moet hennesey v. grands chais de france - ice imperial trade dress.pdf

JS 44C/SDNY

REV. 4/2014

J&&*t CIVIL COV

Ihfl^p nei&i replace norsuppThe JS-44 civil cover sheet and theinformation contained hj£ip nei&creplace nor supplement the filing and service ofpleadings orotherpapers as required by law, except as provided by local rules of court. This form, approved by theJudicial Conference of the UnitedStates in September 1974, is required foruse of the Clerkof Court forthe purpose ofinitiating the civil docket sheet.

DE™»NTs OCT 0 220'Grands Chais de France Group, SAS and La MaisonDu Vigneron, SAS

PLAINTIFFS

Moet Hennessy USA, Inc

ATTORNEYS (FIRM NAME, ADDRESS,AND TELEPHONE NUMBEREvan Glassman

ATTORNEYS (IF KNOWN)John A. Clifford

Steptoe& JohnsonLLP, 1114Avenue of the AmericasNew York, NY 10036Tel: (212) 506-3900 , ,CAUSE OFACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE ABRIEF STATEMENT OF CAUSF)

(DONOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)Lanliam Act Sections32 and 43(a), 15U.S.C. §§ 1114and 1125(a);New York General Business LawSection 349, and New York Common Law

Has this action, case, or proceeding, or one essentially the same been previously filed in SDNY at any time? NaEVesMJudge Previously Assigned

If yes, was this case Vol. fj Invol. • Dismissed. No fj Yes fj If yes,give date &CaseNo.

Merchant & Gould, PC. 5635 N. Scottsdale Road, Suite 170Scottsdale, AZ 85250

Tel: (480) 725-8806

IS THIS AN INTERNATIONAL ARBITRATION CASE?

(PLACE AN[x] INONEBOXONLY)

TORTS

No 0 Yes •

NATURE OF SUIT

[]1101112011130(1110

[1150

1115111152

11153

1)160

11190

11195

I 1196

PERSONAL INJURY

[ ] 310 AIRPLANE[ ]315 AIRPLANE PRODUCT

LIABILITY

[ ] 320 ASSAULT, LIBEL &SLANDER

( ] 330 FEDERALEMPLOYERS'

LIABILITY

( ) 340 MARINE( 1345 MARINE PRODUCT

LIABILITY

( ] 350 MOTOR VEHICLE[ ] 355 MOTOR VEHICLE

PRODUCT LIABILITY

( ] 360 OTHER PERSONALINJURY

[ ]362 PERSONAL INJURY -MED MALPRACTICE

INSURANCE

MARINE

MILLER ACT

NEGOTIABLE

INSTRUMENT

RECOVERY OF

OVERPAYMENT &

ENFORCEMENTOF JUDGMENT

MEDICARE ACTRECOVERY OF

DEFAULTED

STUDENT LOANS

(EXCL VETERANS)RECOVERY OF

OVERPAYMENT

OF VETERAN'S

BENEFITS

STOCKHOLDERS

SUITS

OTHER

CONTRACT

CONTRACT

PRODUCT

LIABILITY

FRANCHISE

PERSONAL INJURY FORFEITURE/PENALTY[ ] 367 HEALTHCARE/PHARMACEUTICAL PERSONAL , , 625 DRUG RELATEDINJURY/PRODUCT LIABILITY SE,2URE 0F PROPERTY[ ]365 PERSONAL INJURY 21 usc 881

PRODUCT LIABILITY . , Ran nTHCR[]368 ASBESTOS PERSONAL ' ' 69° °™ER

INJURY PRODUCT

LIABILITY

PERSONAL PROPERTY

[ ] 370 OTHER FRAUD[ ] 371 TRUTH IN LENDING

ACTIONS UNDER STATUTES

CIVIL RIGHTS

[ ]440 OTHER CIVIL RIGHTS(Non-Prisoner)

[ ] 441 VOTING[ ]442 EMPLOYMENT[ ] 443 HOUSING/

ACCOMMODATIONS[ ] 445 AMERICANS WITH

DISABILITIES -EMPLOYMENT

[ ]446 AMERICANS WITHDISABILITIES -OTHER

[ ] 448 EDUCATION

[ ] 380 OTHER PERSONALPROPERTY DAMAGE

[ ] 385 PROPERTY DAMAGEPRODUCT LIABILITY

PRISONER PETITIONS

[ ) 463 ALIEN DETAINEE[ ] 510 MOTIONS TO

VACATE SENTENCE

28 USC 2255

[ ] 530 HABEAS CORPUS[ ]535 DEATH PENALTY[ l 540 MANDAMUS & OTHER

REAL PROPERTY

LABOR

I ] 710 FAIR LABORSTANDARDS ACT

I ]720 LABOR/MGMTRELATIONS

[ ] 740 RAILWAY LABOR ACT

[ ] 751 FAMILY MEDICALLEAVE ACT (FMLA)

[ ] 790 OTHER LABORLITIGATION

[ J791 EMPLRETINCSECURITY ACT

IMMIGRATION

[ ] 462 NATURALIZATIONAPPLICATION

[ ] 465 OTHER IMMIGRATIONACTIONS

I 1210

[ ]220[ ]230

1 12401 1245

[ ]290

LAND

CONDEMNATION

FORECLOSURE

RENT LEASE &

EJECTMENT

TORTS TO LAND

TORT PRODUCT

LIABILITY

ALL OTHER

REAL PROPERTY

Checkif demanded in complaint:

CHECK IF THIS IS A CLASS ACTIONUNDER F.R.C.P. 23

PRISONER CIVIL RIGHTS

[ ] 550 CIVIL RIGHTS[ j555 PRISON CONDITION

]560 CIVIL DETAINEECONDITIONS OF CONFINEMENT

ACTIONS UNDER STATUTES

BANKRUPTCY

[ ] 422 APPEAL28 USC 158

( ] 423 WITHDRAWAL28 USC 157

PROPERTY RIGHTS

[ ] 820 COPYRIGHTS[ ] 830 PATENTbd 840 TRADEMARK

SOCIAL SECURITY

[ ]861 HIA(1395ff)[ J 862 BLACK LUNG (923)[ ] 863 DIWC/DIWW (405(g))[ ] 864 SSID TITLE XVI[ ] 865 RSI (405(g))

FEDERAL TAX SUITS

[ ] 870 TAXES (U.S. Plaintiff orDefendant)

[ ] 871 IRS-THIRD PARTY26 USC 7609

OTHER STATUTES

] 375 FALSE CLAIMS] 400 STATE

REAPPORTIONMENT

[ ]410 ANTITRUST| ] 430 BANKS &BANKING[ ] 450 COMMERCE[ ]460 DEPORTATION[ ]470 RACKETEER INFLU

ENCED & CORRUPT

ORGANIZATION ACT

(RICO)[ ]480 CONSUMER CREDIT[ ]490 CABLE/SATELLITE TV

( ] 850 SECURITIES/COMMODITIES/

EXCHANGE

111

[ ) 890 OTHER STATUTORYACTIONS

[ ]891 AGRICULTURAL ACTS

[ ]893 ENVIRONMENTALMATTERS

[ ] 895 FREEDOM OFINFORMATION ACT

[ ] 896 ARBITRATION

[ ] 899 ADMINISTRATIVEPROCEDURE ACT/REVIEW OR

APPEAL OF AGENCY DECISION

[ ] 950 CONSTITUTIONALITY OFSTATE STATUTES

• M THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?

DOCKET NUMBERJUDGEDEMAND $ OTHER

Check YES only ifdemanded in complaintJURY DEMAND: • YES l*jNO NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-32).

(PLACE ANx INONE BOX ONLY) ORIGIN

•2 Removed from • 3 Remanded D 4 Reinstated or • 5 Transferred from • 6 MultidistrictState Court from ReoPened (Specify District) Lt.gat.on

j 3. all parties represented *

| | b. Atleast oneparty is pro se.

(PLACEANxINONEBOXONLY) BASIS OF JURISDICTION IFDIVERSITY, INDICATE

D 1 U.S. PLAINTIFF • 2 U.S. DEFENDANT [x] 3 FEDERAL QUESTION Q4 DIVERSITY CITIZENSHIP BELOW.(U.S. NOT A PARTY)

CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)

(Place an [X] in one box forPlaintiff and one box for Defendant)

L3 1 OriginalProceeding

I I 7 Appeal toDistrictJudge fromMagistrate JudgeJudgment

PTF DEF

CITIZEN OF THIS STATE [ ] 1 [ ] 1

CITIZEN OF ANOTHER STATE [ ] 2 [ ) 2

CITIZEN OR SUBJECT OF AFOREIGN COUNTRY

PTF DEF

l)3[)3PTF DEF

INCORPORATED and PRINCIPAL PLACE [ ] 5 [ ] 5OF BUSINESS IN ANOTHER STATE

INCORPORATED or PRINCIPAL PLACE [ ] 4 [ ] 4OF BUSINESS IN THIS STATE

FOREIGN NATION

PLAINTIFF(S) ADDRESS(ES) ANDCOUNTY(IES)Moet Hennessy USA, Inc.c/o Steptoe and Johnson LLP1114 Avenue of the Americas

New York, New York 10036

DEFENDANT(S) ADDRESS(ES) ANDCOUNTY(IES)Grands Chais de France Group, SAS1 Rue de la Division Leclerc

67290 Petersbach

France

La Maison du Vigneron, SASRoute De Champagnole39570 Crancot

France

[]6 ()6

DEFENDANT(S) ADDRESS UNKNOWNREPRESENTATION IS HEREBY MADETHAT, AT THIS TIME, I HAVEBEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN

RE91BENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:

Check one: THIS ACTION SHOULD BEASSIGNED TO: • WHITE PLAINS \x\ MANHATTAN(DO NOT check either box if this a PRISONER PETITION/PRISONERCIVIL RIGHTSCOMPLAINT.)

DATE , SIGNATURE OFATTORNEY OFRECORD ADMITTED TOPRACTICE IN THIS DISTRICTio\'l\\4 s. - /.. **„ _ [1noT# v ry- jr

Magistrate Judge isto be designated by theClerk of theCoui1«ag JUDGENETBURN

RECEIPT

Magistrate Judge

Ruby J. Krajick, Clerk of Court by Deputy Clerk, DATED

UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)

[X YES (DATE ADMITTED Mo.Match Yr. 1995Attorney Bar Code # EG9493

is so Designated.

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

MOET HENNESSY USA, INC.,

Plaintiff,

GRANDS CHAIS DE FRANCE GROUP, SAS,AND LA MAISON DU VIGNERON, SAS

Defendants.

14 CV

Civil Action No.

COMPLAINT

7956

JUDGE*

COMPLAINT FOR TRADEMARK INFRINGEMENT, j crTRADE DRESS INFRINGEMENT, FALSE DESIGNATION OF ORIGIN, £ y>

AND UNFAIR COMPETITION c £> o

0 ro ^=Plaintiff Moet Hennessy USA Inc. ("Moet Hennessy"), by its attorneys, SteptoeM& ~~<

Johnson LLP, complains and alleges against Defendants Grands Chais de France Group, SAS c~'!to r,

("GCF") and La Maison Du Vigneron, SAS ("La Maison"), (collectively"Defendants") as '

follows:

NATURE OF THE DISPUTE

1. This is an action for trademark infringement, trade dress infringement and unfair

competition and for violations of the New York State common law and related causes of action

brought pursuant to Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a),

Sections 349 of the New York General Business Law, and the common law of the State of New

York. Through this action, Moet Hennessy seeks injunctive relief and damages arising from

Defendants' manufacture, importation, distribution and sale of a willful infringement of the

distinctive trademark and trade dress of the packaging of Moet Hennessy's successful new

product, Ice Imperial - the first champagne specifically developed to be served on ice.

THE PARTIES

2. Plaintiff Moet Hennessy is a Delaware corporation conducting business in this

judicial district at 85 10th Avenue, New York, New York. Moet Hennessy is engaged, inter alia,

in the importation, sale, distribution andmarketing in the United States, including within this

judicial district, of wine and spirits including without limitation champagne and sparkling wine

products.

3. Upon information and belief, Les Grands Chais de France is a French Societe par

Actions Simplifiee duly organizedand existing under the laws of France with a principalplace of

business at 1 Rue de la Division Leclerc, 67290 Petersbach, France. Upon information and

belief, Les Grands Chais de France manufactures Depreville Ice sparkling wine and contracts

with entities in the United States, and this judicial district, for the importation into and

distribution within the United States of Depreville Ice as well as other GCF product offerings.

4. Upon information and belief, La Maison du Vigneron is a French Societe par

Actions Simplifiee duly organized and existing under the laws of France with a principal place of

business at Route De Champagnole, 39570 Crancot, France. Upon information and belief, Les

Grands Chais de France is the parent company of La Maison du Vigneron, producer of

Depreville Ice sparkling wine.

5. Upon information and belief, La Maison du Vigneron is involved in the

manufacture and production of Depreville Ice, including in connection with the importation of

Depreville Ice into United States. The Depreville Ice label states that the product was

"elaborated by La Maison du Vigneron" and was imported by Saranty-Imports of White Plains,

New York.

JURISDICTION AND VENUE

6. This action is based on Sections 32 and 43(a) of the Lanham Act, 15 U.S.C.

§§ 1114 and 1125(a), Section 349 of theNew York General Business Law, andthecommon law

of the State of New York.

7. This Court has jurisdiction over the subject matter of this action pursuant to

Section 39 of the Lanham Act, 15 U.S.C. § 1121, and 28 U.S.C. §§1331, 1332 and 1338(a) for

the claims arising out of the violations of Sections 32 and 43(a) of the Lanham Act; has

supplemental jurisdiction pursuant to 28 U.S.C. § 1367 for the claims arising out of the violation

of Section 349 of the New York General Business Law and all other claims arising under the

common law of the State of New York; and has jurisdiction pursuant to 28 U.S.C. §§ 1338(b)

and 1367 for the claims under the common law of unfair competition.

8. Upon information and belief, personaljurisdiction over GCF and La Maison is

proper in this judicial district becauseboth GCF and La Maison have transacted businesswith

W.J. Deutsch & Sons Ltd. and/or Saranty Imports, LLC, two related entities conducting business

at 709 Westchester Avenue, White Plains, NY 10604. Upon information and belief, W.J.

Deutsch & Sons Ltd. and/or Saranty Imports, LLC obtain the infringing Depreville product

directly from Defendants through a contractual distribution arrangement, then import the product

for Defendants and distribute the same once imported to retailers in the United States.

9. Upon information and belief, Defendants regularly transact business with

importers and distributers such as W.J. Deutsch & Sons Ltd. and Saranty Imports, LLC for the

importation and distribution of wine and related products, including additional Depreville wine

products, into the United States.

10. A substantial part of the events giving rise to the claims occurred in this district.

Venue in this Court is therefore proper under 28 U.S.C. § 1391.

FACTUAL BACKGROUND

A. Moet Hennessy and the Ice Imperial Champagne Product

11. Moet Hennessy is the leading importer and marketer of luxury wines, spirits and

champagnes in the U.S, including among others, Moet & Chandon, Dom Perignon, Krug, Veuve

Clicquot and Ruinart Champagnes.

12. Founded in the Champagne region of France in 1743 by Claude Moet, Moet &

Chandon is known as one of the premier luxury wine and champagne houses in the world. For

more than 270 years, Moet & Chandon has been recognized around the world for its fine

champagnes and unparalleled attention to detail throughout its winemaking process. Moet &

Chandon maintains the largest vineyard holdings in the Champagne region of France.

13. Moet & Chandon developed Ice Imperial, the world's first ever champagne

specifically created to be enjoyed on ice. This champagne blend was expertly developed to

intensify the taste experience.

14. A radical and unique packaging design mark and trade dress was developed to

identify the innovative Ice Imperial product and to immediately distinguish it from other wine

products in the marketplace. The Ice Imperial packaging design mark and trade dress, shown

below, features a luxurious white sleeved bottle with a color motif consisting of black, silver and

gold, including a gold label, a black tie around the neck of the bottle and a repeating silver

diamond pattern, among other design features.

.)

ti.MOET& CHANDON

ICE I MPERIAt.

*

15. Moet Hennessy owns U.S. Trademark Registration No. 3,916,001, for the

inherently distinctive and unique Ice Imperial packaging design mark that includes a number of

elements of the Ice Imperial packaging (the "Ice Imperial Mark"). These elements include a

white bottle, black tie, gold band and silver diamonds. The Ice Imperial Mark is valid,

subsisting, in full force and effect, and constitutes prima facie evidence of its inherent

distinctiveness. A true and correct copy of the Ice Imperial Mark registration is attached as

Exhibit A.

16. The overall impression created by the Ice Imperial mark and trade dress results

from the combination of several unique features including without limitation the white bottle,

gold, black, and silver color motif, white label with a gold border, and silver repeating diamond

pattern. The trade dress is unquestionably unique anddistinctive to Moet Hennessy for

champagnes and sparkling wines. The unique Ice Imperial trade dress is inherently distinctive,

non-functional and identifies and distinguishes Moet Hennessy as the source of the Ice Imperial

product.

17. The Ice Imperial product in its unique and distinctivepackagingdesign mark and

trade dress has been a commercial success in the United States and abroad, and Moet Hennessy

is currentlyin the midst of a broad launch of this distinctivenew product through wine and

spirits retail stores and boutiques throughout the country.

B. Defendants' Copying of the Ice Imperial Mark and Trade Dress

18. Upon information and belief, GCF and La Maison recently began to manufacture,

distribute, and/or arrange for distribution of a "Depreville Ice" sparkling wine product that uses a

packaging that closely copies the Ice Imperial Mark and trade dress in an effort to capitalize on

the goodwill of Moet Hennessy's groundbreaking Ice Imperial product and its distinctive Ice

Imperial Mark and trade dress.

19. Upon information and belief, Defendants GCF and La Maison recently, through

their U.S. importers and distributors, began to import and distribute within the United States its

Depreville Ice product featuring a copy of the Ice Imperial Mark and trade dress. Upon

information and belief, Depreville Ice has only been available for purchase in the United States

for a short time.

20. The Depreville Ice product competes directly with Moet Hennessy's Ice Imperial

in the sparkling wine category and specifically in the subcategory created by Moet Hennessy of

sparkling wine products designed to be poured over ice. Upon information and belief,

Defendants' are the only other manufacturers of sparkling wine designed to be served over ice

for sale in the United States.

21. The clear intent to copy the unique and distinctive Ice Imperial Mark and trade

dress is evident from the Depreville Ice trade dress itself. As shown below, the trade dress of

Defendants' Depreville Ice product is a close copy of the federally registered Ice Imperial Mark

and the unique and highly distinctive trade dress used by Moet Hennessy for its Ice Imperial

champagne.

22. The Defendants' close copying of the many distinctive elements of the Ice

Imperial trade dress creates virtually the same overall commercial impression between the trade

dress of the Depreville Ice and Ice Imperial products. For example, both products are contained

in a white bottle, including a white foil cap. Defendants use identical coloring of white, black,

and gold throughout the Depreville Ice packaging. Both the Moet Hennessy Ice Imperial and

Depreville Ice packaging feature a black ribbon, outlined in gold, around the neck of the bottle.

The Ice Imperial label itself is white and is flanked by gold bands—a large band on the bottom

and smallerband on the top of the label. The Depreville Ice label contains the same label layout

complete with large gold band at the bottom and smallerband above. The labels on both

productsare comprisedof a white, black and gold color scheme and are placed virtually

identically on the respective bottles. The fonts used for the products' marks are virtually the

same and in the same color. Both product marks are followed below by a line of text in black in

a sans serif font. In addition, the Depreville Ice bottle mimics the Ice Imperial bottle's repeating

silver diamond pattern with its own repeating modified-diamond pattern on the bottle. Both

labels also contain the words "Drink On Ice" and "Demi-Sec."

23. As part ofa recent new product launch at one Depreville Ice retailer, the retailer

emphasized the obvious comparisons between Ice Imperial and Depreville Ice. The "New Item

Launch" flyer states that Depreville Ice "was specifically developed to be served on ice." The

flyer also informs retailers to sell the less expensive Depreville Ice product "to the Moet Ice

customer." Not only is the Depreville Ice product an obvious copy of the Ice Imperial product

and packaging, but retailers are using the close similarity of the Ice Imperial Mark and trade

dress to promote and sell Depreville Ice as the cheaper version of Ice Imperial.

24. By and through the manufacture, importation, and distribution throughout the

United States of the Depreville Ice product bearing such a close copy of the Ice Imperial Mark

and trade dress, Defendants have caused and will continue to cause consumers to falsely believe

that Depreville Ice is Ice Imperial or comes from the same source of Ice Imperial and will

therefore damage Moet Hennessy and the extensive business and goodwill established by the

innovative Ice Imperial product and represented by the Ice Imperial Mark and Ice Imperial trade

dress.

FIRST CLAIM FOR RELIEF

Trademark Infringement Under Section 32 of the Lanham Act

25. Moet Hennessy hereby incorporates by reference and realleges each and every

allegation of Paragraphs 1 through 24 above.

26. Section 32(1)(a) of the Lanham Act, 15 U.S.C. § 1114(l)(a), prohibits any person

from using in commerce, without the consent of the registrant, a trademark or any reproduction,

counterfeit, copy or colorable imitation thereof in connection with the marketing, advertising,

distribution, or sale of goods or services which is likely to result in confusion, mistake, or

deception.

27. The Ice Imperial Mark is federally registered and distinctive.

28. Defendants have used a copy of the Ice Imperial Mark for their Depreville Ice

product without Moet Hennessy's consent or authorization. Defendants' use, including the

manufacture, importation, sale, and distribution of its Depreville Ice sparkling wine bearing a

simulation of the Ice Imperial Mark in interstate commerce, is likely to cause confusion and

mistake in the mind of the public, leading the public to believe that Defendants' ice sparkling

wine is the Ice Imperial sparkling wine or emanates or originates from the same source of the Ice

Imperial sparkling wine, or that Defendants' ice sparkling wine has been approved, sponsored or

otherwise associated with the source of the Ice Imperial sparkling wine.

29. Through its unauthorized use of a copy of the Ice Imperial Mark, Defendants are

unfairly benefiting from the goodwill and reputation of the Ice Imperial Mark as well as its

source Moet & Chandon. This has resulted in substantial and irreparable injury to the public and

Moet Hennessy.

30. Defendants' acts constitute trademark infringement in violation of Section 32 of

the Lanham Act, 15 U.S.C. § 1114.

31. Defendants' acts have caused, and will continue to cause, irreparable injury to

Moet Hennessy. Moet Hennessy has no adequate remedy at law and is thus damaged in an

amount not yet determined.

SECOND CLAIM FOR RELIEF

False Designations of Origin and False Descriptions and RepresentationsUnder Section 43(a) of the Lanham Act



33. Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), prohibits, inter alia, the

use by a person ofa false or misleading designation of origin or representation in connection

with the offering for sale and sale of goods which is likely to cause confusion, mistake or

deception as to the affiliation, connection, or association of such person with another person, or

which is likely to cause confusion, mistake, or deception as to the origin, source, sponsorship or

approval of such goods.

34. By making unauthorized use in interstate commerce of the Ice Imperial Mark and

Ice Imperial trade dress, Defendants have used false designations of origin and false

representations in connection with the manufacture, importation, distribution, advertising,

promotion, offering for sale and/or sale of goods that are likely to cause confusion, mistake, or

deception as to the origin of Defendants' ice sparkling wine and its sponsorship, association or

approval of Defendants' ice sparkling wine by the source of the Ice Imperial sparkling wine,

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

35. Defendants' wrongful acts will continue unless enjoined by this Court.

10


Moet Hennessy. Moet Hennessyhas no adequate remedy at law and is thus damaged in an


THIRD CLAIM FOR RELIEF

Deceptive Acts and Practices UnderSection 349 of New York General Business Law



38. By the acts described above, Defendants have willfully engaged in deceptive acts

or practices in the conduct ofbusiness and furnishing of goods in violation of Section 349 of the

New York General Business Law.




FOURTH CLAIM FOR RELIEF

Trademark Infringement Under Common Law



41. By the acts described above, Defendants have engaged in trademark infringement

in violation of the common law of the State of New York.




11

FIFTH CLAIM FOR RELIEF

Unfair Competition Under Common Law



44. By the acts described above, Defendants have intentionally engaged in unfair

competition in violation of the common law of the State of New York.




WHEREFORE, Moet Hennessy prays:

A. For judgment that Defendants GCF and La Maison:

(i) have infringed the Ice Imperial Mark in violation of Section 32(a)of the Lanham Act, 15 U.S.C. § 1114(a);

(ii) have infringed the Ice Imperial trade dress in violation of Section43(a) of the Lanham Act, 15 U.S.C. § 1125;

(iii) have engaged in deceptive acts and practices under Section 349 ofthe New York General Business Law;

(iv) have engaged in trademark infringement under the common law ofthe State ofNew York; and

(v) have engaged in unfair competition and false advertising inviolation of the common law of the State of New York.

B. That an injunction be issued enjoining and restraining Defendants GCF and La

Maison and each of their officers, agents, servants, employees, and attorneys and all those in

active concert or participation with either of them from:

(i) Using the Ice Imperial Mark or any other reproduction, counterfeit, copyor colorable imitation of the Ice Imperial Mark on or in connection withany goods or services;

12

(ii) Engaging in any course of conduct likely to cause confusion, deception ormistake, or to injure Moet Hennessy's business reputation, includingthrough the continued importation, distribution, sale, or offering for sale ofthe Depreville Ice product in its current packaging.

(iii) Using any simulation, reproduction, counterfeit, copy, or colorableimitation of the Ice Imperial Mark in connection with the promotion,advertisement, display, sale, offer for sale, manufacture, production,importation, circulation, or distribution of any products or their packaging;

(iv) Using any simulation, reproduction, counterfeit, copy, or colorableimitation of the Ice Imperial trade dress in connection with the promotion,advertisement, display, sale, offer for sale, manufacture, production,importation, circulation, or distribution ofany products or their packaging;

(v) Destroying, altering, removing, or otherwise dealing with the unauthorizedproducts or any books or records which contain any information relatingto the importation, manufacture, production, distribution, circulation, sale,marketing, offer for sale, advertising, promotion, rental, or display of allunauthorized products which infringe the Ice Imperial Mark and IceImperial trade dress; and

(vi) Effecting assignments or transfers, forming new entities or associations orutilizing any other device for the purpose of circumventing or otherwiseavoiding the prohibitions set forth in subparagraphs (i) through (v).

C. For the entry of an order directing Defendants GCF and La Maison to deliver up

for destruction to Moet Hennessy all products, advertisements, promotional materials, and

packaging in their possession or under their control bearing the Ice Imperial Mark or the Ice

Imperial trade dress, or any simulation, reproduction, counterfeit, copy or colorable imitation

thereof, and all plates, molds, matrices and other means of production of same pursuant to 15

U.S.C.§ 1118.

D. For the entry of an order directing such other relief as the Court may deem

appropriate to prevent the trade and public from deriving any erroneous impression that

Defendants GCF and La Maison, or any products or associated packaging manufactured,

imported, distributed, advertised, promoted, offered for sale, sold, or otherwise put out by

13

Defendants GCF and La Maison, are authorized by Moet Hennessy or related in any way to

Moet Hennessy's products or to Moet Hennessy.

E. For an assessmentof (a) damages sufferedby Moet Hennessy, trebled, (b) all

profits that Defendants GCF and La Maison have derived while using copies or infringements of

the Ice Imperial Mark and Ice Imperial trade dress, trebled (c) costs andattorneys' fees to the full

extent provided forby Section 35 of the Lanham Act, 15 U.S.C. § 1117; (d) profits, damages

and fees, to the full extent available, pursuant to Sections 349 of the New York General Business

Law, and (e) punitive damages to the full extent available under the law.

F. For costs of suit and for such other and further relief as the Court shall deem

appropriate.

Date: October 2, 2014 By:

14

J^tytO*Michael J. Allan

William G. Pecau

Evan Glassman

STEPTOE & JOHNSON LLP

1114 Avenue of the Americas

(212) 506-3900(212) [email protected]@[email protected]

^ite* frtatt* of anrer,v,w* Wnitsto States patentanb draoemarb #fftce ^*/

Reg. No. 3,916,001

Int. CI.: 33

TRADEMARK

PRINCIPAL REGISTER

x

c

''.'SKS*

MOET HENNESSY USA, INC. (DELAWARECORPORATION)85 IOTH AVENUE

Registered Feb. 8, 2011 newyork,ny 10011

Director of the United States latent and Irudemark Office

FOR: SPARKLING WINES, CHAMPAGNE WTNES, IN CLASS 33 (U.S. CLS. 47 AND 49).

FIRST USE 5-1-2010; IN COMMERCE 6-1-2010.

OWNER OF U.S. REG. NOS. 854,800, 2,124,249 AND OTHERS.

THE COLOR(S) WHITE, GOLD, SILVER ANDBLACK IS/ARECLAIMED ASA FEATUREOF THE MARK.

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "THE SHAPE OF THE BOTTLE,EPERNAY FRANCE AND 1743", APART FROM THE MARK AS SHOWN.

THE MARK CONSISTS OF A THREE-DIMENSIONAL BOTTLE DESIGN. THE BOTTLE ISWHITE. THERE IS A SILVER DIAMOND PATTERN AT THE BASF. OF THE BOTTLE. THESILVER DIAMONDS BECOME INCREASINGLY SMALLERAS THEY GO UP THE BOTTLE,

TURNING INTO SILVER DOTS AND GRADUALLY FADING INTO SOLID WHITE. THEFOIL ON THE TOP OF THE BOTTLE IS WHITE WITH AN EMBOSSED DIAMOND-LIKE

PATTERN. THE WORD "MOET" APPEARS VERTICALLY IN GOLD ON THE NECK OF THEBOTTLE. ABOVE THE WORD "MOET", THERE IS A GOLD STAR. UNDERNEATH THEWORD "MOET", THERE IS A RIBBON DESIGN IN BLACK WITH GOLD TRIM AROUNDTHE NECK OF THE BOTTLE. WHERE THE RIBBON CROSSES, THERE IS A CIRCULARGOLD SEAL FEATURING THE WORDS "MOET & CHANDON EPERNAY FRANCE", A

STYLIZED CROWNDESIGN, AND" 1743",ALL IN BLACK.ATTHE BASE OF THE BOTTLE,THERE IS A RECTANGULAR WHITE LABEL WITH THE WORDS "MOET & CHANDONICE IMPERIAL" IN BLACK IN THE CENTER. ABOVE THE WORDS "MOET & CHANDON

ICE IMPERIAL" ON THE LABEL IS A GOLD CROWN DESIGN, AND UNDERNEATH THEWORDS IS A GOLD STAR. THERE IS A THIN GOLD BAND AT THE TOP OF THE BOTTLE

LABEL,AND THERE ISA THICK GOLD BANDATTHE BOTTOM OF THE BOTTLELABEL.

SER. NO. 77-942,661, FILED 2-23-2010.

MATTHEW KLINE, EXAMINING ATTORNEY

moet hennesey v. grands chais de france - ice imperial trade dress.pdf

Documents

civil statute

prisoner civil rights

civil docket sheet

civil cover sheet

civil rightsnonprisoner

t civil covihfl

nthcr368 asbestos personal

f property