PIM v. Haribo - Complaint
PIM v. Haribo - Complaint
David R. King
[email protected]
Leah Kelman
[email protected]
HERRICK FEINSTEIN LLP
One Gateway Center
Newark, New Jersey 07102
(973) 274-2000
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19-CV-
Plaintiff,
COMPLAINT
v.
Defendant.
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Plaintiff Promotion In Motion, Inc. (“PIM”), by and through its undersigned attorneys, as
and for its Complaint in this action against Haribo of America, Inc. (“Haribo”), having an
address at 9500 West Bryn Mawr Avenue, Suite 700, Rosemont, IL 60018, alleges as follows:
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1. Plaintiff brings this action for trademark and trade dress infringement, false
designation of origin, and unfair competition under the Lanham Act, 15 U.S.C. § 1051 et seq.,
and corresponding state law, to halt Haribo’s infringement of PIM’s registered trade dress in its
PARTIES
principal place of business at 9500 West Bryn Mawr Avenue, Suite 700, Rosemont, IL 60018.
Upon information and belief, Haribo is in the business of manufacturing and importing various
4. This Court has jurisdiction over the claims pursuant to 15 U.S.C. § 1121 and 28
5. This Court has personal jurisdiction over Haribo because, upon information and
belief, it is doing business in New Jersey and has committed tortious acts within New Jersey by
selling the infringing products from which this dispute arises in this jurisdiction.
6. Venue is proper in this judicial district pursuant to 28 U.S.C. §1391(b) and (c).
FACTS
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8. In developing its own proprietary candy brands, PIM expends great effort in
creating appealing and distinctive recipes, formulas, product attributes, shapes, graphics, brand
9. One of PIM’s longstanding and successful brands is its SOUR JACKS candies,
soft-and-chewy sour candies that have proven extremely popular among children and teenagers.
SOUR JACKS was originally introduced in the early 1990s in the shape of a little boy, and this
10. Beginning in 2003, PIM introduced an extension of the SOUR JACKS brand
using a different formulation, boasting a different taste, and featuring a distinctive and highly
11. In introducing this new version of SOUR JACKS, PIM designed the unusual
three-dimensional trapezoid shape and three-color combination pictured above to distinguish the
product in the marketplace. This design is characterized by five flat surfaces and edges angling
vertically upward. Among the five flat surfaces are a flat rectangular bottom, triangular right and
left sides, and trapezoidal front and back planes. The overall appearance is of a trapezoid
rendered in three dimensions. A thin white band of color divides the red top from the flat green
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base of the piece. This design and color combination is referred to hereinafter as “PIM’s Trade
Dress.”
12. PIM has used PIM’s Trade Dress in connection with the SOUR JACKS Wedge
Product since 2003. After introduction of the original watermelon flavor, PIM extended the line
in 2015 by introducing lemonade, wildberry and green apple versions configured in the same
distinctive shape, but with the colors adjusted for each different version.
13. PIM’s Trade Dress is not functional. It does not replicate the actual shape of a
particular fruit, serves no utilitarian function or other purpose affecting the cost or quality of the
product.
14. PIM uses PIM’s Trade Dress not only as the configuration and design of the
product itself, but also prominently features it on product packaging in order to distinguish the
brand in the marketplace and identify PIM as its source. Examples of some retail packages of
the SOUR JACKS Wedge Product as depicted on the www.sourjacks.com website appear below:
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As reflected in the above example, both the packaging and associated marketing imagery for the
SOUR JACKS Wedge Product displays PIM’s Trade Dress to cement its association with the
brand in the minds of consumers. Other flavors of PIM’s SOUR JACKS Wedge Product
similarly display the signature shape of the product on packaging, as illustrated below:
15. PIM aggressively advertises and promotes PIM’s Trade Dress when it markets its
SOUR JACKS Wedge Product. PIM has spent millions of dollars advertising the SOUR JACKS
Wedge Product through various media, including online, point of sale materials such as in-store
displays, trade advertising, free standing inserts and in-theater concession advertising. PIM also
promotes the product via the dedicated website noted above at www.sourjacks.com, and on
16. PIM’s advertising for the SOUR JACKS Wedge Product expressly calls attention
to PIM’s Trade Dress and its signature shape as an indication of source throughout PIM’s
promotions, advertisements and communications to the public. For example, PIM repeatedly
uses the federally registered slogan “RESPECT THE WEDGE” on packaging, websites and in
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17. PIM also ran a “LIVIN’ ON THE WEDGE” sweepstakes, and has used that
phrase in advertising and promoting the product, again to call attention to PIM’s Trade Dress as
18. As another example, the www.sourjacks.com website urges consumers to look for
the shape of the product when it encourages them to “CHECK OUT THE ULTIMATE SHAPE
OF SOUR!” This repeated graphic and promotional emphasis on the wedge shape ensures that
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the public understands that PIM’s Trade Dress identifies PIM and PIM alone as the source of
19. PIM’s SOUR JACKS Wedge Product is also sold in bulk form to distributors who
then either repackage the products under private label store brands or sell them to a wide variety
of outlets, such as candy and nut shops, candy kiosks, ice cream shops, fudge shops, grocery
stores, movie theaters, theme parks and bulk candy stores as found at shopping malls and tourist
and leisure attractions, all of which then offer the products for sale in bulk form. In these
20. PIM’s SOUR JACKS Wedge Product has been a great commercial success,
generating millions of dollars in sales annually. PIM has sold approximately $30 million worth
of the product at wholesale. The product has become extremely popular with children and
21. The SOUR JACKS Wedge Product is available in multiple trade channels that
expose the product to consumers nationwide, including large chain stores (such as Walmart and
Target), drug store chains (CVS, Rite-Aid, Walgreen’s), supermarkets (Kroger, Safeway, Shop-
Rite), theater concessions, candy stores, and online merchants ranging from Amazon to specialty
retailers.
22. As a result of the commercial success and years of promotion of PIM’s SOUR
JACKS Wedge Product, PIM’s Trade Dress has become well known to consumers and the trade
and has developed significant goodwill for PIM as the source of the product.
23. PIM’s Trade Dress has acquired secondary meaning among the relevant class of
consumers and the trade and thus serves as a distinctive source identifier.
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24. PIM owns a valid and subsisting federal registration (Reg. No. 5,029,701) for
PIM’s Trade Dress (the “PIM Registration”). The PIM Registration identifies the mark as one
that “consists of the shape of a wedge for candy, with an upper green section with white
speckles, followed by a narrow middle white section and followed by a lower red section with
25. At the recent Sweets & Snacks trade show in May 2019, PIM just learned that
Defendant Haribo is introducing a knock-off gummy candy product that copies the distinctive
trapezoid configuration and three-color scheme constituting PIM’s Trade Dress and protected by
the PIM Registration. An image of the Haribo product as announced in the press appears below:
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As displayed in the package’s window, the shape and color combination of the Haribo product
closely imitates the trapezoidal shape and three-color combination of PIM’s Trade Dress.
26. Haribo’s use of a product shape and color combination that is so closely similar to
that used for the genuine SOUR JACKS creates a strong likelihood that consumers will think
Haribo’s product emanates from the same source as the genuine SOUR JACKS products
manufactured by PIM. Indeed, that likelihood of confusion is further enhanced by the fact that
the Haribo package uses the same shade of pink background color as the package for PIM’s
27. Upon information and belief, Haribo was aware of PIM’s Trade Dress before it
28. Upon information and belief, Haribo’s infringing product is being marketed and
sold to the same class of candy consumers to whom PIM’s SOUR JACKS Wedge Product is
promoted and sold, and is being sold in the same channels of trade and through the same retail
29. The young consumers for PIM’s SOUR JACKS Wedge Product and Haribo’s
infringing product, both of which are low-cost impulse purchases, are particularly vulnerable to
30. Haribo’s infringing product is likely to cause confusion, mistake and deception
among consumers as to the source and origin of such goods, and is likely to deceive the public
into believing that Haribo’s goods originate from, are associated with or are authorized or
licensed by PIM or the producer of SOUR JACKS, or that Haribo’s goods are from the same
source as PIM’s, all to the damage and detriment of PIM’s goodwill and sales.
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31. Upon information and belief, by virtue of its unlawful conduct, Haribo has made
or will make substantial profits and gains to which it is not in law or equity entitled.
determined at trial.
33. Haribo’s unlawful activities result in irreparable harm and injury to PIM, and PIM
34. PIM has demanded that Haribo immediately cease any further distribution of the
infringing product, but upon information and belief, Haribo continues to sell the product and will
35. PIM repeats and reincorporates the allegations contained in Paragraphs 1 through
36. Haribo’s sale of its infringing watermelon candy as described above infringes the
37. PIM repeats and reincorporates the allegations contained in Paragraphs 1 through
36 above with the same force and effect as if set forth herein.
38. Haribo’s sale of its infringing watermelon candy as described above infringes
PIM’s Trade Dress and thus constitutes trade dress infringement, false designations of origin,
and unfair competition in violation of section 43(a) of the Lanham Act, 15 U.S.C.
§1125(a)(1)(A).
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39. PIM repeats and reincorporates the allegations contained in Paragraphs 1-38
above with the same force and effect as if set forth herein.
40. Haribo’s sale of its infringing watermelon candy as described above infringes
PIM’s Trade Dress and constitutes unfair competition in violation of the common law of the
subsidiaries, affiliates, divisions, successors and assigns and all those persons or entities in active
concert or participation with any of them who receive actual notice of the injunctive order, be
candies in a confusingly similar shape and/or color combination to that protected by the PIM
Registration; and
believe that Haribo or its goods are in any way connected, affiliated or associated with PIM or its
2. Pursuant to 15 U.S.C. § 1118, that Haribo deliver up for destruction all material
brochures, signs, displays and/or stationary), within its possession, custody or control, either
directly or indirectly, that bears a package design, shape or configuration or color combination
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3. Pursuant to 15 U.S.C. § 1116(a), that Haribo be directed to file with the Court and
serve upon PIM, within thirty (30) days after entry of final judgment, a report in writing and
under oath setting forth in detail the manner and form by which it has complied with the
all gains, profits and advantages derived from its wrongful acts and to pay Plaintiff all damages
5. Pursuant to 15 U.S.C. § 1117(a), that Plaintiff recover from Haribo the greater of
three times the amount of Haribo’s profits or any damages sustained by Plaintiffs, together with
6. Pursuant to 15 U.S.C. § 1117(a), that Plaintiff recover from Haribo attorneys’ fees
7. That Plaintiff have such other and further relief as the Court deems just, equitable
and proper.
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HF 12825219v.1 06/24/2019
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Herrick, Feinstein LLP, One Gateway Center, Newark, NJ 07102
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Case 2:19-cv-14183 Document 1-2 Filed 06/24/19 Page 1 of 1 PageID: 15
Document Electronically Filed
v. RULE 11.2
DISCLOSURE STATEMENT
HARIBO OF AMERICA, INC.
Defendant.
Plaintiff, through its undersigned counsel, Herrick, Feinstein LLP, hereby certifies that
HF 12824965v.1