estta tracking number: estta853702 filing date: 10/23/2017 in...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA853702

Filing date: 10/23/2017

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92065670

Party PlaintiffEko Brands, LLC

CorrespondenceAddress

DAVID A LOWELOWE GRAHAM JONES PLLC701 FIFTH AVENUE SUITE 4800SEATTLE, WA 98104UNITED STATESEmail: [email protected]

Submission Other Motions/Papers

Filer's Name David A Lowe

Filer's email [email protected], [email protected], [email protected]

Signature /David A Lowe/

Date 10/23/2017

Attachments ESUP-6-0007P02 NOT.pdf(661838 bytes )

http://estta.uspto.gov

NOTIFICATION OF PENDING CIVIL ACTION ESUP-6-0007P02 NOT

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

EKO BRANDS, LLC,

Petitioner,

v.

ADRIAN RIVERA,

Respondent.

Cancellation No. 92065670 Mark: ECO FILL Reg. No. 4239190 Reg. Date: November 6, 2012 Mark: ECO CARAFE Reg. No. 4796840 Reg. Date: August 18, 2015

NOTIFICATION OF PENDING CIVIL ACTION

Petitioner Eko Brands, LLC hereby notifies the Board of pending Civil Action No. 17-cv-

894TSZ, filed in the U.S. District Court for the Western District of Washington (WAWD). This

trademark infringement action involves the same parties and the same or related marks at issue in

this proceeding, and may implicate the same or similar issues of law and fact.

Attached is a copy of the complaint filed in the WAWD action, along with the Court’s

recent Order denying Respondent’s motion to dismiss the complaint.

RESPECTFULLY SUBMITTED October 23, 2017.

s/ David A. Lowe, PTO Reg. No. 39,281 [email protected]

LOWE GRAHAM JONESPLLC 701 Fifth Avenue, Suite 4800 Seattle, WA 98104 T: 206.381.3300 F: 206.381.3301 Attorneys for Petitioner

COMPLAINT - 1 Civil Action No. 17-cv-894 ESUP-6-0008P01 CMP

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE

EKO BRANDS, LLC,

Plaintiff,

v.

ADRIAN RIVERA MAYNEZ ENTERPRISES, INC.; and ADRIAN RIVERA, an individual,

Defendants.

Civil Action No. 17-cv-894

COMPLAINT FOR TRADEMARK INFRINGEMENT AND FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION, AND CONSUMER PROTECTION ACT VIOLATIONS

JURY TRIAL REQUESTED

Plaintiff EKO BRANDS, LLC (“Eko”) alleges the following causes of action against

Defendants ADRIAN RIVERA MAYNEZ ENTERPRISES, INC. and ADRIAN RIVERA:

I. NATURE OF THE ACTION

1. This is an action for preliminary and permanent injunctive relief and monetary

damages arising out of Defendants’ unauthorized use of Eko’s EKOBREW and

trademarks and trade name (“Ekobrew marks”) in association with single-serve reusable

beverage capsules and other related products, resulting in infringement of Eko’s trademarks as

well as unfair competition based on the manner in which Defendants have mislead the public

Case 2:17-cv-00894 Document 1 Filed 06/09/17 Page 1 of 10


regarding the source for products and services. This action also involves allegations of violation

of the Washington State Consumer Protection Act, R.C.W. 19.86.020 et seq.

II. JURISDICTION AND VENUE

2. This action arises, in part, under the trademark laws of the United States of

America, 15 U.S.C. § 1051 et seq. Jurisdiction over the trademark infringement, false

designation of origin and federal unfair competition claims is conferred upon this Court by

28 U.S.C. §§ 1331 and 1338. Supplemental jurisdiction is conferred upon this Court over the

remaining related state claim as it is derived from a common nucleus of operative fact that form

part of the same case or controversy. 28 U.S.C. § 1367(a). The amount in controversy exceeds

$75,000 exclusive of interest and costs.

3. Venue and personal jurisdiction are proper in this Court pursuant to

28 U.S.C. § 1391.

4. This Court has personal jurisdiction over the Defendants because each Defendant,

either individually or as part of an agreement, has: (a) offered, sold, advertised, and provided

within retail stores in Washington and in this District products using the infringing ECO-FILL,

ECO-FILL DELUXE 2.0, ECO CARAFE and ECO-FLOW marks; (b) maintains and has

maintained continuous and systematic contacts with Washington and this District over a period

of time through at least such activities; and (c) purposefully availed itself of the benefits of doing

business in Washington and this District. Accordingly, Defendants, and each of them, maintain

minimum contacts with Washington and this District that are more than sufficient to subject the

Defendants to service of process in compliance with due process of law.

5. Venue is proper because, at all times relevant hereto; a substantial part of the

events giving rise to Plaintiff’s claims occurred in this District, including but not limited to

Defendants’ transacting business, engaging in acts of trademark infringement and unfair

competition by marketing and selling their products through retailers in this District under the



infringing ECO-FILL, ECO-FILL DELUXE 2.0, ECO CARAFE and ECO-FLOW marks.

Defendants are subject to personal jurisdiction in this District at the commencement of this

action, as set forth above.

III. PARTIES

A. PLAINTIFF

6. Plaintiff Eko Brands, LLC (“Eko”) is a Washington limited liability company

with an address at 1123 NW 51st Street, Seattle, WA 98102. Plaintiff also maintains a

manufacturing facility at 6029 238th St SE #130, Woodinville, WA 98072.

B. DEFENDANTS

7. On information and belief, Defendant Adrian Rivera Maynez Enterprises, Inc.

(“ARM”) is a corporation formed under the laws of the State of Nevada and has a principal place

of business at 14979 Lodosa Dr., Whittier, California 90605. ARM designs, manufactures,

markets and distributes single-serve coffee brewing products at retailers nationwide and in this

District under the ECO-FILL, ECO-FILL DELUXE 2.0, ECO CARAFE and ECO-FLOW marks

in a manner confusingly similar to Plaintiff’s products.

8. On information and belief, Defendant Mr. Adrian Rivera (“Rivera”) is an

individual with an address at 14979 Lodosa Drive, Whittier, California 90605. Defendant Rivera

is the owner, founder, and president of ARM.

9. On information and belief, Rivera is the purported owner of the infringing ECO-

FILL, ECO-FILL DELUXE 2.0, ECO CARAFE and ECO-FLOW marks and has directed said

trademarks to be used by Defendants in unfair competition with Plaintiff.

10. On information and belief, Rivera has controlled all of the conduct of ARM

complained of herein and is a decision maker having joint and several liability with ARM for all

the acts complained of herein.



11. On information and belief, each Defendant has acted with the permission,

consent, knowledge and active inducement on the part of the other with regard to the acts alleged

herein, and together have acted as co-conspirators and/or agents in the performance of such acts.

12. On information and belief, there has existed a unity of interest between

defendants ARM and Rivera such that any individuality and separateness of ARM and Rivera

has ceased, and that each is the alter-ego of the other in the acts alleged.

IV. FACTUAL ALLEGATIONS

A. GENERAL ALLEGATIONS

13. Eko has been a market leader in selling single-serve, reusable beverage capsules

that are commonly used with single-serve beverage brewing machines, such as those sold under

the Keurig® brand. Eko also sells paper filters and cleaning tablets to be used in connection with

its reusable beverage capsules.

14. Eko’s reusable filter brewing cartridges are designed as a replacement for

KEURIG®’s “K-cups.” The latter are distributed pre-filled with ground coffee beans and are

designed by KEURIG® to be used once and then disposed. This has caused many consumers to

be concerned with the environmental impact of these disposable capsules. To solve this issue,

and others, Eko’s reusable filter brewing cartridges are designed to allow the consumer to fill

them with their own choice of ground coffee and can be refilled and reused to brew coffee in a

KEURIG® machine. These are designed with permanent filters so that a consumer only has to

wash out the cartridge and refill it to reuse it.

15. True and accurate images of examples of Eko’s products are reproduced below:



16. Since the company’s founding, Eko has expended hundreds of thousands of

dollars in developing high-quality, reliable products, thereby contributing to the company’s

goodwill and reputation. As a result of Eko’s tireless efforts, the company’s founders were

awarded United States Patent Nos. 8,707,855; 8,561,524; D677120; and D688095, all of which

have been since been assigned to Eko. In addition to product development, Eko has expended

substantial resources in developing the Ekobrew marks.

17. Eko has sold, and continues to sell through a variety of online and physical

storefronts, including but not limited to: Amazon.com, Walmart, Bed Bath & Beyond,

Wayfair.com, Safeway, Kroger, Walgreens and CVS. Eko also advertises its products direct to

consumers on its website www.ekobrew.com.

18. As a result, consumers know the Ekobrew marks to identify Plaintiff the source of

the aforementioned goods, and have come to associate these marks with high-quality,

environmentally-conscious products.

19. As one example, Eko has garnered a

coveted 4/5 star rating based on over 3,600 customer

reviews on Amazon.com for one of its Ekobrew

products.

B. EKO’S TRADEMARK RIGHTS

20. Eko has earned common law rights to the

Ekobrew marks based on use of the marks consistently

and pervasively in interstate and international commerce with the sale of reusable filter

cartridges, and more recently, carafes, for use in electric brewing machines such as the Keurig®

brand products since at least as early as September 7, 2011. Eko has sold millions of such

branded products at a variety of national, regional and online retailers.

21. Eko has also earned common law rights to the Ekobrew marks in connection with

additional products, for it has also been using the marks in interstate commerce in connection



with single-serve disposable paper filters, and brewer cleaning tablets at least as early as

September 7, 2011.

22. In addition to having common law rights, Eko is the owner of Registration

No. 5073356 for the EKOBREW mark (“the 356 Registration”) and Registration No. 5073357

for the mark (“the 357 Registration”), both registered November 1, 2016 in Class 11

for “[r]eusable filter, not of paper, for use in electric brewing machines for beverage,” based on

actual use commencing at least as early as September 7, 2011. A true and accurate copy of the

356 Registration is attached hereto as Exhibit A. A true and accurate copy of the

357 Registration is attached hereto as Exhibit B.

23. Eko’s continuous use of its Ekobrew marks in interstate and international

commerce predate Defendants’ alleged first use dates for both of their trademark registration

applications, as discussed below. Thus, Eko has priority over Defendants’ marks.

C. DEFENDANTS’ WRONGFUL ACTIONS

24. On or about December 19, 2011, Rivera filed a U.S. trademark registration

application for the infringing mark ECO FILL. This application resulted in Registration

No. 4239190 on the Principal Register on November 6, 2012 in Class 11 for “[r]eusable single

serving coffee filter not of paper being part of an electric coffee maker.” The resulting

registration claims actual use as of September 7, 2012 as the sole filing basis. A true and accurate

copy of this registration certificate is attached hereto as Exhibit C.

25. On or about October 14, 2014, Rivera filed a U.S. trademark registration for the

mark ECO CARAFE. This application resulted in Registration No. 4796840 on the Principal

Register on August 18, 2015 in Class 11 for “[e]mpty brewing cartridges for use in electric

coffee machines.” The resulting registration claims actual use as of February 4, 2015 as the sole

filing basis. The registration also disclaims the term CARAFE. A true and accurate copy of this

registration certificate is attached hereto as Exhibit D.



26. The goods for which Defendants use their marks are identical to the goods for

which Eko has registered and uses its marks, namely, reusable filter cartridges for use in electric

coffee machines, and related to complementary goods, namely, brewer cleaning tablets and paper

filters for use in electric coffee machines.

27. On information and belief, Defendants have been selling reusable beverage filter

capsules under the confusingly similar ECO-FILL name since as early as September 7, 2012.


capsules under the confusingly similar ECO-FILL DELUXE 2.0 name since approximately Fall

of 2014.


capsules under the confusingly similar ECO CARAFE name since as early as February 4, 2015.

30. On information and belief, Defendants began selling reusable beverage filter

capsules under the confusingly similar ECO-FLOW name long after Eko began using the

Ekobrew marks in commerce.

31. Defendants’ ECO-FILL, ECO-FILL DELUXE 2.0, ECO CARAFE and

ECO-FLOW products bearing the confusingly similar names are shown below:

32. On information and belief, Defendants offer products bearing the confusingly

similar marks in at least following online and retail stores: Amazon.com, Target, Bed Bath &



Beyond, Sam’s Club, CoffeeIcon Superstore, Walmart, Wayfair, Meijer, CoffeeAM, Kitchen &

Company and Coffee.org.

33. On information and belief, Defendants also offer products bearing the confusingly

similar marks direct to consumers through its website www.perfectpod.com.

34. These acts of Defendants have caused and, unless restrained by the Court, will

continue to cause serious and irreparable harm to Eko and to the goodwill associated with its

trademarks. Moreover, Defendants have and will continue to unjustly benefit—at Eko’s

expense—from gains, profits and advances derived from the products sold and services provided

in association with the infringing ECO-FILL, ECO-FILL DELUXE 2.0, ECO CARAFE and

ECO-FLOW marks.

35. Defendants’ unauthorized use of Eko’s trademarks have a high likelihood of

confusing the public as to the source of Defendants’ goods.

36. Defendants have no license from Eko. Nevertheless, Defendants have deliberately

and willfully infringed the Ekobrew marks despite knowledge of the same and of Eko’s

provision of products in association with the Ekobrew marks.

37. On information and belief, Defendants’ actions have been either for commercial

gain or with the intent to tarnish or disparage the Ekobrew marks and Ekobrew brand by creating

a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the goods

marked with the ECO-FILL, ECO-FILL DELUXE 2.0, ECO CARAFE and ECO-FLOW marks.

V. CAUSES OF ACTION

COUNT I: TRADEMARK INFRINGEMENT

38. Eko re-alleges the preceding paragraphs 1 through 36 of this complaint.

39. Defendants have, without consent of Eko, used in commerce a reproduction,

counterfeit, copy and/or colorable imitation of Eko’s registered EKOBREW and

trademarks in connection with affiliate programs used in association with single-serve beverage



brewing products in a manner that is likely to cause confusion, or to cause mistake, or to deceive

in violation of 15 U.S.C. § 1114 and Washington common law.

COUNT II: FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION

40. Eko re-alleges the preceding paragraphs.

41. Defendants have engaged in false designation of origin and unfair competition by

knowingly and willfully creating an affiliation or connection between them and Eko in order to

confuse and mislead the public as to the source of the related products and services in violation

of 15 U.S.C. § 1125.

COUNT III: CONSUMER PROTECTION ACT VIOLATION

42. Eko re-alleges the preceding paragraphs.

43. Defendants have intentionally confused and misled the public in Washington

State and throughout the country. Defendants’ actions constitute unfair methods of competition

and unfair deceptive acts and practices in the conduct of its trade or business. Defendants’

actions have affected and continue to affect the public interest in Washington State as well as in

other parts of the country. Defendants have demonstrated its propensity for repetition of the

wrongful actions. As a direct and causal result of Defendants’ unfair business practices and

unfair and deceptive acts, Eko has been damaged in an amount to be proven at trial.

44. Defendants’ actions are in violation of the Washington State Consumer Protection

Act, R.C.W. § 19.86.020.

VI. PRAYER FOR RELIEF

Eko requests the following alternative and cumulative relief:

1. Preliminary and permanent injunctions against Defendants and all officers, agents, affiliates, employees, representatives, and all persons in active concert or participation with them in any way, from use of the ECO-FILL, ECO-FILL DELUXE 2.0, ECO CARAFE and ECO-FLOW marks, or any other marks confusingly similar thereto, as a service mark, trademark, trade name, domain name or part thereof alone or in combination with other words, symbols, styles,



titles or marks in connection with coffee products, pursuant to 15 U.S.C. § 1116 and other applicable law.

2. An order that Defendants deliver up for destruction all products, printed material, stationery, business forms, signs, advertisements, brochures, promotional material, manuals, pamphlets, labels, packages, containers, and all other materials bearing the ECO-FILL, ECO-FILL DELUXE 2.0, ECO CARAFE and ECO-FLOW marks, or any derivative, colorable imitation, or confusingly similar marks, together with all means for making or reproducing the same, pursuant to 15 U.S.C. § 1118 and other applicable law.

3. An order requiring Defendants to file with this Court and serve on Eko within thirty days of service of this order a report in writing under oath setting forth in detail the manner and form in which Defendants have complied with the terms of the ordered relief.

4. An award of damages sufficient to compensate Eko for all injury sustained as a result of Defendants’ wrongful trademark infringement, including wrongful profits of Defendants, pursuant to 15 U.S.C. § 1117 and other applicable law.

5. Exemplary damages and all of Eko’s litigation expenses, including reasonable attorneys’ fees and costs, pursuant to 15 U.S.C. § 1117 and other applicable law.

6. An assessment of prejudgment interest and costs.

7. Such other and further relief as the Court may deem just and proper.

RESPECTFULLY SUBMITTED June 9, 2017

s/David A. Lowe, WSBA No. 24,453 [email protected] LOWE GRAHAM JONESPLLC

701 Fifth Avenue, Suite 4800 Seattle, WA 98104 T: 206.381.3300 F: 206.381.3301 Attorneys for Plaintiff


EXHIBIT A

Case 2:17-cv-00894 Document 1-1 Filed 06/09/17 Page 1 of 8

Reg. No. 5,073,356

Registered Nov. 01, 2016

Int. Cl.: 11

Trademark

Principal Register

EKO BRANDS, LLC (WASHINGTON LIMITED LIABILITY COMPANY)

1123 NW 51ST STREET

SEATTLE, WA 98102

CLASS 11: Reusable filter, not of paper, for use in electric brewing machines for beverage

FIRST USE 9-7-2011; IN COMMERCE 9-7-2011

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY

PARTICULAR FONT STYLE, SIZE OR COLOR

SER. NO. 87-019,435, FILED 04-29-2016

RUDY RENWIC SINGLETON, EXAMINING ATTORNEY


EXHIBIT B


Reg. No. 5,073,357

Registered Nov. 01, 2016

Int. Cl.: 11

Trademark

Principal Register

EKO BRANDS, LLC (WASHINGTON LIMITED LIABILITY COMPANY)

1123 NW 51ST STREET

SEATTLE, WA 98102

CLASS 11: Reusable filter, not of paper, for use in electric brewing machines for beverage

FIRST USE 9-7-2011; IN COMMERCE 9-7-2011

The mark consists of the wording "EKOBREW" in stylized font wherein the letters are all

lower case with the lines forming the letter "K" are elongated.

SER. NO. 87-019,462, FILED 04-29-2016

RUDY RENWIC SINGLETON, EXAMINING ATTORNEY


EXHIBIT C


EXHIBIT D


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MINUTE ORDER - 1

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF WASHINGTON

AT SEATTLE

EKO BRANDS, LLC,

Plaintiff,

v.

ADRIAN RIVERA MAYNEZ

ENTERPRISES INC. et al.,

Defendants.

C17-894 TSZ

MINUTE ORDER

The following Minute Order is made by direction of the Court, the Honorable

Thomas S. Zilly, United States District Judge:

(1) Defendants’ Motion to Dismiss Plaintiff’s Complaint, docket no. 14, is DENIED. Plaintiff’s claims in this action for trademark infringement, Lanham Act and

Consumer Protection Act violations do not arise from the same transaction or occurrence

as the patent infringement claims in Eko Brand v. ARM, et al., Cause No. 15-522RSL

(“Prior Litigation”). As a result, plaintiff’s claims were not compulsory counterclaims in the Prior Litigation under Fed. R. Civ. P. 13(a). The Court also concludes that plaintiff’s complaint alleges sufficient facts to state a claim for relief that is plausible on its face

under Ashcroft v. Iqbal, 556 U.S. 662 (2009).

(2) The Clerk is directed to send a copy of this Minute Order to all counsel of

record.

Dated this 6th day of October, 2017.

William M. McCool

Clerk

s/Karen Dews

Deputy Clerk

Case 2:17-cv-00894-TSZ Document 24 Filed 10/06/17 Page 1 of 1

estta tracking number: estta853702 filing date: 10/23/2017 in...

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