfully sought to trade on the recognition, or harm the
reputation, of the registered mark and the CARL Trade Dress, and cause dilution and
induce others to dilute the registered mark and the CARL Trade Dress. Further evidence
of Defendants’ intent to trade on the recognition of Kate Weiser’s registered mark and
the CARL Trade Dress are the facts that the CARL product and the Accused Product
both consist of: (a) a white-color winter or holiday themed chocolate figure; (b) a
smaller rounded ball stacked on top of the larger base to form a snowman shape; (c) a
dissolved in hot liquid to form a chocolate-based beverage.

47. By reason of all of the foregoing, Kate Weiser has been damaged by
Defendants’ willful and deliberate use of the registered mark and the CARL Trade Dress
in the manner set forth above and will continue to be damaged unless Defendants are
enjoined from the same.
48. Kate Weiser has a substantial likelihood of success stemming from a
demonstrably clear legal right, and Defendants’ acts have caused and will cause
irreparable injury to Kate Weiser for which Kate Weiser has no adequate remedy at law.
49. Because Defendants’ actions have been willful, Kate Weiser is entitled to the
remedies as described in 15 U.S.C. § 1125(c)(5), which references 15 U.S.C. §§ 1117(a) and
1118.
COUNT FOUR
TEXAS COMMON LAW TRADEMARK/TRADE DRESS INFRINGEMENT
51. Defendants’ acts constitute trademark/trade dress infringement under the
common law of the State of Texas.
52. Defendants’ use of the CARL Trade Dress and/or colorable imitations thereof
is likely to cause consumer confusion as to the origin, sponsorship, and affiliation of its
Accused Product, at least by creating the false and misleading impression that its
Accused Product is manufactured by, authorized by, or otherwise associated with Kate
Weiser.
53. Kate Weiser’s CARL Trade Dress is entitled to protection under common law.
The CARL Trade Dress includes unique, distinctive, and non-functional designs, or has

otherwise acquired secondary meaning in the marketplace. Kate Weiser has extensively
and continuously promoted and used the CARL Trade Dress in the United States and
the State of Texas. Through extensive and continuous use, the CARL Trade Dress has
become a well-known indicator of the origin and quality of the CARL product.
54. Defendants’ use of the CARL Trade Dress has caused, and unless enjoined
will continue to cause, substantial and irreparable injury to Kate Weiser for which Kate
Weiser has no adequate remedy at law, including at least substantial and irreparable
injury to the goodwill and reputation for quality associated with the CARL Trade Dress
and CARL product.
55. Upon information and belief, Defendants’ use of the CARL Trade Dress and
colorable imitations thereof has been intentional, willful, and malicious. Defendants’ bad
faith is evidenced at least by the similarity of its Accused Product to the CARL Trade
Dress, as demonstrated above, and by Defendants’ continuing disregard for Kate
Weiser’s rights.
56. Further, as a result of such infringement, Defendants have made unjust
profits and ill-gotten gains from the marketing, promotion, distribution, and sale of the
Accused Product by trading on the goodwill associated with Kate Weiser and its
products, including the CARL product and the CARL Trade Dress.
57. Kate Weiser is entitled to injunctive relief, and Kate Weiser is entitled to
recover at least Defendants’ profits, Kate Weiser’s damages, punitive damages, costs,
and reasonable attorneys’ fees.

COUNT FIVE
TRADE DRESS DILUTION UNDER TEX. BUS. & COM. CODE § 16.103
59. Defendants’ offers to sell, sales, distribution, and/or advertisement of the
Accused Product violates § 16.103 of the TEXAS BUSINESS AND COMMERCE CODE.
sale of the Accused Product, in competition with Kate Weiser, constitutes common law
trade dress dilution because of Defendants’ use of the CARL Trade Dress and/or
colorable imitations thereof. Such use is likely to cause dilution of Kate Weiser’s CARL
Trade Dress.
61. The CARL Trade Dress is entitled to protection under Texas law. The CARL
Trade Dress includes unique, distinctive, and non-functional designs, or has otherwise
acquired secondary meaning in the marketplace in the United States and in Texas. Kate
Weiser has extensively and continuously promoted and used the CARL Trade Dress in
the United States and in the State of Texas. Through that extensive and continuous use,
the CARL Trade Dress has become a well-known indicator of the origin and quality of
the CARL product. Moreover, the CARL Trade Dress acquired secondary meaning
before Defendants commenced their unlawful use of the CARL Trade Dress in
connection with the Accused Product.
62. Defendants’ use of the CARL Trade Dress has caused, and unless enjoined
will continue to cause, substantial and irreparable injury to Kate Weiser for which Kate
Weiser has no adequate remedy at law, including substantial and irreparable injury to

the goodwill and reputation for quality associated with the CARL Trade Dress and the
CARL product.
63. Upon information and belief, Defendants’ use of the CARL Trade Dress and
colorable imitations thereof has been intentional, willful, and malicious. Defendants’ bad
faith is evidenced at least by the similarity of their Accused Product to the CARL Trade
Dress, as demonstrated above, and by Defendants’ continuing disregard for Kate
Weiser’s rights.
Accused Products by trading on the intellectual property associated with Kate Weiser’s
products, including the CARL product and the CARL Trade Dress.
65. Kate Weiser is entitled to injunctive relief and to recover at least Defendants’
profits, Kate Weiser’s damages, punitive damages, costs, and reasonable attorneys’ fees
under TEX. BUS. & COM. CODE § 16.104.
COUNT SIX
TEXAS COMMON LAW UNFAIR COMPETITION
67. Defendants’ conduct and actions set forth above constitute unfair competition
in violation of the common law of the State of Texas by simulating or copying the CARL
Trade Dress in an intentional and calculated manner that is likely to cause consumer
confusion as to the origin, sponsorship, and affiliation of Defendants’ Accused Product
and/or to pass off Defendants’ Accused Products as those of Kate Weiser.

68. As a result of such unfair competition, Kate Weiser has suffered damages and
sustained injury to its goodwill, business reputation and the CARL product symbolized
by the CARL Trade Dress. Defendants’ unauthorized activities undermine Kate Weiser’s
goodwill and negatively impact Kate Weiser’s ability to develop and promote the CARL
product.
69. Upon information and belief, Defendants’ use of Kate Weiser’s CARL Trade
Dress and colorable imitations thereof has been intentional, willful, and malicious and
their bad faith is evidenced at least by the similarity of the Accused Product to Kate
Weiser’s CARL product and the CARL Trade Dress, as demonstrated above.
Accused Product by trading on the intellectual property associated with the CARL
product, including the CARL Trade Dress, as described above.
COUNT SEVEN
COMMON LAW MISAPPROPRIATION
73. Defendants’ advertisements, promotions, offers to sell, sales, and/or
distribution of the Accused Product as described above, in direct competition with Kate
Weiser, constitute common law misappropriation.

74. Plaintiffs created the CARL product through extensive time, labor, effort,
skill, and money. Defendants have wrongfully used the CARL Trade Dress and/or
colorable imitations thereof in direct competition with Kate Weiser and gained a special
advantage because Defendants were not burdened with the expenses incurred by Kate
Weiser in creating its CARL product. Defendants have commercially damaged Kate
Weiser, at least by causing consumer confusion as to the origin, sponsorship, and
affiliation of Defendants’ Accused Product, by creating the false and misleading
impression that its Accused Product is manufactured by, authorized by, or otherwise
associated with Kate Weiser, and by taking away sales that Kate Weiser would have
made.
75. Defendants’ use of the CARL Trade Dress and colorable imitations thereof
has been intentional, willful, and malicious. Defendants’ bad faith is evidenced at least
by the similarity of the Accused Product to the Kate Weiser’s CARL Trade Dress, as
demonstrated above, and by Defendants’ continuing disregard for Kate Weiser’s rights.
76. Further, as a result of Defendants’ unfair acts, Defendants have made unjust
profits and ill-gotten gains from the marketing, promotion, distribution, and sale of its
Accused Product by trading on the intellectual property and goodwill associated with
Kate Weiser’s CARL product.

COUNT EIGHT
UNJUST ENRICHMENT
79. Defendants have made unjust profits from the sale of its Accused Product by
improperly trading on and using the intellectual property rights of Kate Weiser in the
CARL product, including the CARL Trade Dress.
80. Defendants’ conduct and actions set forth above constitute unjust enrichment
under the common law of Texas.
81. Kate Weiser is entitled to a disgorgement of the unjust profits made by
Defendants.
DEMAND FOR JURY TRIAL
82. Plaintiffs demand that all issues so triable be determined by a jury.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs pray for relief against Defendants as follows:
83. A judgment that Defendants have infringed Kate Weiser’s registered mark
as set forth in the ‘523 Registration;
84. A judgment that Defendants have infringed Kate Weiser’s CARL Trade
Dress;
85. All damages sustained by Kate Weiser based on Defendants’ infringement
of the CARL Trade Dress, false designations of origin, dilution of the CARL Trade Dress,
and acts of unfair competition;

86. An order and judgment preliminarily and permanently enjoining
Defendants, their officers, agents, servants, employees, representatives, licensees,
successors, assigns, and all those in privity, active concert, or participation with any of
them from using the CARL Trade Dress, or anything confusingly similar thereto, and
from using, affixing, offering for sale, and advertising drinkable chocolate snowmen in
the configuration currently used for the Accused Product or any configuration
substantially similar thereto;
87. Damages awarded under 15 U.S.C. § 1117(a) in the amount of total profits
received by Defendants from, and any damages sustained by Kate Weiser as a result of,
Defendants’ sales of the Accused Product;
88. Enhanced damages awarded under 15 U.S.C. § 1117(a) up to three times
the amount found as actual damages for Defendants’ trade dress infringement, false
designations of origin, dilution, and acts of unfair competition;
89. Damages in the amount of total profits received by Defendants from, and
any damages sustained by Kate Weiser as a result of, Defendants’ common law trade
dress infringement, common law unfair competition, and unjust enrichment;
90. Damages awarded under TEX. BUS. & COM. CODE § 16.104 in the amount of
total profits received by Defendants from, and any damages sustained by Kate Weiser as
a result of, Defendants’ sales of the Accused Product;
91. Costs of suit and reasonable attorneys’ fees; and
92. Such other and further relief as the Court deems just and equitable.

Respectfully submitted,
/s/ S. Wallace Dunwoody

S. Wallace Dunwoody
Texas Bar No. 24040838
wdunwoody@munckwilson.com
William A. Munck
wmunck@munckwilson.com
Robert McCutcheon
rmccutcheon@munckwilson.com
Amanda Greenspon
Florida Bar No. 1014584
agreenspon@munckwilson.com
MUNCK WILSON MANDALA, LLP

12770 Coit Road, Suite 600
Dallas, Texas 75251
Telephone: (972) 628-3600
Telecopier: (972) 628-3616
ATTORNEYS FOR PLAINTIFFS

865021

Case 3:20-cv-03364-N Document 7-1 Filed 11/20/20 Page 1 of 3 PageID 65
EXHIBIT A
Reg. No. 5,030,523 Trinity Groves Restaurant Incubator Partners, LP (TEXAS LIMITED PARTNERSHIP)
425 Bedford Street
Registered Aug. 30, 2016 Dallas, TX 75212
CLASS 30: Chocolates and chocolate based ready to eat candies and snacks; drinking
Int. Cl.: 30 chocolate, namely, chocolate based beverages; and marshmallows, all sold as a kit
Trademark FIRST USE 12-1-2014; IN COMMERCE 12-1-2014
Principal Register The mark consists of a three-dimensional beverage container comprising a configuration of a
snowman with eyes, a nose and a button, wearing a hat, sitting atop a square piece of
chocolate shown in broken lines which serves only to show the position or placement of the
mark. The stippling in the drawing is for shading purposes only.
SER. NO. 86-844,335, FILED 12-09-2015

BARNEY LAWREN CHARLON, EXAMINING ATTORNEY
Director of the United States

Patent and Trademark Office
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*

What and When to File:
• First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
• Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*

What and When to File:
• You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an

extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
international registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5030523

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Case 3:20-cv-03364-N Document 7 Filed 11/20/20 Page 1 of 21 PageID 44

UNITED STATES DISTRICT COURT

TRINITY GROVES RESTAURANT §

PLAINTIFFS’ FIRST AMENDED COMPLAINT

1. Trinity Groves Restaurant Incubator Partners, LP (“Trinity”) is a Texas

200, Dallas, Texas 75212.

2. Chocolate House Incubator Retail, LLC (“Chocolate House”) is a Texas

Suite 200, Dallas, Texas 75212.

Plaintiffs’ First Amended Complaint Page 1

3. Trader Joe’s Company is a California corporation with its principal place of

Lane, Suite 223, Carrollton, Texas 75007.

Suite 223, Carrollton, Texas 75007.

JURISDICTION AND VENUE

U.S.C. §§ 1331, 1338, and 1367.

diversity of citizenship and the matter in controversy exceeds $75,000, exclusive of

interest and costs.

jurisdiction, pursuant to 28 U.S.C. § 1367.

Plaintiffs’ First Amended Complaint Page 2

enterprise doing business as Trader Joe’s (collectively, “Trader Joe’s” or “Defendants”)

Plaintiffs’ First Amended Complaint Page 3

CARL THE SNOWMAN

Plaintiffs’ First Amended Complaint Page 4

the fall of 2019 on their website

(https://www.traderjoes.com/FearlessFlyer/Article/5248) and which was covered in

news articles (https://www.sheknows.com/food-and-recipes/articles/2131920/trader-

joes-new-holiday-products-2019/) (the “Accused Product”).

18. An image of the Accused Product is reproduced hereinbelow:

Plaintiffs’ First Amended Complaint Page 5

19. The Accused Product impermissibly replicates CARL’s distinctive features,

snowman having two brown-color chocolate-based eyes with a triangular orange-color

dissolved in hot liquid to form a chocolate-based beverage. A side-by-side comparison of

foregoing is set forth below:

Plaintiffs’ First Amended Complaint Page 6

Registration, and Defendants’ use, manufacture, advertising, marketing, distribution

relevant consumers as to source or origin.

22. Defendants’ use, manufacture, advertising, marketing, distribution and/or

sale of the Accused Product is likely to cause confusion, or to cause mistake, or to

deceive the consumer as to the affiliation, connection or association of Defendants with

Kate Weiser, or as to the origin, sponsorship, or approval by Kate Weiser of Defendants’

goods or commercial activities.

23. Defendants’ use, manufacture, advertising, marketing, distribution and/or

Plaintiffs’ First Amended Complaint Page 7

Accused Product is likely, if not certain, to deceive or to cause confusion or mistake

among consumers as to the origin, sponsorship, or approval of the Accused Product

and/or to cause confusion or mistake as to any affiliation, connection or association

respective products, in violation of 15 U.S.C. § 1114(a).

Defendants have gained profits by virtue of their infringement of Kate Weiser’s

use of Kate Weiser’s registered mark in connection with the commercialization of

Defendants’ Accused Product insofar as Kate Weiser’s invaluable goodwill is being

eroded by Defendants’ continuing infringement. Kate Weiser has no adequate remedy at

confusion of potential customers and goodwill flowing from Defendants’ infringing

activities. Pursuant to 15 U.S.C. § 1116, Kate Weiser is entitled to an injunction against

Plaintiffs’ First Amended Complaint Page 8

Defendants’ continuing infringement of Kate Weiser’s registered mark. Unless enjoined,

Defendants will continue their infringing conduct.

actual damages or Defendants’ profits, whichever is greater, and to an award of costs

§ 1117(a) and 15 U.S.C. § 1117(b).

otherwise acquired secondary meaning in the marketplace.

the CARL Trade Dress as well as considerable goodwill.

Dress by using, manufacturing, advertising, marketing, distributing and/or selling their

Plaintiffs’ First Amended Complaint Page 9

snowman having two brown-color chocolate-based eyes with a triangular orange-color

dissolved in hot liquid to form a chocolate-based beverage. By appropriating the CARL

34. Defendants’ use, manufacture, distribution, advertising, marketing and

Trinity Groves v. Trader Joe's - Amended Complaint

Trinity Groves v. Trader Joe's - Amended Complaint