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FILED: CORTLAND COUNTY CLERK 05/13/2015 02:55 PM INDEX NO. EF15-296
NYSCEF DOC. NO. 1 RECEIVED NYSCEF: 05/13/2015
STATE OF NEW YORK
SUPREME COURT COUNTY OF CORTLAND Index No.:
SUMMONS
COFFEE MANIA, LLC,
Plaintiff designates Cortland
Plaintiff, County as the place of trial
v.
The basis of venue is:
COFFEEMANIA BRYANT PARK, LLC. f/k/a Plaintiff's residence and place
COFFEEMANIA CHELSEA, LLC, of business
Defendant. Plaintiff resides at:
160 Port Watson St.
Cortland, NY 13045
TO THE ABOVE-NAMED DEFENDANT(S):
YOU ARE HEREBY SUMMONED and required to serve upon plaintiff's attorney an
answer to the Complaint in this action within twenty (20) days after the service of this Summons,
exclusive of the day of service, or within thirty (30) days after service is complete if this Summons is
not personally delivered to you within the State of New York. In case of your failure to answer,
judgment will be taken against you by default for the relief demanded in the Complaint.
The basis of the venue designated is Plaintiff's residence within the County of Cortland.
Dated: May 13, 2015
HARRIS BEACH, PLLC
BY:
James Muldoon q.
Brendan M. Palfreyman, Esq.
Attorneys for Plaintiff
Office & P.O. Address
333 West Washington Street, Suite 200
Syracuse, NY 13202
Tel.: (315) 423-7100
DEFENDANT ADDRESS:
COFFEEMANIA BRYANT PARK, LLC f/k/a
COFEEEMANIA CHELSEA, LLC
5 Bryant Park (1065 Avenue of the Americas)
New York, NY 10018
273513 2491047v6
STATE OF NEW YORK
SUPREME COURT COUNTY OF CORTLAND
COFFEE MANIA, LLC, COMPLAINT
Plaintiff, Index No.:
v.
COFFEEMANIA BRYANT-PARK, LLC. f/k/a
COFFEEMANIA CHELSEA, LLC,
Defendant.
Plaintiff Coffee Mania, LLC ("Plaintiff' or "Coffee Mania"), by its attorneys, Harris Beach
PLLC, complaining of the Defendant Coffeemania Bryant Park, LLC f/k/a Coffeemania Chelsea,
LLC ("Defendant" or "Coffeemania Bryant Park"), alleges as follows:
1. Coffee Mania is a New York limited liability company with a principal place of
business at 160 Port Watson Street, Cortland, NY 13405.
2. Coffee Mania operates retail coffee store locations at 160 Port Watson Street,
Cortland, NY, 13045, and 1142 State Route 222, Cortland, NY 13045, and 95 Clinton Street,
Homer, NY 13077. Coffee Mania operates a coffee roasting facility at 3 South Avenue, Cortland,
NY 13045 13224. Coffee Mania sells coffee grounds and roasted coffee beans throughout the
United States via its Internet website and to distributors, restaurants and institutions.
3. Coffee Mania owns trademarks, including for the name "Coffee Mania" when used in
connection with sale of coffee, coffee grounds, roasted coffee beans and coffee shop services, and in
connection with the roasting of coffee beans for wholesale.
4. Upon information and belief, Defendant Coffeemania Bryant Park is a New York
limited liability company with an address of Department of State service of process address of C T
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Corporation, 111 8th Avenue, New York, NY, 10011, and an intended principal place of business at
5 Bryant Park (1065 Avenue of the Americas), New York, NY 10018.
5. Upon information and belief, Defendant Coffeemania Bryant Park was previously
known as Coffeemania Chelsea, LLC.
6. Upon information and belief, Defendant Coffeemania Bryant Park intends to operate
a retail coffee store at 5 Bryant Park (1065 Avenue of the Americas), New York, NY 10018, under
the mark "Coffee Mania."
7. Upon information and belief, Defendant Coffeemania Bryant Park intends to sell
coffee grounds and roasted coffee beans from at least its retail location at 5 Bryant Park (1065
Avenue of the Americas, New York, NY 10018, bearing the mark "Coffee Mania."
Nature of the Action
8. In this action Coffee Mania seeks a preliminary and permanent injunction preventing
Defendant from using a name confusingly similar to trademarks owned by Coffee Mania. Coffee
Mania also seeks declaratory judgment that Defendant's intended use of the name
"COFFEEMANIA" will result in, inter alia, trademark infringement and unfair competition.
Plaintiffs Coffee Mania Trademark
9. Coffee Mania has duly registered its trademark rights with the New York Secretary of
State and has been issued Reg. No. R32443 for the mark COFFEE MANIA in connection with
"Retail and wholesale beverages made from coffee, coffee-based beverages containing milk, coffee
beans" in Class 30. A copy of the registration is attached hereto as part of Exhibit A.
10. Coffee Mania has duly registered its service mark rights with the New York Secretary
of State and has been issued Reg. No. 522989 for the mark COFFEE MANIA in connection with
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"Coffee grounds and coffee roasting and processing" in Class 40 and "Coffee shop services" in Class
42. A copy of the registration is attached hereto as part of Exhibit A.
11. In 1999, Craig Brooks and Michelle Brooks, now the owners of Plaintiff Coffee
Mania, moved from Washington State to Cortland, NY to be closer to family.
12. Craig and Michelle Brooks purchased a building at the corner of Port Watson and
Pomeroy in Cortland and, after months of hard work, opened the first COFFEE MANIA location in
December of 1999.
13. Plaintiff Coffee Mania registered in New York as a domestic limited liability
company in 1999.
14. In December 2003, Coffee Mania opened a second COFFEE MANIA location in
Cortland, NY.
15. In 2006, Coffee Mania purchased a building on South Avenue in Cortland, NY that is
now used as Coffee Mania's roasting facility where Coffee Mania roasts coffee beans that are sold
wholesale and retail and shipped throughout the United States.
16. In January 2009, Coffee Mania opened its Origins by Coffee Mania location in
Homer, NY where it sells COFFEE MANIA branded coffee products.
17. At both of the Coffee Mania locations and the Origins by Coffee Mania location,
Coffee Mania provides coffee shop services and sells COFFEE MANIA branded coffee and roasted
coffee beans.
18. In February 2014, Coffee Mania's coffee was featured in a dinner service at the
renowned James Beard House in New York, NY.
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19. Coffee Mania also maintains a robust website at www.cnycoffee.com from which
people all over the country can and have purchased dozens of styles of COFFEE MANIA branded
roasted coffee beans by the pound or in greater quantities.
20. Coffee Mania has sold its roasted coffee via its website to customers in at least thirty-
three states including Arizona, California, Colorado, Connecticut, Delaware, Florida, Georgia,
Hawaii, Illinois, Indiana, Kentucky, Louisiana, Massachusetts, Maryland, Maine, Michigan,
Minnesota, Montana, North Carolina, New Hampshire, New Jersey, Nevada, New York, Ohio,
Oklahoma, Pennsylvania, Tennessee, Texas, Utah, Virginia, Washington, and Wisconsin, as well as
in the District of Columbia.
21. Coffee Mania has also sold COFFEE MANIA branded roasted coffee to consumers in
New York City and, more specifically, in Manhattan.
22. Via the above referenced sales, Coffee Mania has established strong common law
trademark rights in the mark COFFEE MANIA when used in connection with coffee shop services
and roasted coffee bean sales.
23. Coffee Mania plans to further expand its business into even more states and
Defendant's use of a confusingly similar name would be a hindrance to these plans and result in
consumer confusion.
24. Coffee Mania has common law trademark and service mark rights to the mark
COFFEE MANIA in New York State.
25. Coffee Mania has common law trademark rights to the mark COFFEE MANIA in
New York City.
26. Coffee Mania has invested substantial sums in advertising and promoting its
COFFEE MANIA trademark.
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27. Coffee Mania's COFFEE MANIA trademark is inherently distinctive, has developed
secondary meaning over time, is valuable, and is the source of substantial goodwill in the
marketplace.
28. Coffee Mania's COFFEE MANIA trademark has become, through widespread
acceptance and recognition, assets of substantial value as a symbol of Coffee Mania's goods and
services.
Defendant's Infringing Actions
29. Upon information and belief, Defendant Coffeemania Bryant Park has leased a space
at 5 Bryant Park in New York, NY at which it will open a coffee shop under the mark
COFFEEMANIA.
30. Upon information and belief, Coffeemania Bryant Park intends to sell coffee, coffee
grounds and roasted coffee beans at the 5 Bryant Park location under the mark COFFEEMANIA.
31. Upon information and belief, Coffeemania Bryant Park's location for a coffee shop
under the mark COFFEEMANIA at 5 Bryant Park is not yet open for business.
32. Upon information and belief, Coffeemania Bryant Park's location at 5 Bryant Park is
scheduled to open sometime during the second or third quarter of 2015.
33. Upon information and belief, Coffeemania Bryant Park imminently plans to open a
coffee shop in New York City under the mark COFFEEMANIA that will sell coffee, coffee grounds
and roasted coffee beans under the mark COFFEEMANIA.
34. The terms COFFEEMANIA and COFFEE MANIA are identical save for a space
between the words "coffee" and "mania" in the latter term.
35. The name COFFEEMANIA, which Defendant plans to use in commerce, is
confusingly similar to Plaintiff's COFFEE MANIA trademark and service mark.
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36. Upon information and belief, Defendant intends to use the COFFEEMANIA mark in
connection with sales of coffee.
37. Upon information and belief, Defendant intends to use the COFFEEMANIA mark in
connection with sales of coffee grounds and roasted coffee beans.
38. Upon information and belief, Defendant intends to use the COFFEEMANIA mark in
connection with coffee shop services.
39. Plaintiff Coffee Mania uses the COFFEE MANIA mark in connection with sales of
coffee.
40. Plaintiff Coffee Mania uses the COFFEE MANIA mark in connection with sales of
roasted coffee beans.
41. Plaintiff Coffee Mania uses the COFFEE MANIA mark in connection with coffee
shop services.
42. Plaintiff Coffee Mania and Defendant use or will use, respectively, the COFFEE
MANIA and COFFEEMANIA marks for at least some of the same good and/or services.
43. Defe'ndant is not associated with Plaintiff Coffee Mania and does not have Coffee
Mania's permission to use Coffee Mania's marks or any mark confusingly similar to Coffee Mania's
marks.
44. Despite widespread association of the trademarks COFFEE MANIA with Plaintiff,
Defendant has knowingly and/or willfully adopted a confusingly similar mark.
45. Upon information and belief, Defendant has advertised and/or held out its goods and
services, including coffee shop services and the offering for sale of coffee and/or roasted coffee
beans, using a mark confusingly similar to Plaintiff Coffee Mania's trademark.
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46. Plaintiff has expressly requested that Defendant cease and desist from the above
referenced infringing conduct, but Defendant would not agree to refrain from engaging in the
infringing conduct.
47. The goodwill and reputation for quality goods and service associated with Plaintiff's
trademarks are being threatened by Defendant's actions.
48. Defendant's use of a mark that is confusingly similar to Plaintiff's mark has and/or
will lead, and is likely to lead, the public to conclude that Defendant's goods and services are
associated with Plaintiff, which will damage Plaintiff and the public.
49. A bona fide justiciable and substantial controversy pursuant to N.Y. C.P.L.R. § 3001
exists because Defendant imminently plans to open a coffee shop under the confusingly similar
name COFFEEMANIA at 5 Bryant Park, New York, NY 10018 that will infringe Plaintiff's
trademark and cause harm to and/or dilute Plaintiff's business and reputation.
50. Plaintiff and Defendant have direct adverse legal interests in this matter because
Plaintiff wishes to prevent Defendant from using the COFFEEMANIA mark.
51. Declaratory judgment would serve the useful purpose of settling the legal issue of
whether Defendant's use of the COFFEEMANIA would constitute trademark infringement,
trademark dilution, or unfair competition.
52. Declaratory judgment would finalize this controversy by preventing Plaintiff from
using the COFFEEMANIA mark.
AS A FIRST CAUSE OF ACTION
FOR UNFAIR COMPETITION UNDER 15 U.S.C. § 1125(a)
53. Plaintiff repeats and re-alleges paragraphs 1 through 52 of the Complaint with the
same full force and effect as if fully set forth herein.
54. Defendant's use and/or intended use of the name COFFEEMANIA violates Section
43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
55. Defendant's use and/or intended use of the name COFFEEMANIA constitutes a false
designation of origin or false representation that the wrongfully and falsely designates Defendant's
goods and services as originating from or connected with Plaintiff, and constitutes the use of false
descriptions or representations in interstate commerce.
56. As a direct and proximate result of Defendant's wrongful conduct, Plaintiff has
suffered, or will suffer, loss of income, revenues, and goodwill.
57. As a direct and proximate result of Defendant's wrongful conduct, Defendant has
acquired, or will acquire, income, profits, and goodwill.
58. Without injunctive relief, Plaintiff will suffer irreparable injury for which Plaintiff has
no adequate remedy at law.
59. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary
and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be
proven at trial, and recovery of reasonable attorneys' fees and costs.
60. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute
unfair competition under 15 U.S.C. § 1125(a).
AS A SECOND CAUSE OF ACTION
FOR COMMON LAW INFRINGEMENT
61. Plaintiff repeats and re-alleges paragraphs 1 through 60 of the Complaint with the
same full force and effect as if fully set forth herein.
62. Defendant's use and/or intended use of the name COFFEEMANIA constitutes
trademark infringement in violation of the common law of the State of New York.
63. Defendant does not have the consent of Plaintiff to use the COFFEEMANIA mark.
64. Defendant's use and/or intended use of the mark COFFEEMANIA in connection with
goods and services is likely to cause confusion or mistake or to deceive as to the source of origin of
such goods or services.
65. As a direct and proximate result of Defendant's trademark infringement, Plaintiff has
suffered, or will suffer, loss of income, revenues, and goodwill.
66. As a direct and proximate result of Defendant's trademark infringement, Defendant
has acquired, or will acquire, income, profits, and goodwill.
67. Upon information and belief, Defendant's actions have been conducted maliciously,
fraudulently, deliberately, and intentionally to inflict injury upon and divert sales from Plaintiff.
68. Defendant's acts of infringement have caused, or will cause, irreparable injury to
Plaintiff if Defendant is not enjoined by this Court from further violation of Plaintiff's rights.
69. Plaintiff has no adequate remedy at law.
70. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary
and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be
proven at trial, and recovery of reasonable attorneys' fees and costs.
71. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute
common law trademark infringement.
AS A THIRD CAUSE OF ACTION
FOR STATUTORY INFRINGEMENT
72. Plaintiff repeats and re-alleges paragraphs 1 through 71 of the Complaint with the
same full force and effect as if fully set forth herein.
73. Plaintiff has a New York State trademark registration for the trademark COFFEE
MANIA in connection with "Retail and wholesale beverages made from coffee, coffee-based
beverages containing milk, coffee beans."
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74. Plaintiff has a New York State service mark registration for the service mark
COFFEE MANIA in connection with "Coffee grounds and coffee roasting and processing" and
"Coffee shop services."
75. Defendant's use and/or intended use of the mark COFFEEMANIA constitutes
trademark infringement in violation of N.Y. General Business Law 360-k.
76. Defendant does not have the consent of Plaintiff to use the COFFEEMANIA mark.
77. Defendant's use and/or intended use of the mark COFFEEMANIA in connection with
goods and services is likely to cause confusion or mistake or to deceive as to the source of origin of
such goods or services.
78. As a direct and proximate result of Defendant's trademark infringement, Plaintiff has
suffered, or will suffer, loss of income, revenues, and goodwill.
79. As a direct and proximate result of Defendant's trademark infringement, Defendant
has acquired, or will acquire, income, profits, and goodwill.
80. Upon information and belief, Defendant's actions have been conducted maliciously,
fraudulently, deliberately, and intentionally to inflict injury upon and divert sales from Plaintiff.
81. Defendant's acts of infringement have caused, or will cause, irreparable injury to
Plaintiff if Defendant is not enjoined by this Court from further violation of Plaintiff's rights.
82. Plaintiff has no adequate remedy at law.
83. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary
and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be
proven at trial, and recovery of reasonable attorneys' fees and costs.
84. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute
statutory law trademark infringement.
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AS A FOURTH CAUSE OF ACTION
FOR TRADEMARK DILUTION UNDER NY GEN. BUS. LAW § 360-1
85. Plaintiff repeats and re-alleges paragraphs 1 through 84 of the Complaint with the
same full force and effect as if fully set forth herein.
86. Plaintiff has continuously promoted and used the trademark COFFEE MANIA in
commerce in New York, and said marks have thereby become famous and well-known symbols of
Plaintiff's goods and services.
87. Defendant's use of the name COFFEEMANIA violates New York General Business
Law § 360-1, in that such use erodes the public's exclusive identification of the famous trademark
COFFEE MANIA with Plaintiff, tarnishing and degrading the goodwill and reputation of Plaintiff
and its trademark, and by blurring the distinctiveness of, and decreasing the ability of said
trademarks to identify and distinguish Plaintiffs goods and services.
88. Defendant's use and/or intended use of the name COFFEMANIA after opening its
store will violate the common law of the State of New York, in that such use will erode the public's
exclusive identification of the famous trademark COFFEE MANIA with Plaintiff, tarnishing and
degrading the goodwill and reputation of Plaintiff and its trademark, and by blurring the
distinctiveness of, and decreasing the ability of said trademark to identify and distinguish Plaintiff's
goods and services.
89. Upon information and belief, Defendant's actions have been conducted maliciously,
fraudulently, deliberately, and intentionally to inflict injury upon and divert sales from Plaintiff.
90. As a direct and proximate result of Defendant's wrongful conduct, Plaintiff has
suffered, or will suffer, loss of income, revenues, and goodwill.
91. As a direct and proximate result of Defendant's wrongful conduct, Defendant has
acquired, or will acquire, income, profits, and goodwill.
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92. Without injunctive relief, Plaintiff has no way of preventing the continuing dilution of
its trademark.
93. Without injunctive relief, Plaintiff will suffer irreparable injury for which Plaintiff has
no adequate remedy at law.
94. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary
and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be
proven at trial, and recovery of reasonable attorneys' fees and costs.
95. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute
Trademark Dilution under NY GEN. BUS. LAW § 360-1.
AS A FIFTH CAUSE OF ACTION
FOR UNFAIR COMPETITION
96. Plaintiff repeats and re-alleges paragraphs 1 through 95 of the Complaint with the
same full force and effect as if fully set forth herein.
97. Defendant's bad faith misappropriation of Plaintiff's trademark, in particular the use
of a confusingly similar mark in connection with goods and services similar to those offered by
Plaintiff, constitutes unfair business practices in violation of the common law of the State of New
York.
98. Upon information and belief, customers have and been or will be actually confused
and/or there is a strong likelihood of confusion as to the source of the goods and services at issue.
99. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary
and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be
proven at trial for diversion of sales, damage to goodwill, and/or loss of control over reputation, and
recovery of reasonable attorneys' fees and costs.
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100. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute
common law unfair competition.
AS A SIXTH CAUSE OF ACTION
FOR UNJUST ENRICHMENT
101. Plaintiff repeats and re-alleges paragraphs 1 through 100 of the Complaint with the
same full force and effect as if fully set forth herein.
102. By engaging in the conduct complained of herein, Defendant will, through its use of a
mark confusingly similar to Plaintiff's trademarks, induce consumers to purchase goods and services
from Defendants.
103. By engaging in the conduct complained of herein, Defendant has been, or will be,
unjustly enriched by its sale of coffee and roasted coffee beans and offering of coffee shop services
using a mark confusingly similar to Plaintiff's trademark.
104. As a proximate result of Defendant's unlawful, fraudulent, and unfair conduct,
Defendant will obtain revenues by which it will be unjustly enriched at Plaintiff's expense.
105. Under the circumstances alleged herein, it would be unfair and inequitable for
Defendant to retain income, profits, or goodwill it unjustly obtains at the expense of Plaintiff.
106. Accordingly, Plaintiff seeks an order establishing Defendant as constructive trustee of
any profits by which it is unjustly enriched, together with interest during the period when Defendant
retains such funds, and requiring Defendant to disgorge those funds to Plaintiff.
AS A SEVENTH CAUSE OF ACTION
FOR PERMANENT INJUNCTION
107. Plaintiff repeats and re-alleges paragraphs 1 through 106 of the Complaint with the
same full force and effect as if fully set forth herein.
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108. The foregoing conduct by Defendant constitutes and will continue to constitute clear
and deliberate violations of Plaintiff's rights to its trademark and service mark.
109. Plaintiff has no adequate remedy at law to protect its interest in its trademark and
service mark, which can only be addressed by the equitable remedy of a permanent injunction as
sought by Plaintiff in this action, because Plaintiff has exhausted all remedies short of permanently
enjoining Defendants from using a substantially similar mark.
110. Defendant's acts have caused and/or will cause immediate, substantial, and
irreparable harm to Plaintiff and have and/or will cause a strong likelihood of confusion, in that there
is a significant likelihood of the irreparable loss of control over the reputation of Plaintiff's valid
trademark and service mark.
111. Moreover, upon information and belief, any money judgment Plaintiff may obtain
against Defendant on this complaint will likely be ineffectual to compensate Plaintiff for it losses
should Defendant be permitted to continue to infringe Plaintiff's mark, among other things.
112. Upon information and belief, the balancing of the equities favors Plaintiff because
Plaintiff can and will suffer irreparable injury and loss of over the reputation of its marks in the
absence of an injunction, and such harm is greater than the harm which Defendant will suffer if the
injunction is granted.
113. As such, Plaintiff, Plaintiff, is entitled to and demands a permanent injunction
enjoining, restraining and prohibiting Defendant from:
a. Selling, trading, advertising, promoting, or marketing coffee, roasted coffee beans, and
coffee shop services using the name "COFFEEMANIA," any other name that includes
the phrase "COFFEEMANIA," and any other name confusingly similar to Plaintiff's
COFFEE MANIA trademark;
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b. Performing any acts or things calculated or likely to cause confusion or mistake in the
mind of the public or to lead consumers into the belief that products or services sold,
offered for sale, distributed, or transmitted by Defendant are authorized, sponsored,
licensed, endorsed, promoted, condoned or approved by Plaintiff, or are otherwise
affiliated with or connected to Plaintiff; and
c. Such other and further relief as the court may deem just and proper;
WHEREFORE, Plaintiff demands judgment against Defendant as follows:
(i) On the first, second, third, fourth, fifth and sixth causes of action, temporary and
permanent injunctions prohibiting Defendant from using the name
"COFFEEMANIA," any other name that includes the phrase
"COFFEEMANIA," and any other name confusingly similar to Plaintiff's
COFFEE MANIA trademark, and money damages in an amount to be
determined at trial, together with attorneys' fees and costs;
(ii) On the seventh cause of action, a permanent injunction enjoining, restraining and
prohibiting Defendant from:
a. Selling, trading, advertising, promoting, or marketing wine or liquor using
the name "COFFEEMANIA," any other name that includes the phrase
"COFFEEMANIA," and any other name confusingly similar to Plaintiff's
COFFEE MANIA trademark;
b. Performing any acts or things calculated or likely to cause confusion or
mistake in the mind of the public or to lead consumers into the belief that
products or services sold, offered for sale, distributed, or transmitted by
Defendant are authorized, sponsored, licensed, endorsed, promoted,
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condoned or approved by Plaintiff, or are otherwise affiliated with or
connected to Plaintiff; and
(iii) Such further relief as this Court deems just and proper.
Dated: May 13, 2015
Syracuse, New York
HARRIS, BEACH PLLC
BY:
James R. u do sq.
Brendan M. Palfreyman, Esq.
Attorneys for Plaintiff
333 West Washington Street, Suite 200
Syracuse, New York 13202
(315) 423-7100
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Preview
FILED: CORTLAND COUNTY CLERK 05/13/2015 02:55 PM INDEX NO. EF15-296 NYSCEF DOC. NO. 1 RECEIVED NYSCEF: 05/13/2015 STATE OF NEW YORK SUPREME COURT COUNTY OF CORTLAND Index No.: SUMMONS COFFEE MANIA, LLC, Plaintiff designates Cortland Plaintiff, County as the place of trial v. The basis of venue is: COFFEEMANIA BRYANT PARK, LLC. f/k/a Plaintiff's residence and place COFFEEMANIA CHELSEA, LLC, of business Defendant. Plaintiff resides at: 160 Port Watson St. Cortland, NY 13045 TO THE ABOVE-NAMED DEFENDANT(S): YOU ARE HEREBY SUMMONED and required to serve upon plaintiff's attorney an answer to the Complaint in this action within twenty (20) days after the service of this Summons, exclusive of the day of service, or within thirty (30) days after service is complete if this Summons is not personally delivered to you within the State of New York. In case of your failure to answer, judgment will be taken against you by default for the relief demanded in the Complaint. The basis of the venue designated is Plaintiff's residence within the County of Cortland. Dated: May 13, 2015 HARRIS BEACH, PLLC BY: James Muldoon q. Brendan M. Palfreyman, Esq. Attorneys for Plaintiff Office & P.O. Address 333 West Washington Street, Suite 200 Syracuse, NY 13202 Tel.: (315) 423-7100 DEFENDANT ADDRESS: COFFEEMANIA BRYANT PARK, LLC f/k/a COFEEEMANIA CHELSEA, LLC 5 Bryant Park (1065 Avenue of the Americas) New York, NY 10018 273513 2491047v6 STATE OF NEW YORK SUPREME COURT COUNTY OF CORTLAND COFFEE MANIA, LLC, COMPLAINT Plaintiff, Index No.: v. COFFEEMANIA BRYANT-PARK, LLC. f/k/a COFFEEMANIA CHELSEA, LLC, Defendant. Plaintiff Coffee Mania, LLC ("Plaintiff' or "Coffee Mania"), by its attorneys, Harris Beach PLLC, complaining of the Defendant Coffeemania Bryant Park, LLC f/k/a Coffeemania Chelsea, LLC ("Defendant" or "Coffeemania Bryant Park"), alleges as follows: 1. Coffee Mania is a New York limited liability company with a principal place of business at 160 Port Watson Street, Cortland, NY 13405. 2. Coffee Mania operates retail coffee store locations at 160 Port Watson Street, Cortland, NY, 13045, and 1142 State Route 222, Cortland, NY 13045, and 95 Clinton Street, Homer, NY 13077. Coffee Mania operates a coffee roasting facility at 3 South Avenue, Cortland, NY 13045 13224. Coffee Mania sells coffee grounds and roasted coffee beans throughout the United States via its Internet website and to distributors, restaurants and institutions. 3. Coffee Mania owns trademarks, including for the name "Coffee Mania" when used in connection with sale of coffee, coffee grounds, roasted coffee beans and coffee shop services, and in connection with the roasting of coffee beans for wholesale. 4. Upon information and belief, Defendant Coffeemania Bryant Park is a New York limited liability company with an address of Department of State service of process address of C T 2 Corporation, 111 8th Avenue, New York, NY, 10011, and an intended principal place of business at 5 Bryant Park (1065 Avenue of the Americas), New York, NY 10018. 5. Upon information and belief, Defendant Coffeemania Bryant Park was previously known as Coffeemania Chelsea, LLC. 6. Upon information and belief, Defendant Coffeemania Bryant Park intends to operate a retail coffee store at 5 Bryant Park (1065 Avenue of the Americas), New York, NY 10018, under the mark "Coffee Mania." 7. Upon information and belief, Defendant Coffeemania Bryant Park intends to sell coffee grounds and roasted coffee beans from at least its retail location at 5 Bryant Park (1065 Avenue of the Americas, New York, NY 10018, bearing the mark "Coffee Mania." Nature of the Action 8. In this action Coffee Mania seeks a preliminary and permanent injunction preventing Defendant from using a name confusingly similar to trademarks owned by Coffee Mania. Coffee Mania also seeks declaratory judgment that Defendant's intended use of the name "COFFEEMANIA" will result in, inter alia, trademark infringement and unfair competition. Plaintiffs Coffee Mania Trademark 9. Coffee Mania has duly registered its trademark rights with the New York Secretary of State and has been issued Reg. No. R32443 for the mark COFFEE MANIA in connection with "Retail and wholesale beverages made from coffee, coffee-based beverages containing milk, coffee beans" in Class 30. A copy of the registration is attached hereto as part of Exhibit A. 10. Coffee Mania has duly registered its service mark rights with the New York Secretary of State and has been issued Reg. No. 522989 for the mark COFFEE MANIA in connection with 3 "Coffee grounds and coffee roasting and processing" in Class 40 and "Coffee shop services" in Class 42. A copy of the registration is attached hereto as part of Exhibit A. 11. In 1999, Craig Brooks and Michelle Brooks, now the owners of Plaintiff Coffee Mania, moved from Washington State to Cortland, NY to be closer to family. 12. Craig and Michelle Brooks purchased a building at the corner of Port Watson and Pomeroy in Cortland and, after months of hard work, opened the first COFFEE MANIA location in December of 1999. 13. Plaintiff Coffee Mania registered in New York as a domestic limited liability company in 1999. 14. In December 2003, Coffee Mania opened a second COFFEE MANIA location in Cortland, NY. 15. In 2006, Coffee Mania purchased a building on South Avenue in Cortland, NY that is now used as Coffee Mania's roasting facility where Coffee Mania roasts coffee beans that are sold wholesale and retail and shipped throughout the United States. 16. In January 2009, Coffee Mania opened its Origins by Coffee Mania location in Homer, NY where it sells COFFEE MANIA branded coffee products. 17. At both of the Coffee Mania locations and the Origins by Coffee Mania location, Coffee Mania provides coffee shop services and sells COFFEE MANIA branded coffee and roasted coffee beans. 18. In February 2014, Coffee Mania's coffee was featured in a dinner service at the renowned James Beard House in New York, NY. 4 19. Coffee Mania also maintains a robust website at www.cnycoffee.com from which people all over the country can and have purchased dozens of styles of COFFEE MANIA branded roasted coffee beans by the pound or in greater quantities. 20. Coffee Mania has sold its roasted coffee via its website to customers in at least thirty- three states including Arizona, California, Colorado, Connecticut, Delaware, Florida, Georgia, Hawaii, Illinois, Indiana, Kentucky, Louisiana, Massachusetts, Maryland, Maine, Michigan, Minnesota, Montana, North Carolina, New Hampshire, New Jersey, Nevada, New York, Ohio, Oklahoma, Pennsylvania, Tennessee, Texas, Utah, Virginia, Washington, and Wisconsin, as well as in the District of Columbia. 21. Coffee Mania has also sold COFFEE MANIA branded roasted coffee to consumers in New York City and, more specifically, in Manhattan. 22. Via the above referenced sales, Coffee Mania has established strong common law trademark rights in the mark COFFEE MANIA when used in connection with coffee shop services and roasted coffee bean sales. 23. Coffee Mania plans to further expand its business into even more states and Defendant's use of a confusingly similar name would be a hindrance to these plans and result in consumer confusion. 24. Coffee Mania has common law trademark and service mark rights to the mark COFFEE MANIA in New York State. 25. Coffee Mania has common law trademark rights to the mark COFFEE MANIA in New York City. 26. Coffee Mania has invested substantial sums in advertising and promoting its COFFEE MANIA trademark. 5 27. Coffee Mania's COFFEE MANIA trademark is inherently distinctive, has developed secondary meaning over time, is valuable, and is the source of substantial goodwill in the marketplace. 28. Coffee Mania's COFFEE MANIA trademark has become, through widespread acceptance and recognition, assets of substantial value as a symbol of Coffee Mania's goods and services. Defendant's Infringing Actions 29. Upon information and belief, Defendant Coffeemania Bryant Park has leased a space at 5 Bryant Park in New York, NY at which it will open a coffee shop under the mark COFFEEMANIA. 30. Upon information and belief, Coffeemania Bryant Park intends to sell coffee, coffee grounds and roasted coffee beans at the 5 Bryant Park location under the mark COFFEEMANIA. 31. Upon information and belief, Coffeemania Bryant Park's location for a coffee shop under the mark COFFEEMANIA at 5 Bryant Park is not yet open for business. 32. Upon information and belief, Coffeemania Bryant Park's location at 5 Bryant Park is scheduled to open sometime during the second or third quarter of 2015. 33. Upon information and belief, Coffeemania Bryant Park imminently plans to open a coffee shop in New York City under the mark COFFEEMANIA that will sell coffee, coffee grounds and roasted coffee beans under the mark COFFEEMANIA. 34. The terms COFFEEMANIA and COFFEE MANIA are identical save for a space between the words "coffee" and "mania" in the latter term. 35. The name COFFEEMANIA, which Defendant plans to use in commerce, is confusingly similar to Plaintiff's COFFEE MANIA trademark and service mark. 6 36. Upon information and belief, Defendant intends to use the COFFEEMANIA mark in connection with sales of coffee. 37. Upon information and belief, Defendant intends to use the COFFEEMANIA mark in connection with sales of coffee grounds and roasted coffee beans. 38. Upon information and belief, Defendant intends to use the COFFEEMANIA mark in connection with coffee shop services. 39. Plaintiff Coffee Mania uses the COFFEE MANIA mark in connection with sales of coffee. 40. Plaintiff Coffee Mania uses the COFFEE MANIA mark in connection with sales of roasted coffee beans. 41. Plaintiff Coffee Mania uses the COFFEE MANIA mark in connection with coffee shop services. 42. Plaintiff Coffee Mania and Defendant use or will use, respectively, the COFFEE MANIA and COFFEEMANIA marks for at least some of the same good and/or services. 43. Defe'ndant is not associated with Plaintiff Coffee Mania and does not have Coffee Mania's permission to use Coffee Mania's marks or any mark confusingly similar to Coffee Mania's marks. 44. Despite widespread association of the trademarks COFFEE MANIA with Plaintiff, Defendant has knowingly and/or willfully adopted a confusingly similar mark. 45. Upon information and belief, Defendant has advertised and/or held out its goods and services, including coffee shop services and the offering for sale of coffee and/or roasted coffee beans, using a mark confusingly similar to Plaintiff Coffee Mania's trademark. 7 46. Plaintiff has expressly requested that Defendant cease and desist from the above referenced infringing conduct, but Defendant would not agree to refrain from engaging in the infringing conduct. 47. The goodwill and reputation for quality goods and service associated with Plaintiff's trademarks are being threatened by Defendant's actions. 48. Defendant's use of a mark that is confusingly similar to Plaintiff's mark has and/or will lead, and is likely to lead, the public to conclude that Defendant's goods and services are associated with Plaintiff, which will damage Plaintiff and the public. 49. A bona fide justiciable and substantial controversy pursuant to N.Y. C.P.L.R. § 3001 exists because Defendant imminently plans to open a coffee shop under the confusingly similar name COFFEEMANIA at 5 Bryant Park, New York, NY 10018 that will infringe Plaintiff's trademark and cause harm to and/or dilute Plaintiff's business and reputation. 50. Plaintiff and Defendant have direct adverse legal interests in this matter because Plaintiff wishes to prevent Defendant from using the COFFEEMANIA mark. 51. Declaratory judgment would serve the useful purpose of settling the legal issue of whether Defendant's use of the COFFEEMANIA would constitute trademark infringement, trademark dilution, or unfair competition. 52. Declaratory judgment would finalize this controversy by preventing Plaintiff from using the COFFEEMANIA mark. AS A FIRST CAUSE OF ACTION FOR UNFAIR COMPETITION UNDER 15 U.S.C. § 1125(a) 53. Plaintiff repeats and re-alleges paragraphs 1 through 52 of the Complaint with the same full force and effect as if fully set forth herein. 54. Defendant's use and/or intended use of the name COFFEEMANIA violates Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). 55. Defendant's use and/or intended use of the name COFFEEMANIA constitutes a false designation of origin or false representation that the wrongfully and falsely designates Defendant's goods and services as originating from or connected with Plaintiff, and constitutes the use of false descriptions or representations in interstate commerce. 56. As a direct and proximate result of Defendant's wrongful conduct, Plaintiff has suffered, or will suffer, loss of income, revenues, and goodwill. 57. As a direct and proximate result of Defendant's wrongful conduct, Defendant has acquired, or will acquire, income, profits, and goodwill. 58. Without injunctive relief, Plaintiff will suffer irreparable injury for which Plaintiff has no adequate remedy at law. 59. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be proven at trial, and recovery of reasonable attorneys' fees and costs. 60. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute unfair competition under 15 U.S.C. § 1125(a). AS A SECOND CAUSE OF ACTION FOR COMMON LAW INFRINGEMENT 61. Plaintiff repeats and re-alleges paragraphs 1 through 60 of the Complaint with the same full force and effect as if fully set forth herein. 62. Defendant's use and/or intended use of the name COFFEEMANIA constitutes trademark infringement in violation of the common law of the State of New York. 63. Defendant does not have the consent of Plaintiff to use the COFFEEMANIA mark. 64. Defendant's use and/or intended use of the mark COFFEEMANIA in connection with goods and services is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services. 65. As a direct and proximate result of Defendant's trademark infringement, Plaintiff has suffered, or will suffer, loss of income, revenues, and goodwill. 66. As a direct and proximate result of Defendant's trademark infringement, Defendant has acquired, or will acquire, income, profits, and goodwill. 67. Upon information and belief, Defendant's actions have been conducted maliciously, fraudulently, deliberately, and intentionally to inflict injury upon and divert sales from Plaintiff. 68. Defendant's acts of infringement have caused, or will cause, irreparable injury to Plaintiff if Defendant is not enjoined by this Court from further violation of Plaintiff's rights. 69. Plaintiff has no adequate remedy at law. 70. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be proven at trial, and recovery of reasonable attorneys' fees and costs. 71. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute common law trademark infringement. AS A THIRD CAUSE OF ACTION FOR STATUTORY INFRINGEMENT 72. Plaintiff repeats and re-alleges paragraphs 1 through 71 of the Complaint with the same full force and effect as if fully set forth herein. 73. Plaintiff has a New York State trademark registration for the trademark COFFEE MANIA in connection with "Retail and wholesale beverages made from coffee, coffee-based beverages containing milk, coffee beans." 10 74. Plaintiff has a New York State service mark registration for the service mark COFFEE MANIA in connection with "Coffee grounds and coffee roasting and processing" and "Coffee shop services." 75. Defendant's use and/or intended use of the mark COFFEEMANIA constitutes trademark infringement in violation of N.Y. General Business Law 360-k. 76. Defendant does not have the consent of Plaintiff to use the COFFEEMANIA mark. 77. Defendant's use and/or intended use of the mark COFFEEMANIA in connection with goods and services is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services. 78. As a direct and proximate result of Defendant's trademark infringement, Plaintiff has suffered, or will suffer, loss of income, revenues, and goodwill. 79. As a direct and proximate result of Defendant's trademark infringement, Defendant has acquired, or will acquire, income, profits, and goodwill. 80. Upon information and belief, Defendant's actions have been conducted maliciously, fraudulently, deliberately, and intentionally to inflict injury upon and divert sales from Plaintiff. 81. Defendant's acts of infringement have caused, or will cause, irreparable injury to Plaintiff if Defendant is not enjoined by this Court from further violation of Plaintiff's rights. 82. Plaintiff has no adequate remedy at law. 83. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be proven at trial, and recovery of reasonable attorneys' fees and costs. 84. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute statutory law trademark infringement. 11 AS A FOURTH CAUSE OF ACTION FOR TRADEMARK DILUTION UNDER NY GEN. BUS. LAW § 360-1 85. Plaintiff repeats and re-alleges paragraphs 1 through 84 of the Complaint with the same full force and effect as if fully set forth herein. 86. Plaintiff has continuously promoted and used the trademark COFFEE MANIA in commerce in New York, and said marks have thereby become famous and well-known symbols of Plaintiff's goods and services. 87. Defendant's use of the name COFFEEMANIA violates New York General Business Law § 360-1, in that such use erodes the public's exclusive identification of the famous trademark COFFEE MANIA with Plaintiff, tarnishing and degrading the goodwill and reputation of Plaintiff and its trademark, and by blurring the distinctiveness of, and decreasing the ability of said trademarks to identify and distinguish Plaintiffs goods and services. 88. Defendant's use and/or intended use of the name COFFEMANIA after opening its store will violate the common law of the State of New York, in that such use will erode the public's exclusive identification of the famous trademark COFFEE MANIA with Plaintiff, tarnishing and degrading the goodwill and reputation of Plaintiff and its trademark, and by blurring the distinctiveness of, and decreasing the ability of said trademark to identify and distinguish Plaintiff's goods and services. 89. Upon information and belief, Defendant's actions have been conducted maliciously, fraudulently, deliberately, and intentionally to inflict injury upon and divert sales from Plaintiff. 90. As a direct and proximate result of Defendant's wrongful conduct, Plaintiff has suffered, or will suffer, loss of income, revenues, and goodwill. 91. As a direct and proximate result of Defendant's wrongful conduct, Defendant has acquired, or will acquire, income, profits, and goodwill. 12 92. Without injunctive relief, Plaintiff has no way of preventing the continuing dilution of its trademark. 93. Without injunctive relief, Plaintiff will suffer irreparable injury for which Plaintiff has no adequate remedy at law. 94. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be proven at trial, and recovery of reasonable attorneys' fees and costs. 95. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute Trademark Dilution under NY GEN. BUS. LAW § 360-1. AS A FIFTH CAUSE OF ACTION FOR UNFAIR COMPETITION 96. Plaintiff repeats and re-alleges paragraphs 1 through 95 of the Complaint with the same full force and effect as if fully set forth herein. 97. Defendant's bad faith misappropriation of Plaintiff's trademark, in particular the use of a confusingly similar mark in connection with goods and services similar to those offered by Plaintiff, constitutes unfair business practices in violation of the common law of the State of New York. 98. Upon information and belief, customers have and been or will be actually confused and/or there is a strong likelihood of confusion as to the source of the goods and services at issue. 99. As a result of Defendant's wrongful conduct, Plaintiff is entitled to the preliminary and permanent injunctive relief requested in the ad damnum clause, damages in an amount to be proven at trial for diversion of sales, damage to goodwill, and/or loss of control over reputation, and recovery of reasonable attorneys' fees and costs. 13 100. Plaintiff is also entitled to a declaratory judgment that Defendant's actions constitute common law unfair competition. AS A SIXTH CAUSE OF ACTION FOR UNJUST ENRICHMENT 101. Plaintiff repeats and re-alleges paragraphs 1 through 100 of the Complaint with the same full force and effect as if fully set forth herein. 102. By engaging in the conduct complained of herein, Defendant will, through its use of a mark confusingly similar to Plaintiff's trademarks, induce consumers to purchase goods and services from Defendants. 103. By engaging in the conduct complained of herein, Defendant has been, or will be, unjustly enriched by its sale of coffee and roasted coffee beans and offering of coffee shop services using a mark confusingly similar to Plaintiff's trademark. 104. As a proximate result of Defendant's unlawful, fraudulent, and unfair conduct, Defendant will obtain revenues by which it will be unjustly enriched at Plaintiff's expense. 105. Under the circumstances alleged herein, it would be unfair and inequitable for Defendant to retain income, profits, or goodwill it unjustly obtains at the expense of Plaintiff. 106. Accordingly, Plaintiff seeks an order establishing Defendant as constructive trustee of any profits by which it is unjustly enriched, together with interest during the period when Defendant retains such funds, and requiring Defendant to disgorge those funds to Plaintiff. AS A SEVENTH CAUSE OF ACTION FOR PERMANENT INJUNCTION 107. Plaintiff repeats and re-alleges paragraphs 1 through 106 of the Complaint with the same full force and effect as if fully set forth herein. 14 108. The foregoing conduct by Defendant constitutes and will continue to constitute clear and deliberate violations of Plaintiff's rights to its trademark and service mark. 109. Plaintiff has no adequate remedy at law to protect its interest in its trademark and service mark, which can only be addressed by the equitable remedy of a permanent injunction as sought by Plaintiff in this action, because Plaintiff has exhausted all remedies short of permanently enjoining Defendants from using a substantially similar mark. 110. Defendant's acts have caused and/or will cause immediate, substantial, and irreparable harm to Plaintiff and have and/or will cause a strong likelihood of confusion, in that there is a significant likelihood of the irreparable loss of control over the reputation of Plaintiff's valid trademark and service mark. 111. Moreover, upon information and belief, any money judgment Plaintiff may obtain against Defendant on this complaint will likely be ineffectual to compensate Plaintiff for it losses should Defendant be permitted to continue to infringe Plaintiff's mark, among other things. 112. Upon information and belief, the balancing of the equities favors Plaintiff because Plaintiff can and will suffer irreparable injury and loss of over the reputation of its marks in the absence of an injunction, and such harm is greater than the harm which Defendant will suffer if the injunction is granted. 113. As such, Plaintiff, Plaintiff, is entitled to and demands a permanent injunction enjoining, restraining and prohibiting Defendant from: a. Selling, trading, advertising, promoting, or marketing coffee, roasted coffee beans, and coffee shop services using the name "COFFEEMANIA," any other name that includes the phrase "COFFEEMANIA," and any other name confusingly similar to Plaintiff's COFFEE MANIA trademark; 15 b. Performing any acts or things calculated or likely to cause confusion or mistake in the mind of the public or to lead consumers into the belief that products or services sold, offered for sale, distributed, or transmitted by Defendant are authorized, sponsored, licensed, endorsed, promoted, condoned or approved by Plaintiff, or are otherwise affiliated with or connected to Plaintiff; and c. Such other and further relief as the court may deem just and proper; WHEREFORE, Plaintiff demands judgment against Defendant as follows: (i) On the first, second, third, fourth, fifth and sixth causes of action, temporary and permanent injunctions prohibiting Defendant from using the name "COFFEEMANIA," any other name that includes the phrase "COFFEEMANIA," and any other name confusingly similar to Plaintiff's COFFEE MANIA trademark, and money damages in an amount to be determined at trial, together with attorneys' fees and costs; (ii) On the seventh cause of action, a permanent injunction enjoining, restraining and prohibiting Defendant from: a. Selling, trading, advertising, promoting, or marketing wine or liquor using the name "COFFEEMANIA," any other name that includes the phrase "COFFEEMANIA," and any other name confusingly similar to Plaintiff's COFFEE MANIA trademark; b. Performing any acts or things calculated or likely to cause confusion or mistake in the mind of the public or to lead consumers into the belief that products or services sold, offered for sale, distributed, or transmitted by Defendant are authorized, sponsored, licensed, endorsed, promoted, 16 condoned or approved by Plaintiff, or are otherwise affiliated with or connected to Plaintiff; and (iii) Such further relief as this Court deems just and proper. Dated: May 13, 2015 Syracuse, New York HARRIS, BEACH PLLC BY: James R. u do sq. Brendan M. Palfreyman, Esq. Attorneys for Plaintiff 333 West Washington Street, Suite 200 Syracuse, New York 13202 (315) 423-7100 17