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Eko Brands, LLC v. Adrian Rivera Maynez Enterprises Inc.

United States District Court, W.D. Washington, Seattle

September 11, 2019

EKO BRANDS, LLC, Plaintiff,
v.
ADRIAN RIVERA MAYNEZ ENTERPRISES, INC.; and ADRIAN RIVERA, Defendants. Expert/ Witnesses Contact Information Content of Testimony Will Testify May Testify

          David A. Lowe, WSBA No. 24, 453, Lawrence D. Graham, WSBA No. 25, 402, LOWE GRAHAM JONES PLLC Attorneys for Plaintiffs

          Kenneth R. Davis II LANE POWELL PC, Attorneys for Defendants

          PRETRIAL ORDER

          Thomas S. Zilly, United States District Judge

         Pursuant to Local Civil Rule (“LCR”) 16(h) and this Court's scheduling order (Dkt. 68), Plaintiff Eko Brands, LLC (“Eko”) and Defendants Adrian Rivera Maynez Enterprises, Inc. and Adrian Rivera (collectively “ARM”) submit their Joint Pretrial Statement.

         A. FEDERAL JURISDICTION

         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.

         B. Eko's CLAIMS

         1. ARM has, without consent of Eko, used in commerce a reproduction, counterfeit, copy and/or colorable imitation of Eko s registered EKOBREW and ekobrew trademarks in connection with 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, including by unauthorized adoption and use of ECO___marks, including without limitation ECO-FILL (including ECO-FILL DELUXE, ECO-FILL DELUXE 2.0 and ECO-FILL MAX), ECO CARAFE, ECO FLOW, ECO-PURE, ECO-FILTER and ECOSAVE.

ARM OBJECTION: ARM objects to Eko's inclusion of the ECO-FILTER, ECO-PURE and ECOSAVE marks as included in this lawsuit. Eko's Complaint only includes the ECO-FILL, ECO-FLOW and ECO CARAFE marks. These same three marks were included in Eko's interrogatories propounded in 2018. Although the interrogatory definitions referred vaguely to “any form of the marks visually or phonetically similar thereto, ” in May 2018, ARM specifically objected to these definitions as vague (in multiple places) and stated that “It is not clear what Plaintiff means.” ARM asserted that “ARM interprets the ‘Accused Products' to be those listed in the definitions.” Eko never moved to compel or otherwise sought additional information regarding any other products. In addition, Eko never sought to amend its complaint. Therefore, only the ECO-FILL, ECO-FLOW and ECO CARAFE marks are at issue. ARM will not repeat this objection again but note that this applies to all instances where any other mark is improperly included.
EKO RESPONSE: Eko's position is that the ECO-FILTER, ECO-PURE and 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___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 0kpOTBW Trademarks;” ¶ 40 “Defendants have engaged in false designation of origin and unfair competition by knowingly and willfully creating an affiliation or connection trademarks;” VI(1), (2) seeking injunction, destruction and damages against “ECO-FILL, ECO-FILL DELUXE 2.0, ECO CARAFE and ECO-FLOW marks, or any other marks confusingly similar thereto.”) Eko's April 18, 2018 discovery requests broadly sought information and documents pertaining to “any form of the [ECO ] marks visually or phonetically similar thereto.” At the time of ARM's response, it had not yet adopted or used in commerce the three new ECO-FILTER, ECO-PURE and ECOSAVE marks. But by the date of the parties' agreed supplementation on August 8, 2019, use of these new infringing marks had begun, and ARM knew that these new marks were at issue at that time. Indeed, ARM clearly recognized this when it (not Eko) properly included “Eco-anything” in the August 8, 2019 supplement, and provided financial information for the ECO-FILTER, ECO-PURE and ECOSAVE branded products. Eko is not aware of any authority requiring Eko to amend its complaint to include derivative infringing marks adopted by ARM since commencement of the lawsuit and were specifically anticipated in the complaint. But even if that were the case, under these circumstances, particularly given that ARM sought to hide its adoption and use of these marks from Eko by withholding required discovery supplementation, the Court can readily grant any required amendment to insure their inclusion. E.g., Benchmark Young Adult Sch., Inc. v. Launchworks Life Servs., LLC, 2014 U.S. Dist. LEXIS 91136 (S.D. Ca. 2014).

         2. ARM has 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, including by unauthorized adoption and use of ECO____marks, including without limitation ECO-FILL (including ECO-FILL DELUXE, ECO-FILL DELUXE 2.0 and ECO-FILL MAX), ECO CARAFE, ECO FLOW, ECO-PURE, ECO-FILTER and ECOSAVE.

         3. Eko seeks a permanent injunction against ARM 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 marks, including without limitation ECO-FILL (including ECO-FILL DELUXE, ECO-FILL DELUXE 2.0 and ECO-FILL MAX), ECO CARAFE, ECO FLOW, ECO-PURE, ECO-FILTER and ECOSAVE, 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.

         4. Eko seeks an order that ARM 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 ECO marks, including without limitation ECO-FILL (including ECO-FILL DELUXE, ECO-FILL DELUXE 2.0 and ECO-FILL MAX), ECO CARAFE, ECO FLOW, ECO-PURE, ECO-FILTER and ECOSAVE, 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

         5. Eko seek cancellation of U.S. Registration Nos. 4239190, 4796840, 5741858 and U.S. Application Nos. 88434433 and 88434459.

         6. Eko seeks an award of damages sufficient to compensate Eko for all injury sustained as a result of ARM's wrongful trademark infringement and Lanham Act violation, including wrongful profits of ARM, pursuant to 15 U.S.C. § 1117 and other applicable law.

         7. Eko also seeks 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, along with prejudgment interest and costs.

         C. ARM'S DEFENSES

         1. Laches based on Eko's delay in bringing suit and resulting prejudice. Eko knew or should have known of ARM's ECO-FILL mark at least as early as 2012 when ARM's ECO-FILL mark registered with the U.S. Trademark Office. Eko's five year delay in bringing suit is well beyond the presumption period for the application of laches ...


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