flying chef trademark complaint.pdf

8/11/2019 Flying Chef trademark complaint.pdf

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M ichael A. Leone, Esq. (SBN 151276)

SELTZER CAPLAN M cMAHON VITEK

A Law Corporation

750 B Street, 2100 Sym phony Tow ers

San D iego, California 92101-8177

Telephone: 619) 685-3071

Facsimile: 619) 685-3100

Attorneys fo r Plaintiff,

THE FLY ING CHE F LLC, an Alaska

Limited Liability Co mpan y

UNITED ST TES DISTRICT COURT

SOUTHERN DISTRICT OF C LIFORNI

THE FLY ING CH EF LLC, an Alaska

ASE NO.

Limited Liability Com pany,

COMPLAINT FOR TRADEMARK

INFRINGEM ENT [15 U .S.C. 1114,

ET SEQ.]; UNFAIR COM PETITION

[15 U.S.C. 1125(a)]; VIOLATION OF

CALIFORNIA UNFAIR BUSINESS

PRACTICES ACT [CAL. BUS. &

PROF. CODE 17200]; VIOLA TION

OF CALIFORNIA UN FAIR BUSINESS

PRACTICE ACT FALSE

ADV ERTISING [CAL. BUS. & PROF.

COD E 17500]

DEMAN D FOR JURY TRIAL

Plaintiff, THE FLYING CHEF LLC, an Alaska Limited Liability Company

( TFC ), alleges as follows:

P RTIES

1.

laintiff TFC, is an Alaska Limited Liability Company, and is engaged in

interstate commerce through the conduct of its business of producing cooking videos,

cooking instruction, and sale of related products and services to customers located

throughout the U nited States.

COMPLAINT FOR TRADEMARK INFRINGEMENT

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Plaintiff,

v.

GEO FFREY COLE , an individual, and

DO ES 1-10, inclusive,

Defendants.

'14CV2373 KSCH

Case 3:14-cv-02373-H-KSC Document 1 Filed 10/07/14 Page 1 of 12


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2.

Defendant GEOFFREY COLE ( COLE ), is an individual residing in San

Diego C ounty, California, and is engaged in interstate com merce through the conduct of

his business, which uses the name Geoff The Flying Chef' and/or The Flying Chef'

in visual and audio formats ( the Infringing Conduct ) in connection with cooking

videos and advertisement of private chef and cooking services on multiple social media

platforms, including, but not limited to, YouTube, Vimeo, Twitter, Instagram, Yelp,

Google+, Facebook, and other similar or related internet-based media platforms.

3.

Upon information and belief, Defendant DOES 1 through 10, are persons

or entities, identity and form unknown, who are agents, employees, alter egos, or

entities otherwise owned or controlled by COLE, that have committed, aided, abetted,

conspired with, or otherwise participated in the wrongful acts alleged herein, in a

manner rendering them liable for COLE s wrongful conduct as alleged herein, and/or in

a manner rendering CO LE liable for Defendant DO ES 1 through 10 s wrongful conduct.

JURISDICTION ND VENUE

4.

This court has original jurisdiction pursuant to 28 U .S.C. 1338(a) because

some of the claims alleged herein arise under 15 U.S.C. 1114, et seq., and 15 U.S.C,

1125 et seq., as amended.

5.

This court also has original jurisdiction pursuant to 28 U.S.C. 1331,

because the state law claims alleged herein under California Business & Professions

Code 17200 and 17500, necessarily raise issues under 15 U.S.C. 1114 et seq. and

1125 et seq., that are actually disputed by the parties, implicate a substantial federal

interest, and the exercise of federal jurisdiction will not disturb the balance of federal

and state judicial responsibilities.

6.

This court has personal jurisdiction over COLE because: (a) he resides in

San Diego County, California; and (b) he maintains an active internet-based social

media presence through which he commits the Infringing Conduct, and solicits

California residents to purchase and take delivery of his goods and services in

competition with TF C.

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7.

Venue is proper because COLE resides in San Diego County, California,

and com mitted the wrongful acts alleged herein in San D iego County, California.

ALLEGATIONS COMM ON TO ALL CLAIMS

8.

TFC is the owner of: (a) United States Registered Trademark No.

4,137,256,

THE FLYING CHEF,

issued May 1, 2012; (b) United States Registered

Trademark No. 4,422,466, 'THE FLYING CHEF,

issued October 22, 2013; and, (c)

United States Registered Trademark No. 4,377,413,

THE FLYING CHEF and

Design,

issued October 22,

N

013

collectively: the

o

Trademarks ).

igingChef

TFC has been using the Trademarks in interstate commerce in connection with its

business of producing and distributing co oking videos, instruction, and related produ cts

and services, since at least as early as 2008. TFC primarily advertises, distributes and

sells its products and services via the interne.

9.

TFC has invested substantial time, money, labor, professional expertise,

and other assets in the development, production and distribution of cooking videos,

instruction, and related products and services. The Trademarks are fundamental to the

goodw ill and reputation of the products and services sold by TFC.

10.

COLE has used the names The Flying Chef' and/or Geoff The Flying

Che' in visual and/or audio formats in connection with cooking videos and

advertisement of private chef services on internet-based social media websites,

including, but not limited to YouTube, Vimeo, Twitter, Instagram, Yelp, Google+,

Facebook, and other similar or related internet-based media platforms ( Social Media

Platforms ). COLE first committed the Infringing Conduct after TFC's Trademarks

were first used in interstate commerce, and TFC is informed and believes that COLE

first committed the Infringing Conduct after TFC was issued its Certificate of

Registration for the Trademarks.

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11.

TFC s successful development of the Trademarks has resulted in

consumers associating the Trademarks with TFC in the field of cooking instruction

videos and related products and services.

12.

COLE s Infringing Conduct in the promotion of his products and services

has caused, and will cause in the future, a substantial likelihood of confusion among

consumers regarding the origin, nature, quality, and value, of TFC s products and

services that are produced, distributed and sold under the Trademarks, thereby

damag ing the Trademarks and dim inishing the value of TFC 's brand.

13.

TFC has sent COLE multiple cease-and-desist letters demanding that

COLE immediately cease all Infringing Conduct, and remove all infringing material

from all Social Media Platforms on w hich Cole has published it.

14.

COLE has never responded to TFC s cease-and-desist letters, but has

published on Social M edia Platforms his intent to continue the Infringing Conduct.

FIRST CLAIM FOR VIOLATION OF THE C OPYRIGHT ACT, 15 U.S.C.

41114

et seq.

Against MI Defendan ts)

15.

TFC incorporates each and every allegation contained in paragraphs 1

through 14 as though fully set forth herein.

16.

TFC is the present owner of the Trademarks.

17.

COLE has infringed on TFC s Trademarks by publishing cooking videos

and related goods and services on Social Media Platforms under the nam es The Flying

Chef' and/or Geoff The Flying Chef' in visual and/or audio formats, thereby creating a

substantial likelihood of confusion regarding the origin, nature, quality, and value, of

TFC s products and services that are produced, distributed and sold under the

Trademarks, which conduct has damaged the Trademarks and diminished the value of

TFC s brand.

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18.

TFC has demanded that COLE cease all Infringing Co nduct directed at the

TFC Trademarks, and COLE has refused to do so. COLE is continuing to engage in

activities constituting infringement of the T FC Trademarks.

19.

COLE s infringement of TFC s Trademarks has caused, and is continuing

to cause, TFC to suffer damages including, but not limited to, statutory damages and

penalties, loss of revenue, loss of good w ill, and attorney s fees incurred to stop CO LE s

infringing activities.

20.

COLE s Infringing Conduct is ongoing and unless enjoined by this court

will cause TFC to suffer irreparable injury in the form of, among other things, loss of

good w ill and injury to its reputation in the relevant m arket.

21.

TFC is entitled to an award of statutory damages and penalties, actual

damages caused by COLE s infringement of the TFC Trademarks, disgorgement of

COLE s profit derived from his infringement of the TFC Trademarks, and an award of

attorney s fees and costs, all in an am ount to be proven at trial.

22.

TFC is entitled to an order: (a) preliminarily enjoining COLE s ongoing

infringement of the TFC Trademarks; (b) permanently enjoining COLE s infringement

of the TFC Tradem arks; (c) requiring removal of all infringing materials from all Social

Media Platforms; (d) requiring the impounding all infringing materials published or

disseminated by COLE; (e) requiring the destruction of all infringing materials

published or disseminated by COLE; and, (f) requiring an accounting of all monies

derived from infringement of TF C s Trademarks.

SECOND C LAIM FOR VIOLATION OF THE LANHAM ACT, 15 U.S.C.

41125 0

Against All Defendants)

23.

TFC incorporates each and every allegation contained in paragraphs 1

through 22 as though fully set forth herein

24.

TFC and COLE compete for business in the field of cooking videos and

instruction and related products and services.

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25.

COLE s Infringing Conduct, which incorporates and uses TFC s

Trademarks, in con nection with products and services that are in direct competition with

TFC s products and services, is intended to exploit confusion among consumers in the

relevant marketplace, and improperly benefit from the reputation and goodw ill that TFC

has expended time, m oney and other assets to develop in the Tradem arks.

26.

COLE s Infringing Conduct therefore constitutes false designation of

origin, false or misleading descriptions of fact, and false or misleading representations

of fact which are each likely to cause confusion or mistake, or deceive as to the

affiliation or connection of C OLE s produ cts and services with TF C s Tradem arks.

27.

TFC is likely to be damaged by COLE s acts as alleged herein because,

among other things, such acts are likely to cause confusion regarding the quality and

characteristics of COLE s products and services in competition with TFC s products

and services, loss of TFC s reputation in the relevant market, loss of TFC s good will,

and loss of revenue.

28.

TFC has demanded that COLE cease all false and misleading activities

regarding his products, and CO LE has refused to do so.

29.

COLE s false and misleading conduct is ongoing and unless enjoined by

this Court will cause TFC to suffer irreparable injury in the form of, among other things,

loss of good w ill and injury to its reputation in the relevant market.

30.

TFC is entitled to an award of actual damages caused by COLE s

infringing conduct, disgorgement of COLE s profits derived from his misconduct, and

an aw ard of attorney s fees and costs, all in an amou nt to be prove n at trial.

31.


misrepresentation of the nature, qualities and/or characteristics of his products and

services; (b) permanently enjoining COLE s misrepresentation of the nature, qualities

and/or characteristics of his products and services; (c) requiring removal of all

infringing m aterial from all Social Media Platforms; (d) requiring the destruction of all

false and misleading materials published or disseminated by COLE; and, (e) requiring

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an accounting of all monies derived from COLE's misrepresentations regarding the

nature, qualities and/or characteristics of his products and services.

THIRD CLAIM FOR VIOLATION OF CALIFORNIA BUSINESS

PROFE SSIONS CODE 17200

(Against All Defendants)

32. TFC incorporates each and every allegation contained in paragraphs 1


33.

By committing the Infringing Conduct, which incorporates and

appropriates all of the distinctive elem ents of TFC s Tradem arks, COLE misrepresents,

among other things, that the products and services offered through his infringing

conduct are associated with, and/or are beneficiaries of the goodwill and favorable

reputation in the market associated with TFC s Tradem arks.

34.

COLE is therefore engaging in an unfair business practice which

significantly threatens or harms competition in violation of California Business

Professions Code 17200 by, among other things, misrepresenting the nature and

quality of his products and services and thereby misappropriating the competitive

advantage conferred on products and services associated with TFC's Trademarks, all

without expend ing the time, expen se, and other assets which his competitors, including

TFC, have expended, to actually obtain the goodwill and favorable reputation in the

relevant market associated with the products and services marketed under TFC's

Trademarks.

35.


regarding his products, and remediate the injuries caused to date, and COL E has refused

to do so.

36.

COLE's false and misleading conduct is ongoing and unless enjoined by


loss of good will, injury to its reputation in the relevant market, and loss of profits.

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37.





infringing material from all Social M edia Platforms; (d) requiring the destruction o f all

false and misleading materials published or disseminated by COLE; and, (e) requiring

an accounting of all profit derived from COLE s misrepresentations regarding the

nature, qualities and/or characteristics of his products and services.

38.

TFC is entitled to an order that COLE disgorge all monies derived from his

unfair and fraudulent business practices.

FOURTH C LAIM FOR VIOLATION OF C ALIFORNIA BUSINESS

PROFE SSIONS CODE 17500

(Against All Defendan ts)

39. TFC incorporates each and every allegation contained in paragraphs 1


40.

By p ublishing his products and services on Social Media Platforms, COL E

intends to sell products and services to the pu blic.

41.

By committing the Infringing Conduct, which name incorporates and

appropriates all of the distinctive elements of T FC's Tradem arks, COL E misrepresents,

among other things, that the products and services offered through his infringing

conduct are associated with, and/or are beneficiaries of the goodwill and favorable

reputation in the market associated with TF C's Tradem arks.

42.

CO LE is therefore engaging in deceptive, false and misleading advertising

in violation of California Business Professions Code 17500 by, among other things,

misrepresenting that the products and services he offers are beneficiaries of the goodw ill

and favorable reputation in the market associated with TF C's Tradem arks.

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43.


regarding his products, and remediate the injuries caused to date, and COLE has refused

to do so.

44.

COLE s false and misleading conduct is ongoing and unless enjoined by


loss of good will, injury to its reputation in the relevant marke t, and loss of profits.

45.





infringing material from all Social M edia Platforms; d) requiring destruction of all false

and misleading materials published or disseminated by COLE; and, (e) requiring an

accounting of all profit derived from COLE s misrepresentations regarding the nature,

qualities and/or characteristics of his products and services.

46.

TFC is entitled to an order that CO LE d isgorge all monies derived from his

unfair and fraudulent business practices.

PR YER

W HER EFOR E, TFC prays for relief as follows:

1.

n the First Claim for V iolation of the Cop yright Act:

(a)

a preliminarily injunction enjoining COLE s ongoing infringement of

the TFC Trademarks;

(b)

a permanent injunction enjoining COLE s infringement of the TFC

Trademarks;

(c)

an order directing COL E to identify all persons and/or entities to whom ,

or through which, he has published or distributed infringing materials;

(d)

an order to remove all infringing material from all Social Media

Platforms;

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(e)

an order to destroy all infringing m aterials published or disseminated by

COLE;

(f)

an accounting of all monies derived from COLE s infringement of the

TFC Trademarks;

(g)

disgorgement of all profits COLE derived from his infringing activities;

(h)

an award o f statutory damag es, penalties, and/or actual dama ges caused

by CO LE s infringing activities;

(i)

an aw ard of attorney s fees and costs;

(j)

such other relief as the court deems just and reasonable.

2.

n the Second C laim for V iolation of the Lanham Act:

(a)

a preliminarily injunction enjoining COLE s ongoing

misrepresentations regarding the nature, qualities and/or characteristics of his products

and services;

(b)

a permanent injunction enjoining COLE s ongoing misrepresentations

regarding the nature, qualities and/or characteristics of his products and services;

(c)

an order to remove from all Social Media Platforms all materials

published or disseminated by C OLE containing m isrepresentations regarding the nature,

qualities and/or characteristics of his products and services;

(d)

an order to destroy all materials published or disseminated by COLE

containing misrepresentations regarding the nature, qualities and/or characteristics of his

products and services ;

(e)

an accounting of all monies derived from COLE s misrepresentations


(1) disgorgement of all profits COLE derived from his misrepresentations


(g) an award of statutory damage s, penalties, and/or actual damag es caused

by COLE s misrepresentations regarding the nature, qualities and/or characteristics of

his products and services;

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(h)an aw ard of attorney s fees and costs;

(i) such other relief as the court deems just and reasonable.

3.

n the Third Claim for Violation of California Business Professions

Code 17200:

(a)

a preliminarily injunction enjoining COLE's ongoing


and services;

(b) a permanent injunction enjoining COLE's ongoing misrepresentations


(c) an order to remove from all Social Media Platforms all materials

published or disseminated by COLE containing misrepresentations regarding the nature,

qualities and/or characteristics of his p roducts and services;

(d)


containing m isrepresentations regarding the nature, qualities and/or characteristics of his

products and services;

(e)

an accounting of all monies derived from COLE's misrepresentations

regarding the nature, qu alities and/or characteristics of his products and services;

(f)

disgorgement of all profits COLE derived from his misrepresentations

regarding the n ature, qualities and/or characteristics of his p roducts and services;

(g)

such other relief as the court deem s just and reasonable.

4.

n the Fourth Claim for Violation of California Business Professions

Code 17500:

(a)

a preliminarily injunction enjoining COLE's advertising containing


and services;

(b)

a permanent injunction enjoining COLE's advertising containing


and services;

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(c)

an order to remove from all Social Media Platforms all materials

published or disseminated by C OLE containing m isrepresentations regarding the nature

qualities and/or characteristics of his products and services;

(d)


containing misrepresentations regarding the nature qualities and/or characteristics of his

products and services;

(e)

an accounting of all monies derived from COLE s misrepresentations

regarding the nature qualities and/or characteristics of his produc ts and services;

(f)

disgorgement of all profits COLE derived from his misrepresentations

regarding the nature qualities and/or characteristics of his produc ts and services;

(g)

such other relief as the court deems just and reasonable.

TFC requests a jury trial.

Dated: October 6, 2014

ELTZER CAPLAN M CMAHON VITEK

A Law Corporation

By:

s/

Michael A. Leone Esq.

Attorneys for Plaintiff

THE FLYING CH EF LLC an Alaska Limited

Liability C ompan y

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