ketel one trade dress complaint

Brendan J. O’Rourke Victoria L. Loughery PROSKAUER ROSE LLP Eleven Times Square New York, New York 10036 Tel: 212.969.3000 Fax: 212.969.3249 Email: [email protected] Email: [email protected]

Attorneys for Plaintiffs.

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK

KETEL ONE WORLDWIDE B.V. DOUBLE EAGLE BRANDS N.V., and DOUBLE EAGLE BRANDS B.V.

Plaintiffs,

v.

ARCADIA IMPORTS, LLC,

Defendant.

Civil Action No. 13-CV-9026 (WHP)

AMENDED COMPLAINT

Plaintiffs Ketel One Worldwide B.V., Double Eagle Brands N.V., and Double Eagle

Brands B.V. (collectively, “Plaintiffs”), by and through their attorneys, hereby allege as follows

for their Complaint against Defendant Arcadia Imports, LLC (“Defendant”):

NATURE OF THE ACTION

1. This is an action to recover for Defendant’s willful acts of trademark and trade

dress infringement, unfair competition, and false designation of origin under 15 U.S.C. §§ 1051

et seq. (the Lanham Act); trademark dilution and injury to business reputation under N.Y. GEN.

BUS. LAW § 360-1; unfair and deceptive trade practices under N.Y. GEN. BUS. LAW § 349;

Case 1:13-cv-09026-WHP Document 21 Filed 07/11/14 of 22

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common law trademark infringement and unfair competition; and trademark infringement and

dilution under the laws of all states in which Defendant’s product is sold.

2. This action arises from Defendant’s distribution, advertising, promotion, and sale

of Defendant’s DUTCHCRAFT vodka. As explained further herein, the DUTCHCRAFT trade

dress infringes and dilutes the federally registered trademarks and trade dress used in connection

with the distribution, advertising, promotion and sale of the highly successful and famous

KETEL ONE vodka and flavored vodka (the “KETEL ONE Trade Dress”). The overall look

and feel of the trade dress used in connection with the distribution, advertising, promotion, and

sale of DUTCHCRAFT vodka is substantially similar to the KETEL ONE Trade Dress, and is

likely to confuse customers as to the source or affiliation of DUTCHCRAFT vodka and dilute

the distinctive quality of the KETEL ONE Trade Dress.

3. Defendant’s unlawful conduct has confused and will continue to confuse

consumers into believing they are purchasing KETEL ONE vodka, or a vodka that is otherwise

affiliated with or sponsored by Plaintiffs, when, in fact, that is not the case. Defendant’s use of

the strikingly similar trade dress has diluted and will continue to dilute the value of the

distinctive KETEL ONE Trade Dress, and to decrease the ability of the KETEL ONE Trade

Dress to identify and distinguish Plaintiffs’ products from those of their competitors.

4. Defendant’s activities are irreparably injuring Plaintiffs and will continue to do so

unless halted by this Court. Accordingly, Plaintiffs seek permanent injunctive relief, statutory,

compensatory, and punitive damages, Defendant’s profits, Plaintiffs’ reasonable attorneys’ fees

and expenses, and corrective advertising concerning Defendant’s infringing DUTCHCRAFT

trade dress.


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PARTIES

5. Plaintiff Ketel One Worldwide B.V. (“KOW”) is a private limited liability

company organized under the laws of the Netherlands, with offices in the Netherlands.

6. Plaintiff Double Eagle Brands N.V. (“Double Eagle Brands”) is a limited liability

company incorporated under the laws of the Netherlands Antilles and, as of October 10, 2010,

organized under the laws of Curacao with a corporate seat at Willemstad, Curacao and having its

office at Kaya W.F.G. (Jombi) Mensing 32, Willemstad, Curacao.

7. Plaintiff Double Eagle Brands B.V. (“DEB”) is a private limited liability

company incorporated under the laws of the Netherlands.

8. On information and belief, Defendant is a Connecticut limited liability company

with offices at 93 West Main Street, Plainville, Connecticut 06062.

JURISDICTION AND VENUE

9. This Court has jurisdiction over the subject matter of this action under Section 39

of the Lanham Act, 15 U.S.C. § 1121, and 28 U.S.C. §§ 1331 and 1338. This Court has

supplemental jurisdiction over Plaintiffs’ related state and common law claims pursuant to

28 U.S.C. §§ 1338 and 1367.

10. This Court has personal jurisdiction over Defendant because Defendant regularly

conducts business in the State of New York, and because Defendant sells its infringing

DUTCHCRAFT product to consumers in the State of New York and in this judicial district.

Jurisdiction is also proper because Defendant has committed tortious acts in the State of New

York and in this judicial district and Plaintiffs’ claims arise out of such acts, and/or because

Defendant has otherwise made or established contacts in the State of New York and in this

judicial district sufficient to permit the exercise of personal jurisdiction.


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11. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391 because

defendant is subject to personal jurisdiction in this judicial district and because a substantial part

of the events giving rise to the claims in this action occurred in this judicial district.

FACTS COMMON TO ALL CLAIMS FOR RELIEF

Plaintiffs and KETEL ONE Vodka and Flavored Vodka

12. The Nolet Distillery in the Netherlands has been producing high-quality spirits for

over three hundred years. Inspired by over three hundred years of Nolet family distilling

expertise, KETEL ONE vodka is a super-premium vodka made from 100% wheat, and is

produced by combining modern column-distilling techniques with the use of old-world small-

batch copper pot stills.

13. Prior to December 31, 2013, Plaintiff Double Eagle Brands was the owner of all

intellectual property associated with the KETEL ONE brand, including without limitation the

KETEL ONE Trade Dress. Plaintiff KOW exclusively licensed the KETEL ONE intellectual

property, including the KETEL ONE Trade Dress, from Double Eagle Brands.

14. On December 31, 2013, through an asset transfer from Double Eagle Brands to

DEB, Plaintiff DEB became the owner of all intellectual property associated with the KETEL

ONE brand, including without limitation the KETEL ONE Trade Dress, and the licensing

arrangement with Plaintiff KOW. Plaintiff KOW continues to be the exclusive licensee of the

KETEL ONE intellectual property, including the KETEL ONE Trade Dress.

15. Plaintiff KOW is responsible for the marketing, promotion, importation, sales and

distribution of KETEL ONE vodka and flavored vodka in the United States and throughout the

world.

16. KETEL ONE vodka was launched in the United States in 1983. KETEL ONE

CITROEN flavored vodka was launched in the United States in 2000 and KETEL ONE


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ORANJE flavored vodka was launched in the United States in 2010. All three products have

been sold continuously in the United States since their launches.

The KETEL ONE Trade Dress

17. Plaintiff KOW sells KETEL ONE vodka in an untinted glass bottle with a black

cap and a long neck wrapped in a black capsule. Running the length of the bottle is the famous

and inherently distinctive KETEL ONE label. This label is triple-bordered with silver, black and

gold lines. At the top of the label is a centered black square containing a hand-drawn, stippled

and cross-hatched black-and-white sketch of a man shoveling coal into a large still.

18. In the middle of the label the words “Ketel One” are printed in a proprietary black

font between horizontal lines. The word “vodka” appears in smaller text just underneath the

words “Ketel One.” At the bottom center of the label is a circular crest. Images of the 750ml

and 1.75L KETEL ONE bottles depicting the KETEL ONE Trade Dress are pictured below (full

sized copies are attached hereto as Exhibit A). The KETEL ONE Trade Dress has not changed

significantly since its first use in 1983.


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Ketel One 750ml Bottle Ketel One 1.75L Bottle

19. DEB is the owner of numerous trademark registrations throughout the world and

in the United States comprising, consisting of, and incorporating the KETEL ONE Trade Dress,

including incontestable U.S. Reg. No. 1,357,081 as used in connection with vodka and U.S. Reg.

No. 3,798,231 (the “KETEL ONE Vodka Marks”) as used in connection with alcoholic

beverages except beer. True and correct copies of the aforementioned federal registrations are

attached hereto as Exhibits B and C.

20. DEB also owns federal trademark registrations associated with KETEL ONE

CITROEN trade dress, including U.S. Reg. Nos. 2,537,785; 3,369,154; and 3,675,874, and with

KETEL ONE ORANJE trade dress, including U.S. Reg. No. 4,072,827 (collectively, the

“KETEL ONE Flavored Vodka Marks” and, together with the KETEL ONE Vodka Marks, the

“KETEL ONE Marks”).


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21. The labels of the flavored vodkas differ from the core KETEL ONE label

primarily in two respects: (1) the flavored varieties have a colored sash (yellow on the KETEL

ONE CITROEN label; orange on the KETEL ONE ORANJE label) that runs diagonally from the

bottom left of the label to the middle-right side of the label; and (2) the color of the square that

encases the letter “K” in the KETEL ONE logo matches the color of the aforementioned label

sash. The KETEL ONE ORANJE label also differs from the core KETEL ONE label, in that

one of the three lines bordering the label is orange. Otherwise, the labeling of the CITROEN and

the ORANJE flavored vodkas is substantially similar to the core KETEL ONE product. Images

of the KETEL ONE CITROEN and ORANJE bottles are pictured below.

Ketel One Citroen 750ml Bottle Ketel One Citroen 1.75L Bottle


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Ketel One Oranje 750ml Bottle Ketel One Oranje 1.75L Bottle

22. KETEL ONE vodka and flavored vodka is sold throughout the United States in a

wide variety of trade channels, including bars, clubs, lounges, restaurants, liquor stores and other

retail locations, as well as at concerts, sporting events, and other entertainment venues.

23. Since KETEL ONE vodka was introduced to the market in 1983, the vodka has

enjoyed great popularity, with the net sales value of the product exceeding $200 million annually

in the United States for the last several years.

24. Plaintiffs exercise great care, skill, and diligence in connection with their KETEL

ONE vodka and flavored vodka and maintain exacting standards of the highest quality. As a

result, KETEL ONE vodka has received numerous awards and honors in the United States,

including being voted the Best Imported Vodka by the 2001/2002 Winter Issue of the Quarterly

Review of Wines; being voted Quality Institute International’s #1 Premium Imported Vodka

(2002); receiving the Adams Growth Brand’s Fast Track Brand Award (2000, 2002 and 2003);


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achieving a Double Gold Award for both KETEL ONE vodka and KETEL ONE CITROEN

flavored vodka at the 2003 San Francisco World Spirits Competition; receiving Impact

Magazine’s Blue Chip Brand Award (2003 and 2004); being voted the #1 Best All-Around

Vodka by Cargo Magazine (2004); being voted Best Vodka by Black Enterprise Magazine

(2007); winning the Impact Magazine’s Hot Brand Award twelve years in a row (1996-2007);

and receiving the Gold Medal at the 2008 San Francisco World Spirits Competition.

25. Plaintiffs have extensively advertised, distributed and promoted KETEL ONE

vodka in various national media including print, radio, digital, out of home, and television, as

well as through point of sale advertising, in-bar marketing, experiential events, sponsorships,

public relations and promotional events. Since 2010, Plaintiffs have spent more than $35 million

a year on advertising, marketing and promotional efforts for the KETEL ONE brand in the

United States.

26. Plaintiffs’ use of the KETEL ONE Trade Dress is subject to various quality

control efforts to ensure such use is consistent with brand guidelines.

27. The overwhelming majority of KETEL ONE advertisements prominently feature

the KETEL ONE Trade Dress. For instance, the KETEL ONE website (www.ketelone.com)

features a close-up animation of the label on its home page, and an entire page of the website is

devoted to depicting and explaining the elements of the KETEL ONE Trade Dress (see

http://www.ketelone.com/story/the-bottle). Many of Plaintiffs’ out of home billboards also

highlight the KETEL ONE Trade Dress, as do KETEL ONE television commercials, print ads

and Internet advertisements.

28. KETEL ONE vodka and flavored vodka is prominently featured on the Internet

and in social media, including Facebook, Twitter, Instagram, and YouTube. The KETEL ONE


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Facebook page has received over eight hundred and fifty-seven thousand “likes”; the KETEL

ONE Instagram feed has garnered more than four thousand followers; and the KETEL ONE

Facebook page and Instagram feed both prominently feature images of the KETEL ONE Trade

Dress.

29. Plaintiffs have also promoted the KETEL ONE Trade Dress through high-profile

sponsorships. From 2005 to 2012, the KETEL ONE brand has been an official sponsor of the

PGA Tour, and has launched KETEL ONE CLUB, a KETEL ONE-branded cocktail lounge

featured at key golf tournaments. Since 2009, the KETEL ONE brand has been an official

sponsor of the New York Yankees, and maintains the KETEL ONE LOUNGE, a KETEL ONE-

branded cocktail lounge at Yankee Stadium. Both the KETEL ONE CLUB and KETEL ONE

LOUNGE prominently feature the KETEL ONE Trade Dress. For the last several years, from

2011 to 2013, the KETEL ONE brand has also been a sponsor of the GLAAD Media Awards.

Also, since 2013, the KETEL ONE brand has been an official sponsor of the Los Angeles

Dodgers.

30. Aside from traditional advertising and promotional efforts, the KETEL ONE

brand has been the subject of extensive unsolicited media attention in various online and print

publications, including DrinkSpirits.com; Foodpairing.com; Wonderland Magazine; The Latin

Post; Wine Spectator and New York Times, among many others.

31. The KETEL ONE Trade Dress is inherently distinctive and has acquired

distinctiveness. Through Plaintiffs’ extensive and exclusive use, and advertising and

promotional efforts and, as a direct result of the considerable time, effort and money Plaintiffs

have expended on the advertising, promotion and sale of KETEL ONE vodka and flavored

vodka in the United States, the KETEL ONE Trade Dress has become well-known, distinctive


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and famous. The KETEL ONE Trade Dress is widely recognized and relied upon by consumers

to identify Plaintiffs’ products, and to distinguish them from the goods and services of others.

Defendant’s Unauthorized, Infringing, and Dilutive Activities

32. Recently, and long after the distinctive KETEL ONE Trade Dress became

famous, Defendant began using the DUTCHCRAFT trade dress in connection with the

marketing and sale of its vodka.

33. The DUTCHCRAFT trade dress is substantially and confusingly similar to the

KETEL ONE Trade Dress. Like KETEL ONE vodka, DUTCHCRAFT vodka is sold in a clear

bottle with a black cap and capsule, and a white rectangular front label. Like the KETEL ONE

label, the DUTCHCRAFT label is bordered with a thinner black line nested inside a thicker

silver line. Also like the KETEL ONE label, the DUTCHCRAFT label contains a centered black

square containing a hand-drawn, stippled and cross-hatched black-and-white graphic – in this

case, a drawing of a windmill, which is not only evocative of Holland (where KETEL ONE

vodka is produced), but of the Nolet Distillery itself: the Nolet Distillery is home to the 'De

Nolet' windmill, which generates electricity for the distillery and is the tallest windmill of its

type in the world. Further, and as with the KETEL ONE Trade Dress, the product name is

printed in a black serif font bordered by horizontal stripes. Moreover, the DUTCHCRAFT trade

dress has a circular graphic at the bottom center of the label, similar to the circle encompassing

the crest at the bottom center of the KETEL ONE label. (The gold sticker that appears on at least

some bottles is also evocative of the gold crest that appears on the KETEL ONE bottle.) Images

of the DUTCHCRAFT trade dress as it appears on the 750ml and 1.75L DUTCHCRAFT bottles

appear below, and copies are attached hereto as Exhibit D.


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Dutchcraft 750ml Bottle Dutchcraft 1.75L Bottle

34. The KETEL ONE Trade Dress became well-known, famous and distinctive long

before Defendant entered the market with its DUTCHCRAFT product, and Plaintiffs have not

authorized or consented to Defendant’s use of the KETEL ONE Trade Dress, or any other

trademark or trade dress. Nor do Plaintiffs have any control over the nature, quality or pricing of

the goods being sold by Defendant using its confusingly similar trade dress.

35. Defendant competes directly with Plaintiffs in the vodka beverage market, and

uses many of the same channels of trade to sells its DUTCHCRAFT product, including liquor

stores, restaurants, and other locations throughout New York (including within this judicial

district), Connecticut, New Jersey, and Massachusetts. Indeed, in many cases the parties’

respective products are sold in exactly the same stores, and can be found side-by-side on store

shelves.


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36. Defendant also uses similar advertising and media channels to market its product,

including the Internet, social media, sponsorships, promotional events, posters, and point-of-sale

advertisements.

37. The strikingly similar design elements of Defendant’s DUTCHCRAFT product

are likely to confuse and mislead consumers. On information and belief, Defendant willfully,

intentionally, maliciously, and purposefully, or in reckless disregard of or with callous

indifference to Plaintiffs’ rights, adopted and used its DUTCHCRAFT trade dress in a deliberate

attempt to trade off the fame and goodwill associated with the KETEL ONE brand.

38. Defendant’s activities have caused and will continue to cause irreparable harm to

the goodwill symbolized by the KETEL ONE Trade Dress. Defendant’s activities have created

and, unless enjoined, will continue to create a substantial likelihood of confusion, including

initial interest confusion, as to the origin, sponsorship, approval, and quality of the products and

services that Plaintiffs provide in connection with their KETEL ONE Trade Dress, and have

infringed Plaintiffs’ rights in the KETEL ONE Trade Dress.

39. Unless enjoined, Defendant’s actions also are likely to dilute the substantial

goodwill and reputation for quality associated with Plaintiffs’ KETEL ONE Trade Dress by

impairing the distinctiveness of the KETEL ONE brand.

COUNT I

(Trademark Infringement – Lanham Act § 32, 15 U.S.C. § 1114)

40. Plaintiffs repeat and reallege the allegations set forth in paragraphs 1-37 above

with the same force and effect as if set forth fully herein.

41. Plaintiffs are the owner and exclusive licensee of numerous trademark

registrations throughout the world and in the United States comprising, consisting of, and

incorporating the KETEL ONE Trade Dress, including the KETEL ONE Marks.


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42. Through Plaintiffs’ extensive and exclusive use and promotion of the distinctive

KETEL ONE Trade Dress, including the KETEL ONE Marks, has earned widespread

recognition in the minds of the relevant consuming public.

43. Upon information and belief, Defendant had actual or constructive knowledge of

Plaintiffs’ KETEL ONE Trade Dress prior to the entry of DUTCHCRAFT into the market.

Defendant’s use of its confusingly similar DUTCHCRAFT trade dress is unauthorized and

infringes one or more of the KETEL ONE Marks used by Plaintiffs in connection with KETEL

ONE.

44. Plaintiffs’ use of the KETEL ONE Marks in the United States predates any use by

Defendant.

45. Defendant’s use of the DUTCHCRAFT trade dress is likely to cause confusion,

mistake or deception among consumers or potential consumers as to the source, origin,

sponsorship or approval of DUTCHCRAFT and/or as to DUTCHCRAFT’s affiliation,

connection, or association with Plaintiffs and/or the KETEL ONE brand.

46. Defendant’s actions are likely to cause consumers and the public to mistakenly

believe that Plaintiffs have manufactured, sponsored, authorized, or licensed Defendant’s

products for sale and/or that Defendant’s products are being distributed by a distributor

authorized by Plaintiffs, and are likely to damage the reputation and goodwill previously

established by Plaintiffs in authorized products bearing the KETEL ONE Trade Dress.

47. The acts of Defendant described above constitute infringement of a federally-

registered mark in violation of the Lanham Act, 15 U.S.C. § 1114.


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48. Upon information and belief, Defendant’s activities as described above have been

willful, wanton, and in deliberate disregard of Plaintiffs’ trademark rights, and for the purpose of

intentionally misappropriating and capitalizing on Plaintiffs’ goodwill.

49. As a direct and proximate result of Defendant’s unlawful actions, Plaintiffs have

suffered and will continue to suffer damages in an amount that is yet to be determined, but will

be established at trial.

COUNT II

(Unfair Competition and False Designation of Origin – Lanham Act § 43(a), 15 U.S.C. § 1125(a))



51. The acts of Defendant described above constitute the use in commerce of unfair

competition, false designation of origin and/or false or misleading representations of fact in

violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

52. Defendant’s use of the DUTCHCRAFT trade dress, including all of its design

features similar to the KETEL ONE Trade Dress, is likely to cause confusion, mistake or

deception among consumers or potential consumers as to the affiliation, connection or

association of DUTCHCRAFT vodka with KETEL ONE vodka, or as to the source, origin,

sponsorship or approval of DUTCHCRAFT by Plaintiffs.

53. Upon information and belief, Defendant’s activities as described above have been

willful, wanton, and in deliberate disregard of Plaintiffs’ trademark rights, and for the purpose of

intentionally misappropriating and capitalizing on Plaintiffs’ goodwill.





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COUNT III

(Trademark Dilution – Lanham Act §43(c), 15 U.S.C. §1125(c))



56. The KETEL ONE Trade Dress is widely recognized by the general public and has

acquired fame throughout the United States, entitling it to protection from dilution under federal

law.

57. The KETEL ONE Trade Dress is famous, and was famous long before Defendant

began using the DUTCHCRAFT trade dress.

58. Defendant’s use of the DUTCHCRAFT trade dress on its vodka product is

without consent or authorization from Plaintiffs, and is likely to dilute and the distinctive quality

of the KETEL ONE Trade Dress, to decrease the capacity of such trade dress to distinguish

Plaintiffs’ products and services, and to cause harm to Plaintiffs’ goodwill and business

reputation.

59. Defendants actions as described herein constitute trademark dilution in violation

of Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c).

60. As a direct and proximate result of Defendant’s unlawful acts, Plaintiffs have

suffered and will continue to suffer damages in an amount that is not presently ascertainable but

will be established at trial. Defendant’s wrongful acts described herein were committed

willfully, with full knowledge of Plaintiffs’ rights and with the intention of deceiving and

misleading the public, and are causing harm to Plaintiffs.


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COUNT IV

(Deceptive Trade Practices -- N.Y. GEN. BUS. LAW § 349)



62. Defendant has been and is currently engaged in deceptive acts or practices in the

conduct of a business, trade, or commerce in violation of N.Y. GEN. BUS. LAW § 349.

63. The public is likely to be damaged as a result of Defendant’s deceptive trade acts

or practices.

64. Defendant’s conduct is causing immediate and irreparable injury to Plaintiffs and

its goodwill and reputation, and will continue to damage Plaintiffs and deceive the public unless

enjoined by this court.

65. Plaintiffs have no adequate remedy at law and are entitled to injunctive relief.

66. Plaintiffs are further entitled to recover Defendant’s trebled profits, Plaintiffs’

costs, and Plaintiffs’ reasonable attorneys’ fees pursuant to N.Y. GEN. BUS. LAW § 349.

COUNT V

(Trademark Dilution and Injury To Business Reputation -- N.Y.GEN. BUS. LAW § 360-1)



68. Plaintiffs have extensively and continuously promoted and used the KETEL ONE

Trade Dress in the United States, and this mark has become distinctive and a well-known symbol

of Plaintiffs’ products.

69. Defendant’s unauthorized imitation of Plaintiffs’ KETEL ONE Trade Dress is

likely to injure Plaintiffs’ business reputation, and dilutes and is likely to dilute the distinctive

quality of Plaintiffs’ KETEL ONE brand by eroding the public’s exclusive identification of the


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KETEL ONE Trade Dress with Plaintiffs and lessening the capacity of the mark to identify and

distinguish Plaintiffs’ goods.

70. Defendant’s actions demonstrate an intentional, willful, and malicious intent to

trade on the goodwill associated with Plaintiffs’ KETEL ONE brand.

71. Defendant is causing and will continue to cause irreparable injury to Plaintiffs’

goodwill and business reputation in violation of N.Y. GEN. BUS. LAW § 360-1, and Plaintiffs

are entitled to injunctive relief.

COUNT VI

(Common Law Trademark Infringement and Unfair Competition)



73. Defendant is falsely representing that its vodka designated with the

DUTCHCRAFT trade dress emanates from or has been approved by Plaintiffs while placing

beyond Plaintiffs’ control the quality of such products. Accordingly, Defendant’s use of the

DUTCHCRAFT trade dress constitutes false designation of origin and false description or

representation that Defendant’s products originate from, or are offered, sponsored, authorized,

licensed by, or otherwise connected with Plaintiffs, and is thereby likely to confuse customers.

74. As a result of Defendant’s conduct, the public is likely to believe that Defendant’s

vodka bearing the DUTCHCRAFT trade dress is sponsored by or otherwise affiliated with

Plaintiffs.

75. Defendant’s conduct is gross, wanton, and willful, and is intended to reap the

benefit of Plaintiffs’ goodwill in the KETEL ONE Trade Dress, and constitutes common law

trade dress infringement and unfair competition.


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76. As a result of Defendant’s unlawful actions, Plaintiffs are entitled to injunctive

relief, an award of their actual damages, and an accounting of any profits enjoyed by Defendant

as a result of its unlawful conduct. Moreover, due to Defendant’s gross, wanton, willful fraud,

and other morally culpable conduct, Plaintiffs are entitled to punitive damages.

COUNT VII

(Trademark Infringement Under The Laws Of Other States)



78. Defendant’s actions as described above constitute trademark infringement under

the laws of all other states in which DUTCHCRAFT vodka is sold.








COUNT VIII

(Trademark Dilution Under The Laws Of Other States)



82. Defendant’s actions as described above constitute trademark dilution under the

laws of all other states in which DUTCHCRAFT vodka is sold.


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PRAYER FOR RELIEF

WHEREFORE, Plaintiffs pray for judgment:

1. Preliminarily and/or permanently enjoining Defendant, its partners, agents,

employees, all persons in active concert or participation with Defendant, and all persons or

entities in the chain of distribution for DUTCHCRAFT vodka, from:

(a) Continuing to use the DUTCHCRAFT trade dress, or any other label

confusingly similar to Plaintiffs’ KETEL ONE Trade Dress, on or in connection with its

DUTCHCRAFT product;

(b) Using any false designation of origin or false description, or representing

or suggesting directly or by implication that Defendant is affiliated with, associated with,

authorized by, or otherwise connected to Plaintiffs, or authorized by Plaintiffs to use the

DUTCHCRAFT trade dress;

(c) Using any simulation, reproduction, copy, or colorable imitation of

Plaintiffs’ KETEL ONE Trade Dress in connection with the promotion, advertisement, display,

sale, offering for sale, manufacture, production, circulation, or distribution of any product or

service;


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(d) Engaging in any other activity constituting unfair competition with

Plaintiffs, or constituting infringement of the KETEL ONE Trade Dress; or

(e) Instructing, assisting, aiding, or abetting any other person or entity in

engaging in or performing any of the activities referred to in subparagraphs (a) through (d)

above;

2. Ordering that Defendant be required to recall from the trade and all distribution

channels any and all products, packaging, advertising, and promotional materials bearing the

DUTCHCRAFT trade dress;

3. Ordering Defendant to undertake a corrective advertising campaign of sufficient

scope to remedy its infringing and otherwise actionable conduct;

4. Ordering Defendant to deliver to the Court for destruction, or show proof of

destruction of, any and all products, packaging, advertising, and promotional materials in

Defendant’s possession or control that use the DUTCHCRAFT trade dress or any other

configuration that is confusingly similar to the KETEL ONE Trade Dress;

5. Ordering Defendant to file with the Court and serve on Plaintiffs, within thirty

(30) days after entry of a final injunction, a report in writing under oath setting forth in detail the

manner and form in which Defendant has complied with the injunction;

6. Awarding Plaintiffs compensation for any and all damages, injury or harm

suffered as a result of Defendant’s infringing and otherwise actionable conduct;

7. Ordering that judgment be rendered against Defendant and that Defendant

account to Plaintiffs for all profits received from the sale of products and services derived

directly or indirectly from the wrongful acts of Defendant described herein;


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8. Ordering that the award of profits resulting from Defendant’s infringement, unfair

competition, and false designation of origin be trebled;

9. Ordering that Plaintiffs be awarded interest, including pre-judgment interest, on

the foregoing sums;

10. Ordering that Plaintiffs be awarded their costs in connection with this suit,

including reasonable attorneys’ fees and expenses;

11. Ordering that Plaintiffs be awarded punitive damages as appropriate to deter any

future violations of Plaintiffs’ rights;

12. Ordering such other actions as the Court may deem appropriate to prevent the

trade and public from deriving the mistaken impression that any products or services offered,

advertised, or promoted by or on behalf of Defendant are authorized by Plaintiffs or related in

any way to Plaintiffs’ products or services; and

13. Ordering such other and further relief as the Court may deem just and proper.

DATED: July 11, 2014 Respectfully Submitted,

____/s/_Brendan J. O’Rourke______

PROSKAUER ROSE LLP Brendan J. O’Rourke

Victoria L. Loughery Eleven Times Square New York, NY 10036 Tel: 212.969.3000 Fax: 212.969.2900 E-mail: [email protected] [email protected]

Attorneys for Plaintiffs


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