Crave Bake Shop, LLC v. Crave, LLC

7/29/2019 Crave Bake Shop, LLC v. Crave, LLC

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Elizabeth Tedesco Milesnick, OSB No. [email protected] MILLER NASH LLP3400 U.S. Bancorp TowerIll S.W. Fifth AvenuePortland, Oregon 97204Telephone: (503) 224-5858Facsimile: (503) 224-0155

Attorneys for Defendant

UNITED STATES DISTRICT COURTDISTRICT OF OREGONPORTLAND DIVISION

CRAVE BAKE SHOP, LLC, CVNo.______Plaintiff,

v.COMPLAINT FOR DECLARATORYJUDGMENT OF NON-INFRINGEMENT OFTRADEMARK RIGHTS

CRAVE,LLC,Defendant.

Crave Bake Shop, LLC ("Bake Shop") states and pleads as follows:

. NATURE OF ACTION1. This is an action for declaration of rights under the Lanham Act, 15 U.S.C.

1051 et seq. Bake Shop seeks a declaration from this Court that the use of Bake Shop's

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federally registered trademark CRAVE BAKE SHOP for pastry and dessert shops does notinfringe, dilute, or otherwise violate the rights of defendant Crave, LLC ("CLLC'').Alternatively, Bake Shop asks for a declaration that CLLC is estopped from asserting trademarkinfringement and r e l a t e d ~ claims against Bake Shop.

PARTIES2. Bake Shop is an Oregon limited liability company with its principal place

ofbusiness at 460 Fifth Street, Lake Oswego;Oregon 97034.3. CLLC is a California limited liability company with its principal place of

business at 368 Richland Avenue, San Francisco, California 94110.

JURISDICTION AND VENUE4. This Court has jurisdiction of this civil action under the Declaratory

Judgments Act, 28 U.S.C. 2201 and 2201, and theLanham Act, 15 U.S.C. 1125(a) and, (c).5. Venue is proper in this Court under 28 U.S.C. 1391 because CLLC sells

goods in this district, and has contacted and sent the correspondence that created the presentdispute to Bake Shop in this district, with a substantial part of the events or omissions giving riseto the claim to be adjudicated in this action occurring in this district.

CLAIM FOR RELIEF(Declaratory Judgment of Non-Infringement)6. Since 2009, Bake Shop has been baking and selling gluten-free artisan-

crafted cakes, cupcakes, cookies, cinnamon rolls, and other pastries using the trademark CRAVEBAKE SHOP. Bake Shop has enjoyed substantial successand acclaim, appearing on the FoodNetwork's national television show "Cupcake Wars" in 2010, 2011, and 2012, winning the

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competitions in December 2011 and May 2012, and named runner-up in the "CupcakeChampions" final in June 2012.

7. On March 3, 2011, Bake Shop filed an application with the United StatesPatent and Trademark Office ("PTO") to register the CRAVE BAKE SHOP trademark for pastryand dessert shops.

8. On May 31, 2011, Bake Shop received a letter from CLLC stating thatBake Shop's use of the CRAVE BAKE SHOP trademark "has caused and will continue to causeconfusion in the market and as such constitutes willful trademark infringement, dilution of the

Crave tradename, and false designation of origin." CLLC cited its CRAVE A SAN JFRANCISCO BAKERY design mark with Registration No. 3034995, pictured below:

9. CLLC demanded that Bake Shop confirm in writing within 10 days that itwould cease and desist its use of the CRAVE BAKE SHOP name, and stated, "Should CraveBake Shop fail to so confirm, [CLLC] may file a lawsuit in the United States District Court inthe Northern District of California for Crave Bake Shop's willful violation of the Lanham Actand relevant state unfair competition law whereby Crave will seek all legal damages to which itis entitled, including, but not limited [sic] statutory damages for each violation, lost profits, trebledamages, punitive damages, injunctive relief along with its attorneys' fees and costs incurred inbringing such an action."

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10. In June 2011, Bake Shop and CLLC corresponded with additionalinformation about their businesses.

11. On July 1, 2011, the PTO sent an Office Action to Bake Shop on itsapplication to register CRAVE BAKE SHOP affirming that "[t]he Office records have beensearched and there are no similar registered or pending marks that would bar registration underTrademark Act Section 2(d), 15 U.S.C. 1052(d) [regarding likelihood of confusion]."

12. On July 13, 2011, Bake Shop responded to CLLC that, as the PTO hadrecently confirmed, there is no likelihood of confusion between Bake Shop's CRAVE BAKE

SHOP mark and CLLC's CRAVE A SAN FRANCISCO BAKERY design mark. Bake ShopIpointed to the differences between the two marks and the companies' logos and to the many

coexisting uses of the word "crave" in the food industry, and proposed terms on which the partiescould coexist in the market.

13. On S_eptember 6, 2011, CLLC reasserted its belief that Bake Shop wasinfringing its trademark, and warned that ifBake Shop did not comply with CLLC's demands,Bake Shop "will leave [CLLC] no choice but to file a la'Ysuit and seek a judicial determinationofthe rights ofthe parties, damages, and injunction against [Bake Shop's] use ofthe mark." Theletter concluded that Bake Shop's use of the mark was "grossly improper, misleading, andwarrants prompt judicial intervention if left unabated."

14. On October 5, 2011, Bake Shop responded by addressing some ofthesubstantive contentions in CLLC's September 6, 2011 letter and reiterating its belief that theparties could coexist.

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15. Bake Shop did not hear from CLLC for more than one year and assumedthat CLLC had agreed with the position stated in Bake Shop's October 5, 2011 letter that theparties could coexist without confusion. Bake Shop proceeded to build up its pastry and dessertbusiness, expanding its distribution and product offerings, including dry baking mixes, andworking to publish a cookbook.

16. Also during the period of silence from CLLC, on July 11, 2012, the PTOpublished the CRAVE BAKE SHOP mark in the Official Gazette "for the purpose of oppositionby any person who believes he will be damages by the registration of the mark." CLLC did not

oppose the mark atthe PTO. By allowing Bake Shop's CRAVE BAKE SHOP mark to registerwithout opposition, CLLC further confirmed Bake Shop's belief that CLLC agreed the partiescould coexist without confusion.

17. On October 16,2012, the PTO registered Bake Shop's CRAVE BAKESHOP mark, giving it Registration No. 4224040. The registration certificate is attached heretoas "Exhibit A."

18. On December 24, 2012, Bake Shop was surprised to receive anotherdemand letter from CLLC, demanding that Bake Shop buy a license for its continued use ofCRAVE BAKE SHOP.

19. On February 18, 2013, Bake Shop responded by noting its surprise andstating, "After more than a year of silence, we had assumed this matter was resolved." BakeShop reasserted its belief that there was no infringement and pointed out that the CRAVE BAKESHOP mark had since federally registered. It further informed CLLC, however, that due tochanges in Bake Shop's business, Bake Shop would be phasing out its use oftheCRAVE BAKE

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SHOP mark over the next year or so. Bake Shop's letter stated, "We trust this resolves CLLC'sconcerns."

20. On February 27, 2013, CLLC sent B.ake Shop a letter purportedlyconstituting CLLC's "final attempt to resolve this matter amicably." The letter asserts that BakeShop's claim to be phasing out its mark was "a subterfuge to simply delay the filing of suit here."Even ifBake Shop does phase out the use ofmark, CLLC stated, "that does not excuse past 'infringement or the damages it has caused and to which Crave would be entitled." The letter ,threatens that ifBake Shop does not enter into settlement discussions on CLLC's terms, BakeShop "is leaving [CLLC] little choice, but to proceed with this matter."

21. CLLC's repeated threats have created a reasonable app;rehension oflitigation and have brought into question Bake Shop's right to phase out use of its CRAVEBAKE SHOP mark on its owntimeline and without liability for past damages to CLLC.

22. Bake Shop's use of its CRAVE BAKE SHOP mark does not constitute'trademark infringement, dilution, or false designation of origin under the Lanham Act (LanhamAct 15 U.S.C. 1125) or at common law with respect to the CRAVE A SAN FRANCISCOBAKERY design mark.

I 23. An actual and justiciable controversy exists between theparties based onCLLC's claims and demands. Bake Shop wishes to resolve any controversy and determine that ithas not and will not, by continued use of the CRAVE BAKE SHOP mark; infringe, dilute, or"otherwise violate the rights ofCLLC in its CRAVE A SAN FRANCISCO BAKERY designmark.

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24. Bake Shop is entitled to a declaration and judgment that Bake Shop's useof its CRAVE BAKE SHOP mark does not constitute trademark infringement, dilution, or falsedesignation of origin under the Lanham Act (Lanham Act 15 U.S.C. 1125) or at common lawwith respect to the CRAVE A SAN FRANCISCO BAKERY design mark.

25. Alternatively, Bake Shop is entitled to a declaration that CLLC is estoppedfrom asserting its trademark infringement and related claims because CLLC's silence afterreceiving Bake Shop's October 5, 2011letter, and failure to oppose the CRAVE BAKE SHOPmark when it was published for opposit ion by the PTO, misled Bake Shop to act to its detrimentby undertaking efforts to expand its business as described inparagraph 15 of this complaint.

PRAYER FOR RELIEFWHEREFORE, Bake Shop respectfully requests that the Court enter judgment

against CLLC as follows:A. Declaring that Bake Shop's use of its federally registered CRAVE BAKE SHOP mark

does not infringe, dilute, or otherwise violate the trademark rights claimed by CLLC;B. Declaring that CLLC is estopped from asserting that Bake Shop has infringed,

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diluted, or otherwise violated the trademark rights claimed by CLLC; andC. Awarding such further and other rel ief as the Court deems just and proper.

DATED this 7th day of March, 2013.MILLER NASH LLP

Is/ Elizabeth Tedesco MilesnickElizabeth Tedesco MilesnickOSB No. [email protected]: (503) 224-5858Fax: (503) 224-0155

Complaint for Declaratory JudgmentMILLER NASH LLPPDXDOCS:1994381.4 ATTORNEYS AT LAWTELEPHONE: (503) 224-58583400 U.S. BANCORP TOWER

Il l S.W. FIFTH AVENUEPORTLAND, OREGON 972 04


Crave Bake Shop, LLC v. Crave, LLC

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