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					     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 1 of 15 Page ID #:1




 1   Martin E. Jerisat, SBN. 273770
     Jerisat Law Firm
 2   2372 Morse Ave., Ste. 322
 3   Irvine, CA 92614
     T: 714.571.5700
 4   E: mjerisat@jk-lawfirm.com
 5   Attorney for Plaintiff Starbuzz Tobacco, Inc.
 6
 7                       UNITED STATES DISTRICT COURT
 8                      CENTRAL DISTRICT OF CALIFORNIA
 9
     STARBUZZ TOBACCO, INC., a          ) Case No.
10   California corporation,            )
11                                      ) COMPLAINT FOR:
                 Plaintiff,             )
12                                      )    1. DECLARATORY
13         vs.                          )       JUDGMENT FOR NON-
                                        )       INFRINGEMENT OF
14
                                        )       TRADEMARKS; AND
15   HERSHEY CHOCOLATE &                )
     CONFECTIONERY CORPORATION., )           2. DECLARATORY
16
     a Delaware corporation, DOES 1-10, )       JUDGMENT FOR NON-
17                                      )       DILUTION OF
18               Defendants.            )       TRADEMARKS
                                        )
19                                      ) DEMAND FOR JURY TRIAL
20                                      )
                                        )
21
                                        )
22
23
          Plaintiff, Starbuzz Tobacco, Inc. complains of Defendant Hershey Chocolate
24   & Confectionery Corporation, and DOES 1-10, and alleges as follows:
25
                                            PARTIES
26
27         1.     Plaintiff, Starbuzz Tobacco, Inc. (“Starbuzz” or “Plaintiff”), is now,
28   and at all times relevant herein was, a corporation organized under the laws of the

                                                  -1-
                                   Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 2 of 15 Page ID #:2




 1   State of California, with its principal place of business in the City of Garden

 2   Grove, California.
 3
           2.     Defendant, Hershey Chocolate & Confectionery Corporation.
 4
 5   (“HERSHEY” or “Defendant”), is now, and at all times relevant herein was, a
 6
     corporation organized under the laws of the State of Delaware, with its principal
 7
 8   place of business in the City of Hershey, Pennsylvania.
 9         3.     The true names and identities, whether individuals, corporate or
10
     otherwise, of Defendants DOES 1 through 10, inclusive, are unknown to Starbuzz
11
12   at this time, and Starbuzz, therefore, sues the DOES Defendants in fictitious
13
     capacities. Starbuzz would ask the court for leave to amend the Complaint when
14
15   the identities of Defendants would be known. Starbuzz is informed and believes
16
     that each Defendant was responsible intentionally or in some other actionable
17
18   manner for some of the events and happenings referred to here. Starbuzz is

19   informed and believes, and on that basis alleges, that Defendants are responsible
20
     for its acts and for its conduct, which are the true legal causes for the relief herein
21
22   alleged.
23
                               JURISDICTION AND VENUE
24
25         4.     This Court has original jurisdiction over this action pursuant to 15
26   U.S.C. § 1121, 28 U.S.C. § 1331, 28 U.S.C. § 1338, and 28 U.S.C. 2201(a), in that
27
     this Complaint raises federal questions under the United States Trademark Act
28

                                                   -2-
                                    Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 3 of 15 Page ID #:3




 1   (Lanham Act), 15 U.S.C. §1051 et seq. and seeks declaratory relief from this Court

 2   to clarify the rights of the parties.
 3
            5.     The Court has personal jurisdiction over Defendant Hershey because
 4
 5   it has systematically and continuously engaged in substantial business activities in
 6
     and directed to California. Defendant therefore knew or should have known that
 7
 8   its activities were directed towards California, and the effect of those activities
 9   would be felt in California.
10
            6.     The exercise of personal jurisdiction over Defendant Hershey is also
11
12   proper since its conduct is expressly aimed at California, through sale of various
13
     confectionery products in California, bearing the mark CITRUS MIST at issue in
14
15   this Complaint.
16
            7.     Venue is proper in this district under 28 U.S.C. § 1391 (b) and (c) in
17
18   that a substantial portion of the events that are the subject of this action took place

19   in this district, and that Defendant is subject to personal jurisdiction within this
20
     district.
21
22                                      INTRODUCTION
23
            8.     Starbuzz is seeking a declaration that Starbuzz’s use of the mark
24
25   “CITRUS MIST” for chemical flavoring in liquid form used to refill electronic
26   cigarette cartridges; Electronic cigarette liquid (e-liquid) comprised of flavorings in
27
     liquid form to refill electronic cigarette cartridges, or juice, in international class
28

                                                     -3-
                                      Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 4 of 15 Page ID #:4




 1   30, does not infringe upon Defendant’s trademark rights in CITRUS MIST for

 2   breath mints and/or candy, and does not dilute Defendant’s trademark.
 3
           9.    Defendant has accused Starbuzz of trademark infringement and
 4
 5   dilution under the Lanham Act, 15 U.S.C. § 1051, et seq.
 6
           10.   Defendant further demanded that Starbuzz cease and desist from using
 7
 8   its CITRUS MIST® mark for e-liquid, provide accounting of Starbuzz’s sales of e-
 9   liquid bearing the mark CITRUS MIST®, and enter into settlement with Defendant
10
     regarding the matter.
11
12         11.   By this Complaint, Starbuzz seeks declaratory judgment that there is
13
     no likelihood of confusion between Starbuzz’s mark and Defendant’s mark when
14
15   used in connection with e-liquid and tobacco products.
16
           12.   Starbuzz further seeks declaratory judgment that Starbuzz’s use of the
17
18   CITRUS MIST® mark does not dilute Defendant’s mark.

19                             FACTUAL BACKGROUND
20
     Starbuzz’s Ownership of the CITRUS MIST® mark
21
22         13.   Starbuzz is recognized worldwide as a manufacturer and supplier of
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     premium hookah tobacco and other related products. Starbuzz has over two
24
25   hundred and sixty (260) federally registered trademarks and trademark applications
26   in the United States alone, and has sought to obtain worldwide intellectual property
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     protection in more than 33 countries.
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                                                  -4-
                                   Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 5 of 15 Page ID #:5




 1         14.     Starbuzz is the owner of the federally registered trademark CITRUS

 2   MIST® (Reg. No. 3,695,500) for “Pipe Tobacco; Molasses Tobacco; Tobacco;
 3
     Smoking Tobacco; Flavored Tobacco; and Herbal Molasses herbs for smoking,
 4
 5   Tobacco and Tobacco Substitutes,” in International Class 034 (the “CITRUS MIST
 6
     Mark”). (Exhibit A).
 7
 8         15.     Starbuzz has been using the CITRUS MIST® Mark in commerce
 9   since 2008.
10
           16.     At all times relevant herein, Starbuzz has been, and still is, the owner
11
12   of the exclusive rights, title, and interest in the CITRUS MIST® Mark for tobacco
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     and related products.
14
15         17.     Starbuzz has filed a trademark application for the mark CITRUS
16
     MIST for Chemical flavoring in liquid form used to refill electronic cigarette
17
18   cartridges; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid

19   form used to refill electronic cigarette cartridges, in international class 30 (Exhibit
20
     B).
21
22   Starbuzz’s Continuous Use of the CITRUS MIST® Mark
23
           18.     Starbuzz manufactures, distributes, imports, and sells tobacco and
24
25   related products throughout the United States and internationally. Starbuzz prides
26   itself on its reputation for high-quality tobacco and related products. Starbuzz sells
27
     its tobacco and related products to thousands of customers and clients, including
28

                                                   -5-
                                    Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 6 of 15 Page ID #:6




 1   boutique stores, wholesalers, and suppliers. Starbuzz has used, created and

 2   marketed the CITRUS MIST® Mark continuously over the years.
 3
           19.    Starbuzz uses the CITRUS MIST® Mark on advertising brochures,
 4
 5   advertising leaflets, on the Internet, and on the packaging of its tobacco and related
 6
     products.
 7
 8         20.    Starbuzz’s intellectual property and brand identity have substantial
 9   image recognition.
10
           21.    The CITRUS MIST® Mark is important as it serves as an easily-
11
12   recognizable identifier of the high quality goods that Starbuzz offers. There is a
13
     particularly close association among consumers between Starbuzz, the CITRUS
14
15   MIST Mark®, and the quality of the tobacco and related products offered under the
16
     CITRUS MIST® Mark. For consumers, customers, vendors, and clients, the
17
18   CITRUS MIST® Mark is associated with original, flavorful, and smooth tobacco

19   and related products, which are of the highest quality at an affordable price.
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           22.    Starbuzz’s rights to the CITRUS MIST® Mark are not limited to
21
22   molasses tobacco products, but extend to related products within the same industry
23
     and market, or within the natural zone of expansion, including e-liquid.
24
25         23.    Starbuzz, therefore, expanded its use of the CITRUS MIST® Mark to
26   related products, including e-liquid and related items.
27
28

                                                  -6-
                                   Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 7 of 15 Page ID #:7




 1         No Likelihood of Confusion between Starbuzz’s CITRUS MIST® for
 2   tobacco and Hershey’s CITRUS MIST for breath saver
 3
           24.    There is also no similarity between Starbuzz’s CITRUS MIST® mark
 4
 5   and Hershey’s CITRUS MIST mark as used in the marketplace.
 6
           25.    The label for the products bearing Starbuzz’s CITRUS MIST® Mark
 7
 8   is completely different from the label of the products bearing Hershey’s CITRUS
 9   MIST mark.
10
           26.    The fonts, colors, background, arrangement, and pictures associated
11
12   with Starbuzz’s CITRUS MIST® mark bears no similarity to the font, colors,
13
     background, arrangement and picturing of labels associated with Hershey’s
14
15   CITRUS MIST mark. Additionally, “CITRUS MIST” is accompanied by the
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     Starbuzz’s name and logo, thereby avoiding any likelihood of confusion.
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                                                 -7-
                                  Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 8 of 15 Page ID #:8




 1         27.    Because no likelihood of confusion exists between Starbuzz’s

 2   CITRUS MIST® and Hershey’s CITRUS MIST, Starbuzz has not infringed upon
 3
     Hershey’s CITRUS MIST mark.
 4
 5   No Dilution of Hershey’s CITRUS MIST Mark
 6
           28.    Starbuzz is informed and believes, and on that basis alleges, that the
 7
 8   Hershey’s CITRUS MIST is not widely recognized by the general consuming
 9   public.
10
           29.    Starbuzz is further informed and believes, and on that basis alleges,
11
12   that Starbuzz’s use of “CITRUS MIST” does not weaken Hershey’s CITRUS
13
     MIST since the respective goods are different as well as the channels of trade.
14
15         30.    Starbuzz is also informed and believes, and on that basis alleges, that
16
     there is no tarnishment of Hershey’s CITRUS MIST Mark because Starbuzz is not
17
18   using “CITRUS MIST” inappropriately or in an unflattering manner. Starbuzz is

19   using “CITRUS MIST” on tobacco and other related products, including e-liquid.
20
           31.    Therefore, there is no trademark dilution based upon Starbuzz’s use of
21
22   the “CITRUS MIST” mark on its tobacco products.
23
     Defendant’s Wrongful Demands
24
25         32.    On or about May 8, 2014, Starbuzz received a cease and desist letter
26   from Hershey, who was writing on behalf of its subsidiaries and affiliates,
27
     including Defendant, demanding that Starbuzz cease and desist from all use of
28

                                                  -8-
                                   Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 9 of 15 Page ID #:9




 1   “CITRUS MIST,” agree to cooperate in the alleged investigation of any other

 2   parties with which Starbuzz have a relationship involving Starbuzz’s CITRUS
 3
     MIST®, provide copies of sales of CITRUS MIST product, surrender all items in
 4
 5   Starbuzz’s possession related to the CITRUS MIST® mark, and provide
 6
     accounting of all profits made from the sale of Starbuzz’s CITRUS MIST product.
 7
 8   A true and correct copy of the letter is attached hereto as Exhibit C.
 9           33.   In the letter, Defendant further accused Starbuzz of trademark
10
     infringement and dilution of Hershey’s CITRUS MIST Mark. In particular, the
11
12   letter stated that “use of the CITRUS MIST Trademark by persons or entities not
13
     affiliated with Hershey can result in a likelihood of confusion for consumers and
14
15   can dilute the value of our client’s trademarks. This use may cause significant
16
     consumer confusion as to the source, affiliation or sponsorship of the product.
17
18   Even if the public is not confused as to the source of the product, your use of the

19   CITRUS MIST Trademark in this manner will undoubtedly cause dilution of these
20
     assets.”
21
22           34.   Based upon the cease and desist letters, and since Starbuzz is making
23
     bona fide use of the “CITRUS MIST” mark in connection with its tobacco and
24
25   related products, there is an actual controversy as to whether Plaintiff’s use of the
26   “CITRUS MIST” mark infringes upon and dilutes Hershey’s CITRUS MIST
27
     Mark.
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                                                   -9-
                                    Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 10 of 15 Page ID #:10




 1          35.    By this Complaint, Starbuzz seeks declaratory relief from this Court

 2    to clarify its rights to the “CITRUS MIST” mark and Defendant’s rights in the
 3
      CITRUS MIST Marks.
 4
 5          36.    By this Complaint, Starbuzz also seeks declaratory relief from this
 6
      Court that Starbuzz’s use of the “CITRUS MIST” mark in connection with e-liquid
 7
 8    and tobacco products does not infringe upon and dilute Defendant’s CITRUS
 9    MIST Mark.
10
            37.    Hershey has filed an opposition in the United States Trademark and
11
12    Trial Appeal Board (“TTAB”), opposition No. 91216242, alleging that Starbuzz’s
13
      CITRUS MIST application appears to be “an attempt to extort the goodwill
14
15    established by Hershey and/or attempt to trick the consuming public into believing
16
      that its goods are related to Hershey’s CITRUS MIST brand candy and mints, or
17
18    the flavors associated with those products.” A true and correct copy of the

19    opposition is attached hereto as Exhibit D.
20
                              FIRST CLAIM FOR RELIEF
21             [Declaratory Judgment for Non-Infringement of Trademarks]
22
23          38.    Starbuzz re-alleges and incorporates by this reference all prior

24    paragraphs as if fully set forth herein.
25
            39.    Based upon Defendant’s use of the CITRUS MIST Marks and
26
27    Starbuzz’s use of CITRUS MIST for e-liquid, an actual controversy has arisen and
28
      now exists between Starbuzz and Defendant concerning their respective trademark

                                                    -10-
                                     Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 11 of 15 Page ID #:11




 1    rights. This controversy is of sufficient immediacy to warrant a declaratory

 2    judgment.
 3
            40.    Specifically, Defendant has accused Starbuzz that its use of CITRUS
 4
 5    MIST on e-liquid infringes upon Defendant’s rights to its CITRUS MIST Mark for
 6
      breath mints and candy.
 7
 8          41.    Starbuzz asserts that there is no likelihood of confusion between
 9    “CITRUS MIST” and Hershey’s CITRUS MIST Mark, based on the lack of
10
      similarity in appearance, pronunciation, commercial impressions, trade channels,
11
12    between the marks, among other factors.
13
            42.    A judicial determination is essential at this time with respect to the
14
15    parties’ rights to their marks.
16
            43.    Starbuzz therefore seeks a declaration from this Court that its use of
17
18    “CITRUS MIST” on e-liquid and related tobacco products and goods does not

19    infringe upon Hershey’s CITRUS MIST Mark for breath mints and candy because
20
      consumers are not likely to be confused as to the source of Starbuzz’s goods and
21
22    Hershey’s goods.
23
                             SECOND CLAIM FOR RELIEF
24                   [Declaratory Judgment for Non-Dilution of Trademarks]
25
            44.    Starbuzz re-alleges and incorporates by this reference all prior
26
27    paragraphs as if fully set forth herein.
28

                                                       -11-
                                        Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 12 of 15 Page ID #:12




 1          45.    Based upon the cease and desist letters sent to Starbuzz and the

 2    opposition filed by Defendant Hershey in the TTAB, an actual controversy has
 3
      arise and now exists between Starbuzz and Defendant Hershey regarding
 4
 5    Starbuzz’s use of CITRUS MIST for e- liquid and related tobacco products. The
 6
      controversy is of sufficient immediacy to warrant a declaratory judgment.
 7
 8          46.    Specifically, Defendant Hershey, has alleged that Starbuzz’s use of
 9    CITRUS MIST has diluted Defendant’s CITRUS MIST Mark.
10
            47.    Starbuzz asserts that there is no dilution, based on the fact that: (1)
11
12    Hershey’s CITRUS MIST mark is not a famous mark; (2) there is no likelihood of
13
      confusion between Starbuzz’s CITRUS MIST and Defendant Hershey’s CITRUS
14
15    MIST Mark; and (3) Starbuzz has not weakened or tarnished Hershey’s CIRTUS
16
      MIST mark.
17
18          48.    A judicial determination is essential at this time with respect to the

19    parties’ rights to their marks.
20
            49.    Starbuzz therefore seeks a declaration from this Court that its use of
21
22    CITRUS MIST has not diluted Defendant’s CITRUS MARK because Hershey’s
23
      CITRUS MIST Marks is not famous, consumers are not likely to be confused as to
24
25    the source of Starbuzz’s goods and Defendant Hershey’s breath mints and candy,
26    and there was no weakening or tarnishment of the Hershey’s CITRUS MIST mark
27
28

                                                       -12-
                                        Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 13 of 15 Page ID #:13




 1    through Starbuzz’s use of “CITRUS MIST” on its e-liquid and other related

 2    tobacco products.
 3
                                    PRAYER FOR RELIEF
 4
 5          WHEREFORE, Starbuzz respectfully prays for judgment against Defendant
 6
      as follows:
 7
 8          1.      An order declaring that Starbuzz’s “CITRUS MIST” mark is not
 9    confusingly similar to Defendant’s CITRUS MIST mark;
10
            2.      An order declaring that Starbuzz’s use of “CITRUS MIST” mark on
11
12    e-liquid and related tobacco products does not infringe upon Defendant Hershey’s
13
      CITRUS MIST’s mark;
14
15          3.      An order declaring that Starbuzz’s use of the “CITRUS MIST” mark
16
      on e-liquid and related tobacco products does not dilute Defendant Hershey’s
17
18    CITRUS MIST mark;

19          4.      An order for an award of attorneys’ fees and costs of this action, in an
20
      amount to be determined at trial;
21
22          5.      Such additional and further relief as may follow from the entry of a
23
      declaratory judgment; and
24
25          6.      Any other and further relief as the Court deems appropriate, proper
26    and just.
27
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                                                    -13-
                                     Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 14 of 15 Page ID #:14




 1    DATED: May 30, 2014                    Respectfully Submitted,

 2
 3
                                                      /s/ Martin E. Jerisat
 4                                                    Martin E. Jerisat
 5                                                    Attorneys for Plaintiff
 6                                                    Starbuzz Tobacco, Inc.

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                                 Complaint for Declaratory Judgment
     Case 8:14-cv-00831-CJC-AN Document 1 Filed 05/30/14 Page 15 of 15 Page ID #:15




 1                          DEMAND FOR TRIAL BY JURY
 2          Plaintiff Starbuzz Tobacco, Inc. hereby demands a trial by jury on all
 3
      triable counts.
 4
 5
 6    DATED: May 30, 2014                      Respectfully Submitted,

 7
 8                                                      /s/ Martin E. Jerisat
                                                        Martin E. Jerisat
 9                                                      Attorney for Plaintiff
10                                                      Starbuzz Tobacco, Inc.
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                                                  -15-
                                   Complaint for Declaratory Judgment

				
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