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					            Case 1:13-cv-00891-SS Document 1 Filed 10/04/13 Page 1 of 13



                       IN THE UNITED STATES DISTRICT COURT
                        FOR THE WESTERN DISTRICT OF TEXAS
                                  AUSTIN DIVISION

BEANITOS, INC.                                 §
                                               §
       Plaintiff,                              §
                                               §
v.                                             §              Civil Action No. 1:13-cv-891
                                               §
LITTLE BEAR ORGANIC FOODS, INC.;               §
and THE HAIN CELESTIAL GROUP INC.,             §
                                               §
       Defendants.                             §

                          PLAINTIFF’S ORIGINAL COMPLAINT

       Plaintiff Beanitos, Inc. (“Plaintiff”) files this Original Complaint against Defendants

Little Bear Organic Foods, Inc. (“Little Bear”) and The Hain Celestial Group Inc. (“Hain

Celestial”) (Little Bear and Hain Celestial are sometimes referred to herein collectively as

“Defendants”), and respectfully shows the Court as follows:

                                               I.
                                           PARTIES

       1.      Plaintiff Beanitos, Inc. is a Delaware corporation with its principal place of

business at 3006 Bee Caves Road, Suite A-315, Austin, Texas 78746.

       2.      Upon information and belief, Defendant Little Bear Organic Foods, Inc. is a

California corporation with its principal place of business at 1065 East Walnut Street, Carson,

California 90746, or c/o The Hain Celestial Group Inc., 1111 Marcus Avenue, Lake Success,

New York 11042.

       3.      Upon information and belief, Defendant The Hain Celestial Group Inc. is a

Delaware corporation with its principal place of business at 1111 Marcus Avenue, Lake Success,

New York 11042, or 58 South Service Road, Melville, New York 11747.




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                                                 II.
                                           JURISDICTION

A.     Subject Matter Jurisdiction

       4.      The Court has subject matter jurisdiction because this action arises under the

Declaratory Judgment Act, 28 U.S.C. §§ 2201 & 2202, and the Lanham Act, 15 U.S.C. §§ 1051

et seq. See 28 U.S.C. §§ 1331 (federal question jurisdiction) & 1338(a)-(b) (trademark and

unfair competition jurisdiction). Additionally and/or alternatively, this Court has subject matter

jurisdiction because there is complete diversity between the parties and the amount in

controversy exceeds $75,000.00. 28 U.S.C. § 1332 (diversity jurisdiction).

B.     Personal Jurisdiction: Little Bear

       5.      Upon information and belief, this Court has personal jurisdiction over Little Bear,

a nonresident, because it has established minimum contacts with the State of Texas, and the

exercise of jurisdiction over it does not offend traditional notions of fair play and substantial

justice, as Little Bear does business in Texas through its contracting with one or more Texas

residents for performance in whole or in part in Texas. See TEX. CIV. PRAC. & REM. CODE §

17.042; see also Fed. R. Civ. P. 4(k)(1)(A) (“[s]erving a summons … establishes personal

jurisdiction over a defendant … who is subject to the jurisdiction of a court of general

jurisdiction in the state where the district court is located”). More specifically, upon information

and belief, Little Bear has at all relevant times knowingly provided, licensed and/or marketed its

goods to Texas residents under the marks and trademark registrations giving rise to this lawsuit;

and the controversies and claims alleged herein arise out of or relate to such activities.

       6.      Little Bear may be served with process as provided under FED. R. CIV. P. 4(c),

4(e)(1), and 4(h)(1), as effected pursuant to TEX. R. CIV. P. 106(a)(2) and 108 being the state law

for serving a summons upon non-residents in an action brought in the courts of general



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jurisdiction in the state where the district court is located, by U.S. Certified Mail, Return Receipt

Requested to the last known residence, usual place of business or registered office of Little

Bear’s registered agent in California (Little Bear’s state of incorporation), Corporation Service

Company d/b/a CSC – Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Suite 150N,

Sacramento, California 95833. The foregoing name and address of Little Bear’s registered agent

is derived from information registered with the California Secretary of State.

       7.      Additionally and/or alternatively, Little Bear may be served with process as

provided under FED. R. CIV. P. 4(c), 4(e)(1) and 4(h)(1)(A), as effected pursuant to the Texas

Long-Arm Statute being the state law for serving a summons in an action brought in the courts of

general jurisdiction in the state where the district court is located, by service through the Texas

Secretary of State, 1019 Brazos Street, Austin, Travis County, Texas 78701, which shall forward

process to Little Bear’s home or home office at 1065 East Walnut Street, Carson, California

90746, or c/o The Hain Celestial Group Inc., 1111 Marcus Avenue, Lake Success, New York

11042, by U.S. Certified Mail, Return Receipt Requested. TEX. CIV. PRAC. & REM. CODE §§

17.044(a)-(b), 17.045(a); see TEX. R. CIV. P. 106(a)(2), 108. The Texas Secretary of State serves

as Little Bear’s agent for service of process because Little Bear, a non-resident, has engaged in

business in Texas from which this lawsuit arises, but has not designated or maintained a resident

agent for service of process in Texas and/or does not maintain a regular place of business in

Texas. The foregoing address of Little Bear’s home or home office is derived from information

registered with the California Secretary of State and the U.S. Patent & Trademark Office.

C.     Personal Jurisdiction: Hain Celestial

       8.      Upon information and belief, this Court has personal jurisdiction over Hain

Celestial, a nonresident, because it has established minimum contacts with the State of Texas,

and the exercise of jurisdiction over it does not offend traditional notions of fair play and


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substantial justice, as Hain Celestial does business in Texas through its contracting with one or

more Texas residents for performance in whole or in part in Texas, and/or through its registration

as a foreign filing entity in Texas. See TEX. CIV. PRAC. & REM. CODE § 17.042; see also Fed. R.

Civ. P. 4(k)(1)(A) (“[s]erving a summons … establishes personal jurisdiction over a defendant

… who is subject to the jurisdiction of a court of general jurisdiction in the state where the

district court is located”). More specifically, upon information and belief, Hain Celestial, either

itself or through its wholly-owned subsidiary Little Bear, has at all relevant times knowingly

provided, licensed and/or marketed its goods to Texas residents under the marks and trademark

registrations giving rise to this lawsuit; and the controversies and claims alleged herein arise out

of or relate to such activities. Also, Hain Celestial has availed itself of this jurisdiction by

registering with the Texas Secretary of State as a foreign entity doing business in Texas.

       9.      Hain Celestial may be served with process as provided under FED. R. CIV. P. 4(c),

4(e)(1), and 4(h)(1), as effected pursuant to TEX. R. CIV. P. 106(a)(2) and 108 being the state law

for serving a summons upon non-residents in an action brought in the courts of general

jurisdiction in the state where the district court is located, by U.S. Certified Mail, Return Receipt

Requested to the last known residence, usual place of business or registered office of Hain

Celestial’s registered agent in Texas, Corporation Service Company d/b/a CSC–Lawyers

Incorporating Service Company, 211 E. 7th Street, Suite 620, Austin, Texas 78701. See TEX.

BUS. ORGS. CODE § 5.201(b)(1) (registered agent of a foreign filing entity). The foregoing name

and address of Hain Celestial’s registered agent is derived from information registered with the

Texas Secretary of State.

                                                III.
                                              VENUE

       10.     Venue is proper in this judicial district because a substantial part of the events or



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omissions giving rise to the claims occurred, or a substantial part of the property that is the

subject of the action is situated, in this judicial district. 28 U.S.C. § 1391(b)(2).

                                                  IV.
                                       STATEMENT OF FACTS

A.     Plaintiff’s Marks

       11.      Plaintiff manufactures and distributes various food items made primarily from

beans, such as bean dips, processed beans, soy chips, and vegetable chips.

       12.      Plaintiff, through years of substantial and continuous use, has acquired valuable

trademark rights and associated goodwill in the word mark BEANITOS and stylized versions

thereof for use in connection with the food items it manufactures and distributes (collectively

“Plaintiff’s Marks”).

       13.      In connection with Plaintiff’s Mark’s, Plaintiff owns a valid and subsisting federal

trademark registration on the Principal Register, U.S. Registration No. 3,765,235, issued on

March 23, 2010, in Class 29 for “bean dip; processed beans; soy chips; [and] vegetable chips”

(the “‘235 Registration”). The following is an illustration of the mark made subject to the ‘235

Registration:




       14.      Plaintiff’s trademark rights in and to Plaintiff’s Marks are protected through

common law rights and the Registration. As such, Plaintiff has the exclusive right to use

Plaintiff’s Marks.

       15.      Within the past year, Plaintiff has sought to further protect its trademark rights in


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Plaintiff’s Marks by applying for additional federal trademark registrations of Plaintiff’s Marks.

Two of those applications are specifically at issue in this lawsuit.

        16.     The first application is U.S. Serial No. 85/759,058 for registration of the word

mark BEANITOS in Class 29 for “bean dip, processed beans, soy chips, and vegetable chips”,

and in Class 30 for “salsas, breads, tortillas, and taco shells” (the “‘058 Application”). As of the

filing of this pleading, the U.S. Patent & Trademark Office has approved the ‘058 Application

for registration on the Principal Register, provided that there is no outstanding opposition to said

application, and provided further that Plaintiff timely files a statement of use in support of said

application (as the ‘058 Application is a so-called “intent to use” application).

        17.     The second application is U.S. Serial No. 85/759,054 for registration of the

composite mark BEANITOS in Class 29 for “bean dip, processed beans, soy chips, and

vegetable chips”, and in Class 30 for “salsas, breads, tortillas, and taco shells” (the “‘054

Application”). The following is an illustration of the mark made subject to the ‘054 Application:




As of the filing of this pleading, the U.S. Patent & Trademark Office has approved the ‘054

Application for registration on the Principal Register, provided that there is no outstanding

opposition to said application, and provided further that Plaintiff timely files a statement of use

in support of said application (as the ‘054 Application is a so-called “intent to use” application).

B.      Defendants and Their Marks

        18.     Upon information and belief, Little Bear is a wholly-owned subsidiary of Hain

Celestial.

        19.     Upon information and belief, Little Bear and/or Hain Celestial manufactures,



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distributes and markets various food items under the brand name BEARITOS (collectively, the

“Bear Marks”). In connection therewith, Little Bear and/or Hain Celestial owns three federal

trademark registrations on the Principal Register.

       20.        The first registration is U.S. Registration No. 2,041,555, issued March 4, 1997,

for “popped popcorn; pretzels; salsa; taco shells; licorice; and chewy fruit candies” (the “‘555

Registration”).

       21.        The second registration is U.S. Registration No. 1,905,765, issued on July 18,

1995, for “baked beans, refried beans, chili, bean dip and soup” (the “‘765 Registration”).

       22.        The third registration is U.S. Registration No. 1,459,418, issued on September 29,

1987, for “prepackaged tortilla chips made from organically grown corn” (the “‘418

Registration”).

C.     The Parties’ Dispute

       23.        Plaintiff does not view Plaintiff’s Marks as being confusingly similar to or

dilutive of the Bear Marks. Upon information and belief, neither do consumers.

       24.        Moreover, the U.S. Patent & Trademark Office examining attorney who reviewed

the ‘058 and ‘054 Applications and approved them for publication in the Official Gazette did not

find any marks in the U.S. Patent & Trademark Office’s database of registered and pending

marks – including the Bear Marks – that would bar registration under section 2(d) of the Lanham

Act, 15 U.S.C. § 1052(d). The U.S. Patent & Trademark Office examining attorney who issued

the ‘235 Registration also did not find any conflicting marks – including the Bear Marks –

barring said registration under 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). In other words,

upon information and belief, the U.S. Patent & Trademark Office does not view Plaintiff’s

Marks as being confusingly similar to or dilutive of the Bear Marks.

       25.        Nonetheless, on or about October 2, 2013, Defendants instituted an opposition


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proceeding before the Trademark Trial & Appeal Board in an effort to block the ‘058 and ‘054

Applications from maturing into federal trademark registrations (the “Opposition Proceeding”).

Little Bear Organic Foods, Inc. v. Beanitos, Inc., Opposition No. TO BE ASSIGNED, (T.T.A.B.

filed Oct. 2, 2013). Though it has been filed under the name of Little Bear as the Opposer, upon

information and belief, the Opposition Proceeding is actually being prosecuted by Hain Celestial

with full authority “to transact all business in the [U.S. Patent & Trademark Office and, thus, the

Trademark Trial & Appeal Board] in connection with th[e] Opposition Proceeding” on behalf of

Little Bear. See Consolidated Notice of Opposition at 5 & 6, Little Bear Organic Foods, Inc. v.

Beanitos, Inc., Opposition No. TO BE ASSIGNED, (T.T.A.B. filed Oct. 2, 2013). So, upon

information and belief, the Opposition Proceeding arises from Defendants’ joint conduct, which

necessitates the inclusion of both Little Bear and Hain Celestial as party-defendants to this

lawsuit.

       26.     The basis of the Opposition Proceeding is twofold: First, Defendants allege that

Plaintiff’s Marks are likely to cause confusion, mistake or deception as to the source of origin of

Little Bear’s goods pursuant to 15 U.S.C. § 1052(d), thereby causing injury and damage to Little

Bear and the goodwill and reputation symbolized by the Bear Marks. Not only does this

particular allegation, as further pled in the Opposition Proceeding, create a dispute about the

ability of the ‘058 and ‘054 Applications to mature into federal trademark registrations, but it

also creates a dispute about whether Plaintiff’s use of the Plaintiff’s Marks constitutes federal

trademark infringement, see 15 U.S.C. § 1114(1), and/or federal unfair competition, see 15

U.S.C. § 1125(a).

       27.     Second, Defendants allege that Plaintiff’s Marks are likely to cause dilution by

blurring of the Bear Marks pursuant to 15 U.S.C. § 1125(c), thereby causing injury and damage




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to Little Bear and the goodwill and reputation symbolized by the Bear Marks. This particular

allegation, as further pled in the Opposition Proceeding, creates another dispute about both the

ability of the ‘058 and ‘054 Applications to mature into federal trademark registrations, and

whether Plaintiff’s use of Plaintiff’s Marks constitutes federal trademark dilution, see 15 U.S.C.

§ 1125(c).

       28.      After instituting the Opposition Proceeding, and through a discussion between the

parties, Defendants informed Plaintiff that the continuing use of Plaintiff’s Marks violates

Defendants’ trademark rights in the Bear Marks, and that Defendants intend to pursue litigation

to enforce those trademark rights.

       29.      Plaintiff denies the allegations raised by and beyond the Opposition Proceeding,

and seeks to clarify the parties’ respective trademark rights by declaratory judgment or decree.

                                                 V.
                                        CAUSES OF ACTION

A.     Count 1: Suit for Declaratory Judgment Concerning Non-Infringement of Marks

       30.      Plaintiff incorporates paragraphs 1 through 29 herein by reference.

       31.      An actual justiciable controversy exists as to the rights and status of the parties,

namely, (a) whether Plaintiff’s Marks infringe upon, unfairly compete with, and/or are otherwise

likely to cause confusion, mistake or deception as to the source of origin of Defendants’ goods,

thereby causing injury and damage to Defendants and the goodwill and reputation symbolized by

the Bear Marks, see 15 U.S.C. §§ 1052(d), 1114(1), 1125(a), and (b) whether Plaintiff is entitled

to have the ‘058 and ‘054 Applications mature into federal registrations.

       32.      Accordingly, pursuant to 15 U.S.C. § 1119 and/or 28 U.S.C. § 2201, Plaintiff

seeks the following declaratory judgment or decree:

                a.     a declaration that Plaintiff’s Marks do not infringe upon or unfairly



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compete with the Bear Marks, as Plaintiff’s Marks are not likely to cause confusion, mistake or

deception as to the source of origin of Defendants’ goods, and/or as Plaintiff’s Marks do not

cause injury or damage to Defendants or the goodwill and reputation symbolized by the Bear

Marks, see 15 U.S.C. §§ 1052(d), 1114(1), 1125(a);

               b.      a declaration that the marks made subject to the ‘058 and ‘054

Applications are not likely to cause confusion, mistake or deception as to the source of origin of

Defendant’s goods; and

               c.      a declaration dismissing the Opposition Proceeding and allowing the ‘058

and ‘054 Applications to promptly mature into federal trademark registrations.

       33.     Upon information and belief, the requested declaration or decree will resolve the

justiciable controversy at hand.

       34.     In addition to the foregoing declaratory judgment or decree, Plaintiff seeks an

award of its reasonable attorney fees from this declaratory judgment action, as well as any

appeals thereof, pursuant to applicable law. See 28 U.S.C. § 2202 (further relief in declaratory

judgment action); 15 U.S.C. § 1117(a) (attorney fee awards in exceptional cases involving

violation of trademark rights under the Lanham Act).

       35.     Additionally, Plaintiff seeks an award of its costs and expenses from this

declaratory judgment action, as well as any appeals thereof, pursuant to applicable law. See 28

U.S.C. § 2202 (further relief in declaratory judgment action); FED. R. CIV. P. 54(d)(1) (cost

awards).

       36.     Finally, Plaintiff seeks an award of pre- and post-judgment interest on the

principal amounts it will recover from this declaratory judgment action, as well any appeals

thereof, pursuant to applicable law.




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B.     Count 2: Suit for Declaratory Judgment Concerning Non-Dilution of Marks

       37.     Plaintiff incorporates paragraphs 1 through 29 herein by reference.

       38.     An actual justiciable controversy exists as to the rights and status of the parties,

namely, (a) whether Plaintiff’s Marks are likely to cause dilution by blurring of the Bear Marks,

thereby causing injury and damage to Defendants and the goodwill and reputation symbolized by

the Bear Marks, see 15 U.S.C. § 1125(c), and (b) whether Plaintiff is entitled to have the ‘058

and ‘054 Applications mature into federal registrations.

       39.     Accordingly, pursuant to 15 U.S.C. § 1119 and/or 28 U.S.C. § 2201, Plaintiff

seeks the following declaratory judgment or decree:

               a.      a declaration that Plaintiff’s Marks do not dilute the Bear Marks, as

Plaintiff’s Marks are not likely to cause dilution by blurring of the Bear Marks, as Defendant’s

Marks are not famous marks, and/or as Plaintiff’s Marks do not cause injury or damage to

Defendants or the goodwill and reputation symbolized by the Bear Marks, see 15 U.S.C. §

1125(c);

               b.      a declaration that the marks made subject to the ‘058 and ‘054

Applications are not likely to cause dilution by blurring of the Bear Marks; and

               c.      a declaration dismissing the Opposition Proceeding and allowing the ‘058

and ‘054 Applications to promptly mature into federal trademark registrations.

       40.     Upon information and belief, the requested declaration or decree will resolve the

justiciable controversy at hand.

       41.     In addition to the foregoing declaratory judgment or decree, Plaintiff seeks an

award of its reasonable attorney fees from this declaratory judgment action, as well as any

appeals thereof, pursuant to applicable law. See 28 U.S.C. § 2202 (further relief in declaratory

judgment action); 15 U.S.C. §1117(a) (attorney fee awards in exceptional cases involving


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           Case 1:13-cv-00891-SS Document 1 Filed 10/04/13 Page 12 of 13



violation of trademark rights under the Lanham Act).

       42.     Additionally, Plaintiff seeks an award of its costs and expenses from this

declaratory judgment action, as well as any appeals thereof, pursuant to applicable law. See 28

U.S.C. § 2202 (further relief in declaratory judgment action); FED. R. CIV. P. 54(d)(1) (cost

awards).

       43.     Finally, Plaintiff seeks an award of pre- and post-judgment interest on the

principal amounts it will recover from this declaratory judgment action, as well any appeals

thereof, pursuant to applicable law.

                                                VI.
                                       CONDITIONS PRECEDENT

       44.     All conditions precedent to Plaintiff’s claims have occurred or been performed.

                                               VII.
                                           JURY DEMAND

       45.     Plaintiff demands a jury trial on all triable issues. FED. R. CIV. P. 38(b).

                                               VII.
                                             PRAYER

       46.     For these reasons, Plaintiff respectfully asks the Court:

               a.     for a judgment in favor of Plaintiff on Counts 1 and 2;

               b.     for a declaration of rights as described further above with respect to
                      Counts 1 and 2;

               c.     for an award of Plaintiff’s reasonable attorney fees according to law;

               d.     for an award of Plaintiff’s costs and expenses according to law;

               e.     for an award of pre- and post-judgment interest according to law; and

               f.     for such other and further relief, at law and/or in equity, as the Court may
                      deem just and proper.




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                                                  Respectfully submitted,

                                                  JACKSON WALKER L.L.P.

                                                  By: /s/ Joshua A. Romero
                                                      Joshua A. Romero (TSBN 24046754)
                                                      Emilio B. Nicolas (TSBN 24058022)
                                                      100 Congress Avenue, Suite 1100
                                                      Austin, Texas 78701
                                                      (512) 236-2000 – Telephone
                                                      (512) 236-2002 – Facsimile
                                                      E-mail: jromero@jw.com;
                                                      enicolas@jw.com

                                                  ATTORNEYS FOR PLAINTIFF
                                                  BEANITOS, INC.


                                  CERTIFICATE OF SERVICE

        This is to certify that on October 4, 2013, a copy of the foregoing document was
electronically filed with the Clerk of Court using the CM/ECF system; that Defendants’ Filing
Users for the CM/ECF system to send notification of such filing are currently unknown because
Defendants have not yet been served with process or appeared in this lawsuit; and that
Defendants will be served with a copy of the foregoing document contemporaneously with the
service of process.

                                                  /s/ Joshua A. Romero
                                                  Joshua A. Romero
                                                  Emilio B. Nicolas




PL.’S ORIGINAL COMPL. – PAGE 13

				
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