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krispy krunchy chicken

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									             Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 1 of 27



                          UNITED STATES DISTRICT COURT
                          EASTERN DISTRICT OF LOUISIANA

KRISPY KRUNCHY FOODS, L.L.C.,

                        Plaintiff,
                                                 Civil No. 13-cv-02985
versus
                                                 Section:
JAFAR ABUKHALIL, INC. d/b/a
QUICKY’S, J.A.Z., L.L.C. d/b/a QUICKY’S          District Judge:
DISCOUNT #2, AMEER LLC d/b/a
QUICKY’S DISCOUNT #3, FRANKLIN                   Division:
AVENUE, LLC, JAFAR ABUKHALIL,
AND IMAD ABUKHALIL,                              Magistrate Judge:

                         Defendants.


               COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES

         Krispy Krunchy Foods, L.L.C. (“KKF”) makes the following allegations of law and

fact in support of its Complaint for Injunctive Relief and Damages (“Complaint”):

                                     NATURE OF CASE

1.       The defendants have ignored months of letters instructing them to discontinue

their use of KKF’s trademark and trade dress while they sell non-KKF products.

2.       The defendants should be enjoined from the unfair competition and trade practice

arising out of their wilful infringement of KKF’s trademarks and trade dress.

3.       The Court should require the defendants to pay sums recoverable under federal

trademark law, sums representing profits obtained by passing off products under KKF’s

name.

4.       The Court should require the defendants to pay KKF for damage to its trademark

and its reputation, both of which will have to be rehabilitated in the Greater New Orleans

area and within the convenience store and quick serve restaurant industry.
           Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 2 of 27



5.     Based on the defendants’ open and defiant refusal to cease using KKF’s intellectual

property, despite repeated amicable demand by KKF, this is the exceptional case under

federal trademark law which entitles KKF to an award of attorney’s fees.

                                        PARTIES

6.     KKF is a limited liability company organized under Louisiana law. Its principal

place of business is 1615 Harris Street in Alexandria, Louisiana.

7.     Defendant, Jafar Abukhalil, Inc., is a business incorporated under Louisiana law.

Its principal place of business is 2701 Tulane Avenue in New Orleans, Louisiana and it

does business under the Louisiana-registered name “Quicky’s”. Jafar Abukhalil, Inc. will

be referred to as “Quicky’s Tulane”.

8.     Defendant, J.A.Z., L.L.C., is a limited liability company organized under Louisiana

law. Its principal place of business is 4102 Westbank Expressway in Marrero, Louisiana

and it does business under the Louisiana-registered name “Quicky’s Discount #2”. J.A.Z.,

L.L.C. will be referred to as “Quicky’s Westbank”.

9.     Defendant, Ameer LLC, is a limited liability company organized under Louisiana

law. Its principal place of business is 1535 Franklin Avenue in New Orleans, Louisiana

and it does business under the Louisiana-registered name “Quicky’s Discount #3”. Ameer

LLC will be referred to as “Quicky’s Franklin”.

10.    Defendant, Franklin Avenue, LLC, is a limited liability company organized under

Louisiana law. Its principal place of business is 1213 Wyndham N. in Gretna, Louisiana

and it owns the immovable property referred to in ¶ 9 as 1535 Franklin Avenue.




                                             2
             Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 3 of 27



11.    Defendant, Jafar Abukhalil is a natural person of the full age of majority, residing

in the Parish of Jefferson in this judicial district. He is a director or member of Quicky’s

Tulane, Quicky’s Westbank, and Quicky’s Franklin. Mr. Abukhalil is also the principal of

Franklin Avenue, LLC, which is the owner/landlord of the premises where Quicky’s

Franklin operates.

12.    Defendant, Imad Abukhalil is a natural person of the full age of majority, residing

in the Parish of Jefferson in this judicial district. He is a director or member of Quicky’s

Tulane and Quicky’s Franklin.

13.    Quicky’s Tulane, Quicky’s Westbank, Quicky’s Franklin, Franklin Avenue, LLC,

Jafar Abukhalil, and Imad Abukhalil will be collectively referred to as “Quicky’s”.

                          SUBJECT MATTER JURISDICTION

14.    This Court has original and concurrent jurisdiction over the subject matter of

KKF’s claims under:

       (a)    28 U.S.C. § 1331, which authorizes district courts to hear civil actions
              arising under Acts of Congress, such as the trademark laws of the United
              States, 15 U.S.C. §§ 1051, et seq., such as the Lanham Act;

       (b)    28 U.S.C. § 1338(a) and 15 U.S.C. §1121(a), which authorize district courts
              to hear civil actions arising under Acts of Congress related to trademarks;

       (c)    28 U.S.C. § 1338(b), which authorizes district courts to hear state law
              unfair competition claims when joined with a substantial and related claim
              under U.S. trademark laws; and

       (d)    28 U.S.C. § 1367(a) (supplemental jurisdiction over all other actions so
              related to the actions subject to this Court’s jurisdiction under (a) – (c),
              above, that they form part of the same case or controversy under Article III
              of the United States Constitution.




                                             3
              Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 4 of 27



                                 PERSONAL JURISDICTION

15.    This Court has personal jurisdiction over the defendants because each engages in

business activities in and directed at judicial district, and because the defendants

knowingly committed tortious acts against juridical persons, acts which caused harm

within this judicial district.

                                             VENUE

16.    Venue is proper in this judicial district under:

       (a)       28 U.S.C. § 1391(b)(1), in that all defendants reside in Louisiana and in this
                 judicial district; and/or

       (b)       28 U.S.C. § 1391(b)(2), in that a substantial part of the events or omissions
                 establishing claims occurred in this district; or

alternatively:

       (c)       this is a district where the defendants are subject to this Court’s exercise of
                 personal jurisdiction regarding the claims. 28 U.S.C. § 1391(b)(3).

                                        THE CHICKEN

17.    KKF provides food products to convenience stores (“C-Stores”). Established in

1993, KKF’s principals boast a combined 70 years of experience in the C-Store/food

service industry.

18.    There are more than 1000 KKF locations in 24 states. To date, KKF has opened

more than 190 locations in 2013, alone.

19.    KKF markets to the C-Store, quick-service restaurant (“QSR”) and supermarket

industries.

20.    The heart of KKF is the chicken (“Krispy Krunchy Chicken”) it provides for C-

Stores, QSRs and restaurants.
                                                4
            Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 5 of 27



21.    KKF holds Krispy Krunchy Chicken out to the industry and its customers as a

“proprietary processed bird”.

22.    KKF has distinguished itself from its competitors, who often claim a proprietary

breading or seasoning. KKF, however, offers the only C-Store chicken program with a

proprietary chicken process.

23.    KKF’s chicken process marks it as the only chicken QSR (e.g. Popeye’s) to deliver a

needle-injected, pre-marinated bird. This process results in the distinctive Cajun flavor for

which KKF is known.

24.    KKF’s proprietary process not only causes its chicken to taste better, it also results

in a 50% longer shelf life before cooking. The chicken industry knows this as Extended

Shelf Life (ESL).

25.    Further, KKF’s chicken is exclusively produced by Tyson. In the first quarter of

2013, Tyson processed nearly 400,000 pounds of chicken per week for KKF.

26.    KKF’s requirements are nearly 1% of Tyson’s entire food service chicken output.

              THE BARN AND SUN AND ASSOCIATED TRADE DRESS

27.    KKF adopted its Barn and Sun logo in 1993 and used it in commerce to sell

chicken and related food products to vendors in Louisiana and the surrounding states.

28.    Around 2006, KKF began to focus on a more national market with its products.

29.    In light of the popularity of Krispy Krunchy chicken and the Barn and Sun’s

distinctiveness, on May 5, 2010, KKF applied for federal registration of Barn and Sun as a

standard character mark on the Principal Register of the United States Patent and

Trademark Office (“USPTO”).


                                             5
               Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 6 of 27



30.       KKF’s trademark application was published for opposition on June 21, 2011.

31.       There were no oppositions and the USPTO issued KKF a certificate of registration

on September 6, 2011. 1

32.       KKF has continuously used the trademarked Barn and Sun to identify its food

products and to distinguish them from those processed and sold by others. KKF has

accomplished this by prominently displaying the Barn and Sun on food packaging,

letterheads, bills, direct mail advertising, telephone directory advertising, internet

marketing and websites, and in periodicals distributed throughout the United States.

33.       The Barn and Sun 2 is reproduced below:




34.       Every package of Tyson chicken marked with the Barn and Sun guarantees the

proprietarily-prepared product for which KKF is known.




1
    Exhibit 1 – USPTO Registration Certificate
2
    Exhibit 2 – May 5, 2010 Drawing re: Serial No. 85030446
                                                    6
               Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 7 of 27



35.       An image 3 of a typical KKF display is reproduced below:




KKF-approved displays feature multiple instances of the Barn and Sun and the “Hot and

Fresh Till Late” and “Honey Butter Biscuits” for which KKF is known.

36.       KKF is active in The Association for Convenience and Fuel Retailing (“NACS”,

formerly National Association of Convenience Stores) and is an exhibitor in their annual

convention. KKF is often highlighted for its role in industry changes in QSR programs for

use by C-Stores. KKF has been mentioned by Convenience Store Petroleum, a leading C-

Store industry publication, no less than 40 times in the last 4 years.




3
    Exhibit 3 – Sample from USPTO registry
                                               7
               Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 8 of 27



                                           THE PROGRAM

37.       The three (3) defendant Quicky’s locations participated in a “KKF Program”

through which KKF allows operators to market and sell its food products, using its C-

Store trade dress scheme.

38.       Under the KKF Program, C-Store “operators” agree to buy and use KKF

proprietary items and refrain from co-mingling them with related food items which are

not produced or approved by KKF. 4

39.       Noncompliance is typically due to the price of KKF’s chicken. Because KKF needle

marinates small, young birds at the Tyson chicken plant, they cost about $0.35/lb more

than competitors’ generic, saline-injected chickens.

40.       KKF cautions noncompliant operators that KKF’s experience is that operators who

change to the cheaper product, thinking that they will save money, always end up losing

volume . . . and that loss is usually significant.

41.       KKF reminds the noncompliant operator of its duty to remove KKF trade dress,

including the food photos, which are all the intellectual property of Krispy Krunchy.

42.       If the operator does not bring itself back into full compliance, they are then sent a

letter giving them 7 days to remove the KKF trade dress.

43.       If the “debranding” letter fails, KKF sends the former operator a letter from its

attorneys, warning them of the consequences if they fail to remove the trade dress.




4
    Exhibit 4 – Krispy Krunchy Foods, LLC Operator Letter of Understanding.
                                                    8
            Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 9 of 27



                    QUICKY’S AND KRISPY KRUNCHY CHICKEN

44.     Through the entities listed in ¶¶ 7-9, Jafar and Imad Abukhalil operate “Quicky’s”

C-Stores in the Greater New Orleans area, including Quicky’s Tulane, Quicky’s

Westbank, and Quicky’s Franklin.

                                   Quicky’s Westbank

45.     On or about March 9, 2008, Quicky’s Westbank agreed to participate in the KKF

Program. Since then, Quicky’s Westbank has displayed the KKF Program trade dress,

including a variety of Barn and Sun graphics. This display was visible from Westbank

Expressway. A typical KKF Program service station displayed KKF’s menu and the Barn

and Sun advertisements.

46.     Quicky’s Westbank’s compliance with the KKF Program was sporadic at best

beginning in September 2010.

47.     KKF retrained Quicky’s Westbank into compliance at least once, in April/May

2011.

48.     Over the next year, the store (with Quicky’s Tulane) continued its periodic non-

compliance and eventually stopped purchasing KKF products altogether.

49.     On July 5, 2012, after repeated requests by KKF for removal of KKF Program

materials, counsel for KKF wrote Quicky’s Westbank demanding it remove all KKF

advertising materials and product from the store, indicating that these were KKF’s

intellectual property. The letter explained that Quicky’s continued display would create




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            Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 10 of 27



confusion for potential consumers, many of whom would think they were buying KKF

chicken and food. 5

50.     On July 8, 2012, one of KKF’s principals emailed one of the principals of

Quicky’s, explaining that KKF sought to avoid litigation and wanted Quicky’s to take

down all trade dress used in the KKF Program. The letter explained that covering up the

Barn and Sun on the trade dress would not be sufficient. 6

51.     On April 18, 2013, undersigned counsel reiterated KKF’s demand, this time by

certified letter to the operating entity for Quicky’s Westbank as well as its principals,

personally. The letter demanded the removal/destruction of all KKF Program materials

from Quicky’s Westbank. The letter explained that KKF would seek an injunction and

civil damages for trademark infringement, unfair trade practices, penalties for willful

disregard of KKF’s rights, and attorney’s fees. The letter reiterated KKF’s earlier

explanation that covering up the Barn and Sun was not sufficient. The letter also called

upon Quicky’s Westbank to cease the sale of food products while KKF Program trade

dress was still visible at Quicky’s Westbank. 7

52.     Quicky’s Westbank still displays the all of the trade dress originally employed as

part of the KKF Program, including the Barn and Sun, along its storefront. 8 The KKF

Program menu is still displayed.

53.     To date, Quicky’s Westbank runs a food program, selling fried chicken and related

items, while it refuses to discontinue its display of KKF trade dress.


5
  Exhibit 5 – July 5, 2012 letter from Greg Mier to Quicky’s Westbank.
6
  Exhibit 6 – July 8, 2012 letter from Dan Shapiro to Quicky’s Westbank.
7
  Exhibit 7 – April 18, 2013 letter from Andrew Lilly to Quicky’s Westbank.
8
  Exhibit 8 – May 1, 2013 photographs of Quicky’s Westbank.
                                                   10
           Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 11 of 27



                                       Quicky’s Tulane

54.    On or about March 6, 2011, Quicky’s Tulane agreed to participate in the KKF

Program. Since then, Quicky’s Tulane has displayed the KKF Program trade dress,

including a variety of Barn and Sun graphics. A large billboard visible from Tulane

Avenue and Broad Street displays the KKF Logo. Several electronic displays in the store

scroll through various ads, one of which describes Quicky’s sale of KKF chicken. A

typical KKF Program service station displayed KKF’s menu and the Barn and Sun

advertisements.

55.    On or about June 15, 2012, KKF trainers discovered that Quicky’s Tulane was

ordering and selling unauthorized non-KKF chicken and other food products. 9 July 19,

2012 and August 6, 2012 inspections revealed the same. 10

56.    KKF trainers and management repeatedly warned Quicky’s Tulane that

noncompliance with KKF Program rules would result in debranding.

57.    In early July 2012, the owners of Quicky’s Tulane were informed by KKF counsel

and principals that their other store, Quicky’s Westbank, could no longer participate in

the KKF Program because of this type of noncompliance. 11

58.    On September 18, 2012, KKF’s principal emailed Quicky’s Tulane’s principal,

explaining that the June, July, and August inspections and Quicky’s Tulane’s failure to

address its noncompliance had resulted in debranding. Accordingly, Quicky’s Tulane

could no longer advertise with or sell KKF products. KKF requested that Quicky’s Tulane


9
  Exhibit 9 – June 15, 2012 photograph of non-compliant chicken at Quicky’s Tulane.
10
   Exhibits 10 and 11 – July 19, 2012 and August 6, 2012 photographs of non-compliant chicken at
Quicky’s Tulane.
11
   Exhibits 5 & 6.
                                              11
            Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 12 of 27



remove all KKF Program materials completely and within 7 days, explaining that covering

up the KKF trade dress would not suffice. 12

59.    Four months later, on or about January 24, 2013, a Quicky’s Tulane employee

told a KKF trainer that all the KKF materials would be removed by February 4, 2013. 13

60.    Another month later, on or about March 4, 2013, a KKF trainer spoke with a

Quicky’s Tulane employee and reported the following via March 4, 2013 email to KKF

management:

               I had a lengthy discussion with Tony about the removal of
               the KKC signage at all of his locations, in short I got in
               touch with the company who is making their new signs
               (Alpha Graphic 504-455-1756) and spoke to the sales
               person Kim. She will be emailing me a copy of their PO (by
               noon tomorrow, I told her that I would hold my report till
               then)) with the dates that the signs would be finished and
               ready to be installed at the Quicky's locations. Tony said
               that even if the signs weren't completed by the 20th of
               March that he would take the signs down. I told Tony at
               this point I can only report today's findings to the
               Corporate office and the decision to pursue with any legal
               action was up to our office. 14

61.    On April 18, 2013, undersigned counsel reiterated KKF’s demand, this time by

certified letter to the operating entity for Quicky’s Tulane as well as its principals,

personally. The letter demanded the removal/destruction of all KKF Program materials

from Quicky’s Tulane. The letter explained that KKF would seek an injunction and civil

damages for trademark infringement, unfair trade practices, penalties for willful disregard

of KKF’s rights, and attorney’s fees. The letter reiterated KKF’s earlier explanation that

covering up the Barn and Sun was not sufficient. The letter also called upon Quicky’s

12
   Exhibit 12 – September 18, 2012 e-mail from Dan Shapiro to Quicky’s Tulane.
13
   Exhibit 13 – January 24, 2013 e-mail between KKF trainers
14
   Exhibit 14 – March 4, 2013 e-mail from KKF trainer to KKF management
                                                  12
             Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 13 of 27



Tulane to cease the sale of food products while KKF Program trade dress was still visible

at Quicky’s Tulane. 15

62.     Quicky’s Tulane still displays the all of the trade dress originally employed as part

of the KKF Program. Most prominently, the Barn and Sun is still displayed on a large sign

visible from Tulane Avenue and Broad Street. 16 The Barn and Sun is used to promote a

call-in number for chicken takeout along the front of the store. 17 The Barn and Sun is still

used on several electronic displays in the store.

63.     To date, Quicky’s Tulane runs a food program, selling fried chicken and related

items, while it refuses to discontinue its display of KKF trade dress. 18

                                          Quicky’s Franklin

64.     On or about February 21, 2012, Quicky’s Franklin agreed to participate in the

KKF Program. Since then, Quicky’s Franklin has displayed the KKF Program trade dress,

including a variety of Barn and Sun graphics. A large electronic billboard visible from

Franklin and Claiborne Avenues advertised fried chicken using a digital Barn and Sun.

Flags along Claiborne Avenue advertised fried chicken using the Barn and Sun. The Barn

and Sun is what customers see as they walk into the multi-million dollar facility which

services the St. Roch/St. Claude/Florida neighborhoods. A typical KKF Program service

station displays KKF’s menu and the Barn and Sun were featured on nearby

advertisements. The fence separating a neighbor’s property advertises KKF Program using

the Barn and Sun.


15
   Exhibit 15 – April 18, 2013 letter from Andrew Lilly to Quicky’s Tulane.
16
   Exhibit 16 - May 1, 2013 photograph.
17
   Exhibit 17 – May 1, 2013 photograph.
18
   Exhibit 18 – March 4, 2013 photograph.
                                                    13
             Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 14 of 27



65.     Despite the fact that Quicky’s had been de-branded at its other two locations

(Westbank, Tulane) and despite the fact that it no longer ordered KKF Program items,

Quicky’s Franklin persisted in its unauthorized use of KKF trade dress in connection with

its food program.

66.     On January 30, 2013, KKF trainers requested that Quicky’s Franklin remove all

evidence of its previous participation in the KKF Program, including all trade dress.

67.     On April 18, 2013, undersigned counsel reiterated KKF’s demand, this time by

certified letter to the operating entity for Quicky’s Franklin as well as its principals,

personally. The letter demanded the removal/destruction of all KKF Program materials

from Quicky’s Franklin. The letter explained that KKF would seek an injunction and civil

damages for trademark infringement, unfair trade practices, penalties for willful disregard

of KKF’s rights, and attorney’s fees. The letter reiterated KKF’s earlier explanation that

covering up the Barn and Sun was not sufficient. The letter also called upon Quicky’s

Franklin to cease the sale of food products while KKF Program trade dress was still visible

at Quicky’s Franklin. 19

68.     Quicky’s Tulane still displays the all of the trade dress originally employed as part

of the KKF Program. Just as described in ¶ 56, the electronic billboard at Franklin and

Claiborne Avenues still advertises chicken using a digital Barn and Sun. 20 Flags along

Claiborne Avenue still advertise (KKF) fried chicken using the Barn and Sun. 21 The Barn

and Sun is still the last thing/first thing customers see as they enter Quicky’s Franklin. 22 A


19
   Exhibit 19 – April 18, 2013 letter from Andrew Lilly to Quicky’s Franklin.
20
   Exhibit 20 – May 1, 2013 photo of Quicky’s Franklin.
21
   Exhibit 21 – May 1, 2013 photo of Quicky’s Franklin.
22
   Exhibit 22 – May 1, 2013 photo of Quicky’s Franklin.
                                                    14
                Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 15 of 27



typical KKF Program service station still displays KKF’s menu and the Barn and Sun are

still featured on nearby advertisements. The fence separating a neighbor’s property is still

used to advertise KKF Program food, advertisements which include the Barn and Sun. 23

69.       To date, Quicky’s Tulane runs a food program, selling fried chicken and related

items, while it refuses to discontinue its display of KKF trade dress.

                              QUICKY’S REFUSES TO COOPERATE

70.       With one exception – its attempt (an approach disapproved by KKF) to obscure

the Barn and Sun on inside menus by placing a “Quicky’s chicken” sign over one small

portion of the trade dress – Quicky’s has wholly ignored KKF’s requests and demands

regarding KKF’s intellectual property.

71.       Despite KKF’s request in its April 18, 2013 letter, Quicky’s has not tried to contact

KKF or its lawyer to resolve this matter or provide any assurances.

                             THE EFFECT OF QUICKY’S BEHAVIOR

72.       Quicky’s unauthorized use of KKF Program advertisements and trade dress,

including the Barn and Sun:

          (a)     is likely to cause confusion, to cause mistake, or to deceive customers and

                  potential customers of each party, at least as to some affiliation, connection

                  or association of Quicky’s with KKF, or as to the origin, sponsorship, or

                  approval of the Quicky’s food program by KKF;

          (b)     falsely designates the origin of Quicky’s food program and the products

                  Quicky’s sells;


23
     Exhibit 23 – May 1, 2013 photo of Quicky’s Franklin.
                                                     15
             Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 16 of 27



       (c)     enables Quicky’s to trade on and receive the benefit of the goodwill built up

               at great labor and expense by KKF;

       (d)     allows Quicky’s to gain acceptance for their products and services on KKF’s

               reputation and goodwill and the recognition of the Barn and Sun;

       (e)     is likely to (and already has) dilute(d) (by blurring and tarnishing) the

               distinctive quality of the Barn and Sun; and

       (f)     continues to divert profits from KKF while unjustly enriching Quicky’s.

73.    Unless Quicky’s is restrained by this Court, its disregard for KKF’s intellectual

property will continue and it will continue to cause irreparable injury to KKF and to the

public for which there is no adequate remedy at law.

                 UNWANTED NATIONAL ATTENTION AT TULANE

74.    On November 30, 2012, Quicky’s Tulane was responsible for having a New

Orleans Emergency Medical Services (“EMS”) ambulance immobilized (“booted”) as

paramedics attended to a customer in Quicky’s. 24

75.    The situation drew intense media scrutiny, 25 particularly when it was revealed that

Quicky’s was not legally permitted to boot in its parking lot. 26

76.    Months after Quicky’s Tulane had been de-branded and ordered to remove all

KKF trade dress, that same trade dress was featured prominently in local, regional, and

national news media in connection with the booting of an ambulance which delayed

emergency treatment of a man with life-threatening chest pains.


24
   http://www.wwltv.com/news/eyewitness/brendanmccarthy/Ambulance-gets-booted-while-tending-to-
emergency-181631351.html
25
   http://www.wwltv.com/news/local/orleans/EMS-boot-181879731.html
26
   http://www.wwltv.com/news/conveniencestorenotlicensedtoboot-182092301.html
                                                16
           Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 17 of 27



77.    Various media outlets relayed the story; almost all used the photograph

reproduced below, complete with the Barn and Sun which Quicky’s Tulane had been

ordered to remove months earlier:




                    SOLIDARY LIABILITY AMONG DEFENDANTS

78.    The three Quicky’s stores are owned by the same principals. These individuals

have taken a deliberate course of action. They have collectively ignored KKF’s demands,

warnings, and threats of legal action. Together, they have meaningfully violated federal

and state trademark and unfair competition laws and they should now be required to

account for the resulting damages in solido under Louisiana Civil Code Article 2324,

which provides for solidary liability among joint conspirators of intentional torts.

                                   COUNT ONE
                     FEDERAL TRADEMARK INFRINGEMENT
             15 U.S.C. §§ 1114, 1125 (§§ 32, 43 OF THE LANHAM ACT)

79.    KKF incorporates by reference all of the allegations contained in the preceding

paragraphs of the Complaint as though they were reproduced fully.


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            Case 2:13-cv-02985 Document 1 Filed 05/14/13 Page 18 of 27



80.    KKF owns the federal rights to the Barn and Sun.

81.    Quicky’s is not an authorized user.

82.    The trade dress and Barn and Sun being used at the Quicky’s locations are not just

similar to or likely to be confused with the Barn and Sun, they are the actual trademark

and associated trade dress used in the KKF Program, under which Quicky’s now sells its

own, completely unrelated, chicken products – in the same locations and to the same

people it once sold KKF’s proprietary products.

83.    Quicky’s is using KKF’s Barn and Sun to prey upon a relatively unsophisticated

clientele, customers who often are hamstrung by geography and the lack of a nearby

grocery store selling hot prepared foods.

84.    Quicky’s sells inferior products under KKF’s Barn and Sun, a brand identity which

took considerable time, effort, and expense to establish.

85.    C-Store QSR programs serve food to a wide variety of mobile customers, many of

whom are engaged in interstate commerce. Each Quicky’s is situated along major traffic

veins along which considerable interstate commerce passes through Louisiana. Since many

QSR programs in C-Stores accept state and federal assistance program payments,

Quicky’s seemingly intrastate transactions have a real tendency to affect interstate

commerce.

86.    Quicky’s unauthorized use of the Barn and Sun touches on every principle

underlying federal infringement provisions, namely: 1) it retards KKF customers of their

ability to identify the products they have grown to love; 2) it robs KKF of the




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considerable goodwill it has built since it first used the Barn and Sun; and 3) it results in

distorted competition in the QSR and C-Store chicken marketplace.

                                      COUNT TWO
                     COMMON LAW TRADEMARK INFRINGEMENT
                       15 U.S.C. § 1125 (§ 43 OF THE LANHAM ACT)

87.    KKF incorporates by reference all of the allegations contained in the preceding

paragraphs of the Complaint as though they were reproduced fully.

88.    Continuously since 1993, KKF has used the Barn and Sun, “Honey Butter

Biscuits” and the Krispy Krunchy name to identify its food products and to distinguish

them from those processed and sold by others by prominently displaying the Barn and

Sun on food packaging, letterheads, bills, direct mail advertising, telephone directory

advertising, internet marketing and websites, and in periodicals distributed throughout

the United States.

89.    The Barn and Sun, Honey Butter Biscuits, and the Krispy Krunchy name are

inherently distinctive marks and KKF’s use has given them secondary meanings to

consumers in the Greater New Orleans Area, where Quicky’s still displays this dress

without permission. These items represent a uniquely-flavored and prepared product and

a certain consistency and freshness which consumers expect from KKF-branded and

prepared foods.

90.    The association created by Quicky’s unauthorized use is likely to cause confusion

in New Orleans consumers. The hallmark of infringement, confusion is inevitable where

the dress being utilized is more than merely similar or confusing – it is the same dress no

longer authorized for use by Quicky’s.


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                            COUNT THREE
 UNFAIR COMPETITION – PASSING OFF OR FALSE DESIGNATION OF ORIGIN
             15 U.S.C. § 1125 (§ 43 OF THE LANHAM ACT)

91.   KKF incorporates by reference all of the allegations contained in the preceding

paragraphs of the Complaint as though they were reproduced fully.

92.   Quicky’s infringement on KKF’s Barn and Sun and associated trade dress can only

be explained as intentional and deceptive. The only explanation for Quicky’s repeated

refusal to respond to KKF’s demands is that Quicky’s designs to fool the public into

believing the food products it sells are made by, approved by, sponsored by or affiliated

with KKF.

93.   Quicky’s status as a C-Store in or around major thoroughfares places its activity

squarely within the stream of interstate commerce contemplated by the Lanham Act.

94.   The fact that the same trade dress and Barn and Sun were used – and not merely

dress or logos confusingly similar – establishes both direct false representation and

common law attribution under § 43(a) of the Lanham Act.

95.   Under the circumstances and given KKF’s repeated demands to discontinue these

displays, Quicky’s continued abuse of the Barn and Sun (and associated trade dress) can

only be viewed as its wilful intent to pass off, palm off, or attribute its menu items for

those of KKF, defrauding the paying customer and harming KKF.

                                   COUNT FOUR
                        FEDERAL TRADEMARK DILUTION
                 15 U.S.C. §1125(c) (§43(c) OF THE LANHAM ACT)

96.   KKF incorporates by reference all of the allegations contained in the preceding

paragraphs of the Complaint as though they were reproduced fully.

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97.    The Barn and Sun is a strong and distinctive mark long used in connection with

KKF food products. The subject of meaningful advertising, the Barn and Sun has been

used and advertised throughout the United States and is widely recognized by its

consumers and those in the C-Store and QSR industry. It is in substantial and exclusive

use by KKF and its Program participants and it is federally registered, as alleged above.

KKF’s Barn and Sun is recognized by the general consuming public of the United States as

designation of source for KKF’s goods and is therefore a famous mark. Quicky’s acts were

commenced while KKF’s Barn and Sun had already become famous.

98.    Quicky’s has used Barn and Sun as a mark or trade name with food products it has

sold and transported in interstate commerce. Quicky’s unauthorized use of the Barn and

Sun creates more than just a likelihood of association with KKF as the marks are 100%

identical.

99.    Quicky’s is in violation of § 43(c) of the Lanham Act in that Quicky’s display of

the Barn and Sun and associated trade dress is likely to cause dilution by blurring by

impairing the distinctiveness of the Barn and Sun, all to the irreparable injury and damage

of KKF.

100.   Quicky’s is also in violation of § 43(c) of the Lanham Act in that Quicky’s display

of the Barn and Sun and associated trade dress is likely to cause dilution by tarnishment

by harming the reputation of the Barn and Sun, all to the irreparable injury to and

damage of KKF.

101.   Having been warned multiple times and cautioned to take these materials down,

Quicky’s should be deemed to have committed these acts wilfully and intended to create


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an association between its products and the Barn and Sun. Quicky’s refusal to cease its

display betrays its wilful intent to trade on the recognition of the Barn and Sun and to

harm its reputation with KKF’s.

                               COUNT FIVE
   UNFAIR COMPETITION – TRADE DRESS INFRINGEMENT AND DILUTION
            15 U.S.C. § 1125(c) (§43(a) OF THE LANHAM ACT)

102.   KKF incorporates by reference all of the allegations contained in the preceding

paragraphs of the Complaint as though they were reproduced fully.

103.   Quicky’s continued and unauthorized use of the KKF Program advertisement

materials infringes on intellectual property which has become protected under the

Lanham Act § 43; i.e. apart from the Barn and Sun, all trade dress which accompanies the

KKF Program materials and which, even apart from the Barn and Sun, has taken on a

distinctive identity linking the dress to KKF products.

104.   Quicky’s has no legitimate reason to use these inherently distinctive materials, and

which have also acquired a secondary meaning (e.g. Honey Butter Biscuits).

105.   Rather, Quicky’s can (and should be required to) accomplish its food program

using materials it creates and without the assistance of KKF’s protected trade dress.

106.   The KKF trade dress being infringed upon and diluted is not vital to the function

of Quicky’s food program and is only being used for improper purposes.

                                     COUNT SIX
                  UNFAIR COMPETITION – FALSE ADVERTISING
                  11 U.S.C. § 1125 (§43(a) OF THE LANHAM ACT)

107.   KKF incorporates by reference all of the allegations contained in the preceding

paragraphs of the Complaint as though they were reproduced fully.

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108.   Quicky’s use of the Barn and Sun and associated KKF trade dress amounts to a

false or misleading statement about Quicky’s food program and the products it prepares

and sells.

109.   This use has deceived or could deceive a substantial segment of the consumer base

in and around the Quicky’s Tulane, Westbank, and Franklin stores.

110.   The deception which occurred was material and likely influenced those consumers’

decisions about whether to buy Quicky’s food program items.

111.   By its nature as a C-Store/gas station in close proximity to major thoroughfares

with high traffic volume, Quicky’s marketing is directed toward introducing (and does in

fact introduce) products into the stream of interstate commerce.

112.   KKF has been directly harmed in two ways by this advertisement. First, but for this

type of unfair competition, Quicky’s would be required to participate in the KKF Program

to benefit from KKF’s name and reputation. Second, KKF’s sales will suffer when its name

becomes linked (at least in the local marketplace) with an inferior or markedly different

product than that with which previous KKF consumers were familiar.

                                COUNT SEVEN
                          TRADEMARK INFRINGEMENT
                      LOUISIANA REVISED STATUTES § 51:222

113.   Under the same facts alleged in Count One, Quicky’s actions amount to

infringement of the Barn and Sun under Louisiana trademark law.




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                          COUNT EIGHT
       TRADEMARK DILUTION AND INJURY TO BUSINESS REPUTATION
               LOUISIANA REVISED STATUTES § 51:223.1

114.   Under the same facts alleged in Counts Four and Five, Quicky’s actions have

caused dilution (“dilution by blurring”) of KKF’s brand, the Barn and Sun, and associated

trade dress, and injury to KKF’s business reputation (“dilution by tarnishment”) under

Louisiana trademark law.

                            COUNT NINE
       UNFAIR COMPETITION – FALSE ADVERTISING AND PASSING OFF
           LOUISIANA REVISED STATUTES §§ 51:1405 AND 51:411

115.   Under the same facts alleged in Counts Three and Six, Quicky’s unauthorized

advertising of KKF chicken and foods at their locations amounts to passing off and is the

type of false advertising prohibited by Louisiana Revised Statutes § 51:411. It is also

unfair competition under Louisiana’s Unfair Trade Practices and Consumer Protection

Law. LA. REV. STAT. ANN. § 51:1405.

                                 COUNT TEN
                             UNJUST ENRICHMENT
                      LOUISIANA CIVIL CODE ARTICLE 2298

116.   Under the facts alleged, Quicky’s unauthorized advertising of KKF chicken and

foods at their locations has allowed Quicky’s to be enriched without cause, at the expense

of KKF, its name, the Barn and Sun, and its trade dress, all in violation of the quasi-

contractual provisions of Louisiana’s Civil Code. LA. CIV. CODE ANN. art. 2298.

                             COUNT ELEVEN
                 LANDLORD LIABILITY AT QUICKY’S FRANKLIN

117.   Although its principal (Jafar Abukhalil) is also responsible as a co-conspirator of

an intentional tort against KKF, the owner/landlord (Franklin Avenue, LLC) of the
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property/building at the Franklin location should held responsible because it knowingly

permitted and/or actively participated in abusing KKF’s federally-protected intellectual

property at Quicky’s Franklin.

                              COUNT TWELVE
                   WILFUL, KNOWING, BAD FAITH VIOLATIONS

118.   Quicky’s has been repeatedly notified, by two KKF attorneys, KKF’s principal, and

various KKF trainers and marketing agents, that the Barn and Sun, trade dress, and all

other KKF materials, KKF Program and otherwise, be removed from the stores and that

KKF products are no longer authorized for use or sale at Quicky’s locations.

119.   Quicky’s has been put on notice of the legal consequences of its use of KKF’s

intellectual property.

120.   Quicky’s has repeatedly ignored these requests and should accordingly be deemed

to have intended to cause confusion, mistake, or deception with their willful, knowing,

and bad faith violations of federal and state provisions, all of which qualifies this as the

“exceptional case” contemplated by 11 U.S.C. § 1117(a).

                                COUNT THIRTEEN
                  PRELIMINARY AND PERMANENT INJUNCTIONS
                      15 U.S.C. § 1116 AND FED. R. CIV. P. 65

121.   Based on the reputational nature of the damages suffered as a direct and proximate

result of Quicky’s acts, KKF has been damaged, and unless Quicky’s is restrained and

permanently enjoined by this Court, KKF will continue to suffer serious, irreparable

injury, including a permanent loss of the goodwill associated with KKF, its chicken and

food, and the Barn and Sun, all of which cannot be sufficiently or timely addressed by the

grant of legal remedies.
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                             COUNT FOURTEEN
                     DESTRUCTION OF INFRINGING ARTICLES
                               15 U.S.C. § 1118

122.   Quicky’s has systematically and repeatedly engaged in trademark infringement (15

U.S.C. §1114); and unfair competition by passing off; and trade dress infringement; and

false advertising (15 U.S.C. § 1125), and a willful violation of federal anti-dilution laws

(15 U.S.C. § 1125(c)). This Court is entitled to order Quicky’s to deliver up and destroy

all KKF Program materials, all instances of the Barn and Sun, any associated trade dress,

and all food and related products. 11 U.S.C. § 1118.

                                      PRAYER FOR RELIEF

123.   INJUNCTIVE RELIEF: KKF prays that a preliminary and permanent injunction

issue immediately and without bond enjoining Quicky’s from any use or display of KKF

Program materials, including without limitation the Barn and Sun and all associated trade

dress, all as contemplated by 15 U.S.C. §§ 1116(a) and 1125(c)(1),(5); and

124.   INJUNCTIVE RELIEF: KKF prays that the Court immediately order Quicky’s to

deliver up and destroy all KKF Program materials, including but not limited to all

instances of the Barn and Sun and any associated trade dress and all food and related

products, as authorized by 15 U.S.C. § 1118; and

125.   LEGAL RELIEF: After a trial on all issues raised by this Complaint save injunctive

relief, KKF respectfully prays for:

       (a)   an immediate accounting by Quicky’s to the Court and KKF of all profits
       obtained during the period of unauthorized display of KKF Program materials,
       Barn and Sun, and associated trade dress, all as contemplated by 15 U.S.C.
       §1117(a);



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       (b)   an award of the amount equal to the profits identified by the accounting
       ordered in (a), above, according to 15 U.S.C. § 1117(a)(1);

       (c)    an award of treble the damages sustained by KKF in the marketplace(s)
       which resulted from Quicky’s common law and statutory trademark infringement,
       federal and common law trademark and related trade dress infringement and
       dilution; federal unfair competition (passing off, false designation of origin, false
       advertising), including without limitation the cost of rehabilitative advertising to
       mitigate the damage caused by Quicky’s tortious conduct, as contemplated by 15
       U.S.C. § 1117(a);

       (d)     judicial interest on the damages awarded in (c), above;

       (e)    an award of the costs associated with this action as provided for by 15
       U.S.C. 1117(a);

       (f)   an award for attorney’s fees based on the exceptional and abusive nature of
       Quicky’s refusal to discontinue using KKF’s intellectual property for its own gain.

126.   All other relief, whether legal or equitable, deemed appropriate by this Honorable

Court, all premises considered.


Dated this 14th day of May, 2013.

                                           Respectfully submitted,

                                           ______________________
                                           Andrew T. Lilly (La. #32559)
                                           307 Exchange Alley, Third Floor
                                           New Orleans, Louisiana 70130
                                           Telephone: (504) 812-6388
                                           Facsimile:   (504) 539-4180
                                           e-mail:      andrew@atlpllc.com

                                           Attorney for Krispy Krunchy Foods, L.L.C.




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