Eko Brands v. Adrian Rivera Maynez Enterprises Inc

District Court, W.D. Washington·Decided September 11, 2019·No. 2:17-cv-00894·Unknown

Opinion

Honorable Thomas S. Zilly

] 2 4 5 6 WESTERN DISTRICT OF WASHINGTON 9 EKO BRANDS, LLC, Civil Action No. 17-cv-894TSZ 10 Plaintiff, PRETRIAL ORDER v. 12 13 ADRIAN RIVERA MAYNEZ 14 ENTERPRISES, INC.; and ADRIAN RIVERA, 15 Defendants. 16 17 Pursuant to Local Civil Rule (“LCR”) 16(h) and this Court’s scheduling order (Dkt. 68), 18 Plaintiff Eko Brands, LLC (“Eko”) and Defendants Adrian Rivera Maynez Enterprises, Inc. and 19 Adrian Rivera (collectively “ARM”’) submit their Joint Pretrial Statement. 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 73 and federal unfair competition claims is conferred upon this Court by 28 U.S.C. 8§ 1331 and 1338. 2 B. EKO’S CLAIMS 1. ARM has, without consent of Eko, used in commerce a reproduction, counterfeit, 25 al copy and/or colorable imitation of Eko’s registered EKOBREW and ~ □ trademarks in

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1 connection with beverage brewing products in a manner that is likely to cause confusion, or to 2 cause mistake, or to deceive in violation of 15 U.S.C. § 1114, including by unauthorized adoption 3 and use of ECO____ marks, including without limitation ECO-FILL (including ECO-FILL 4 DELUXE, ECO-FILL DELUXE 2.0 and ECO-FILL MAX), ECO CARAFE, ECO FLOW, ECO- 5 PURE, ECO-FILTER and ECOSAVE. 6 ARM OBJECTION: ARM objects to Eko’s inclusion of the ECO-FILTER, ECO- 7 PURE and ECOSAVE marks as included in this lawsuit. Eko’s Complaint only includes 8 the ECO-FILL, ECO-FLOW and ECO CARAFE marks. These same three marks were 9 included in Eko’s interrogatories propounded in 2018. Although the interrogatory 10 definitions referred vaguely to “any form of the marks visually or phonetically similar 11 thereto,” in May 2018, ARM specifically objected to these definitions as vague (in multiple 12 places) and stated that “It is not clear what Plaintiff means.” ARM asserted that “ARM 13 interprets the ‘Accused Products’ to be those listed in the definitions.” Eko never moved 14 to compel or otherwise sought additional information regarding any other products. In 15 addition, Eko never sought to amend its complaint. Therefore, only the ECO-FILL, ECO- 16 FLOW and ECO CARAFE marks are at issue. ARM will not repeat this objection again 17 but note that this applies to all instances where any other mark is improperly included. 18 EKO_RESPONSE: Eko’s position is that the ECO-FILTER, ECO-PURE and 19 ECOSAVE marks are very much at issue and part of the case. ARM’s accused infringement of these products includes all uses of ECO, regardless of the suffix added or when ARM’s adoption and infringing use began. For these three marks, ARM’s adoption and infringing use begun in the last year, long after the complaint was filed. Even so, the initial complaint included allegations broadly including any ECO__s marks. (Dkt. 1 § 39 “Defendants have, without consent of Eko, used in commerce a reproduction, counterfeit, copy and/or colorable imitation of Eko’s registered EKOBREW and ekobrew

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I Trademarks;” {] 40 “Defendants have engaged in false designation of origin and unfair 2 competition by knowingly and willfully creating an affiliation or connection trademarks;” 3 VIC1),(2) seeking injunction, destruction and damages against “ECO-FILL, ECO-FILL 4 DELUXE 2.0, ECO CARAFE and ECO-FLOW marks, or any other marks confusingly 5 similar thereto.”) Eko’s April 18, 2018 discovery requests broadly sought information and 6 documents pertaining to “any form of the [ECO_] marks visually or phonetically similar 7 thereto.” At the time of ARM’s response, it had not yet adopted or used in commerce the 8 three new ECO-FILTER, ECO-PURE and ECOSAVE marks. But by the date of the 9 parties’ agreed supplementation on August 8, 2019, use of these new infringing marks had 10 begun, and ARM knew that these new marks were at issue at that time. Indeed, ARM 1] clearly recognized this when it (not Eko) properly included “Eco-anything” in the 12 August 8, 2019 supplement, and provided financial information for the ECO-FILTER, 13 ECO-PURE and ECOSAVE branded products. Eko is not aware of any authority requiring 14 Eko to amend its complaint to include derivative infringing marks adopted by ARM since 15 commencement of the lawsuit and were specifically anticipated in the complaint. But even 16 if that were the case, under these circumstances, particularly given that ARM sought to 17 hide its adoption and use of these marks from Eko by withholding required discovery 18 supplementation, the Court can readily grant any required amendment to insure their 19 inclusion. E.g., Benchmark Young Adult Sch., Inc. v. Launchworks Life Servs., LLC, 20 2014 U.S. Dist. LEXIS 91136 (S.D. Ca. 2014). 21 2. ARM has engaged in false designation of origin and unfair competition by 22 || knowingly and willfully creating an affiliation or connection between them and Eko in order to 23 confuse and mislead the public as to the source of the related products and services in violation of 24 15 U.S.C. § 1125, including by unauthorized adoption and use of ECO____ marks, including 25 26 JOINT PRETRIAL ORDER - 3 rss ce LOWE GRAHAM JONES...

without limitation ECO-FILL (Gncluding ECO-FILL DELUXE, ECO-FILL DELUXE 2.0 and 2 ECO-FILL MAX), ECO CARAFE, ECO FLOW, ECO-PURE, ECO-FILTER and ECOSAVE. 3 3. Eko seeks a permanent injunction against ARM and all officers, agents, affiliates, 4 employees, representatives, and all persons in active concert or participation with them in any way, 5 from use of the ECO marks, including without limitation ECO-FILL (including ECO-FILL 6 DELUXE, ECO-FILL DELUXE 2.0 and ECO-FILL MAX), ECO CARAFE, ECO FLOW, ECO- 7 PURE, ECO-FILTER and ECOSAVE, or any other marks confusingly similar thereto, as a service 8 mark, trademark, trade name, domain name or part thereof alone or in combination with other 9 words, symbols, styles, titles or marks in connection with coffee products, pursuant to 10 15 U.S.C. § 1116 and other applicable law. 11 4. Eko seeks an order that ARM deliver up for destruction all products, printed 12 material, stationery, business forms, signs, advertisements, brochures, promotional material, 13 manuals, pamphlets, labels, packages, containers, and all other materials bearing ECO marks, 14 including without limitation ECO-FILL (including ECO-FILL DELUXE, ECO-FILL DELUXE 15 2.0 and ECO-FILL MAX), ECO CARAFE, ECO FLOW, ECO-PURE, ECO-FILTER and 16 ECOSAVE, or any derivative, colorable imitation, or confusingly similar marks, together withall 17 means for making or reproducing the same, pursuant to 15 U.S.C. § 1118 and other applicable law 18 5. Eko seek cancellation of U.S. Registration Nos. 4239190, 4796840, 5741858 and 19 || U.S. Application Nos. 88434433 and 88434459. 20 6. Eko seeks an award of damages sufficient to compensate Eko for all injury 21 sustained as a result of ARM’s wrongful trademark infringement and Lanham Act violation, 22 || including wrongful profits of ARM, pursuant to 15 U.S.C. § 1117 and other applicablelaw. 23 7.

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Eko Brands v. Adrian Rivera Maynez Enterprises Inc, (W.D. Wash. 2019).

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