Top Tobacco L.P. et al v. Midwestern Cash and Carry, LLC et al

Filing 1

COMPLAINT filed by Republic Tobacco L.P., Top Tobacco L.P.; Jury Demand. Filing fee $ 350, receipt number 0752-6147809. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Tarkowski, Dara)

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
)
)
)
)
Plaintiffs,
)
)
vs.
)
MIDWESTERN CASH AND CARRY, LLC, )
MIDWEST CASH AND CARRY, INC. f/k/a )
)
CASH AND CARRY, INC., MIDWEST
)
DISTRIBUTORS WAREHOUSE, INC.,
)
NUSRAT H. CHOUDRI a/k/a NUSRAT
)
CHOUDRY a/k/a NURAT CHAUDRI,
SABRA CHOUDRI, BASHIR CHOUDRI, )
)
MUBBASHER KHAN, YALE GAS AND
)
FOOD, INC., SOUTHERN GAS AND
)
FOOD, INC., SOUTH CHICAGO ONE,
)
INC. d/b/a CLARK GAS AND FOOD,
)
)
Defendants.
)
)
TOP TOBACCO, L.P. and REPUBLIC
TOBACCO LP,

Case No.
Judge:

JURY TRIAL DEMANDED

COMPLAINT FOR INJUNCTIVE AND OTHER RELIEF
Plaintiffs Top Tobacco, L.P. and Republic Tobacco L.P. and (hereinafter together
referred to as “Plaintiffs”), by and through their undersigned counsel, for their complaint against
Midwestern Cash and Carry, LLC, Midwest Cash and Carry f/k/a or d/b/a Cash and Carry
Grocery, Inc., Midwest Distributors Warehouse, Inc., Nusrat H. Choudri A/K/A Nusrat Choudry
a/k/a Nurat Chaudri, Sabra Choudri, Bashir Choudri, Mubbasher Khan, Yale Gas And Food,
Inc., Southern Gas And Food, Inc., South Chicago One, Inc. d/b/a Clark Gas And Food
(hereinafter collectively referred to as “Defendants”), hereby allege as follows:

1

NATURE OF THE CASE
1.

Plaintiffs bring this action in response to Defendants’ infringing and unlawful

conduct and in order to protect one of Top Tobacco’s most valuable assets, namely, the goodwill
and consumer recognition in its well-known “TOP” trademarks (the TOP Marks are described in
paragraph 24, below), which Top Tobacco and its predecessors have used for over 100 years in
connection with smoking tobacco and for over 60 years with cigarette rolling papers. Republic
Tobacco and its predecessors have been the exclusive U.S. distributors of Top Tobacco’s TOPbrand products since before the acts of Defendants alleged herein.
2.

More specifically, this action arises out of Defendants’ violations of the federal

trademark laws and also state statutory and common law by means of their knowing, willful and
intentional displaying, distributing, selling, offering for sale and/or trafficking in products that
purport to be Plaintiffs’ authentic and trademarked TOP-brand products, but which are actually
counterfeit. Defendants are responsible for and/or have benefitted from the distribution and sale
of counterfeit TOP branded and labeled products, which are inferior in quality and design to
Plaintiffs’ legitimate, trademarked products. Defendants have significantly harmed Plaintiffs’
rights and confused the consuming public and will continue to do so unless and until the relief
requested herein is granted.
PARTIES
3.

Plaintiff Top Tobacco, L.P. (“Top Tobacco”) is a limited partnership organized

under the laws of Delaware, and maintains its principal place of business at 2301 Ravine Way,
Glenview, Illinois 60025.
4.

Plaintiff Republic Tobacco, L.P. (“Republic Tobacco”) is a Delaware limited

partnership with its principal place of business at 2301 Ravine Way, Glenview, Illinois 60025.

2

Republic is a multinational wholesaler, distributor, and retailer of tobacco. (Top Tobacco and
Republic Tobacco are collectively referred to herein as “Plaintiffs.”)
5.

Defendant Midwestern Cash and Carry, LLC (“Midwestern”) is an Illinois limited

liability company with its principal place of business located at 2577 W. Armitage Avenue,
Chicago, Illinois 60647. On information and belief, Midwestern operates as a wholesaler of
general line groceries and tobacco products. On information and belief, Midwestern has
approximately 500 accounts, selling to local retailers and restaurants and has estimated annual
sales of more than $29 million.
6.

Defendant Midwest Cash and Carry, Inc. f/k/a Cash and Carry, Inc., (“Midwest

Cash”) is an Illinois corporation with its principal place of business and physical location also
located at 2577 W. Armitage Avenue, Chicago, Illinois 60647, the same physical location as
Midwestern. Midwest Cash has been previously identified by the Illinois Attorney General’s
Office as selling counterfeit Colgate toothpaste. Midwest Cash was also implicated in a prior
trademark infringement lawsuit for allegedly selling counterfeit Newport cigarettes.
7.

Defendant Midwest Distributors Warehouse, Inc. (“Midwest Distributors”) is an

Illinois corporation with its principal place of business and physical location also located at 2577
W. Armitage Avenue, Chicago, Illinois 60647, the same physical location as Midwestern.
Midwest Distributors was organized by Nusrat Choudri. Anglo Vargas and Andres Vargas are
listed as “President” of the corporation according records kept by the Illinois Secretary of State.
8.

Defendant Nusrate H. Choudri a/k/a Nusrat Choudry a/k/a Nurat Chaudri (“N.

Choudri”), is an individual residing at 4848 W. Morse Avenue, Lincolnwood, Illinois 60712. N.
Choudri is listed as the corporate organizer and member of Midwestern. N. Choudri is also listed
as Managing Member, Principal, and President of Midwest Cash. In addition, N. Choudri owns

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Southern Gas and Food, Inc., which operates as a Mobil Gas Station. On information and belief,
N. Choudri is also the proprietor of several gas stations, including: (1) a Mobil gas station
located at 251 West 63rd St. Chicago, Illinois (“63rd and Yale”); (2) a BP gas station located at
7059 S. State Street, Chicago, Illinois, d/b/a Yale BP Gas and Food, Inc. (“Yale BP”); (3) a
Clark gas station located at 7283 S. Chicago, Avenue, Chicago, Illinois, d/b/a Clark Gas and
Food (“Clark Gas”); and (4) a Mobil gas station located at 7059 S. Ashland Avenue, Chicago,
Illinois d/b/a Southern Mobil (“Southern Mobil”).
9.

Defendant Sabra J. Choudri is an individual residing at 4848 W. Morse Avenue,

Lincolnwood, Illinois 60712. S. Choudri is listed as a corporate organizer and member of
Midwestern. She is also listed as a Member and Principal of Midwest Cash.
10.

Defendant Bashir Choudri is an individual who, upon information and belief,

resides within the District. B. Choudri is listed as President and Secretary of Southbound Food,
Inc. and President of South Chicago One, Inc.
11.

Defendant Mubbasher Khan is an individual who, upon information and belief,

resides within the District. M. Khan is listed as the General Manager and CEO of Midwest Cash
and Carry, Inc.
12.

Defendant Southern Gas and Foods, Inc. (“Southern”) is a Illinois corporation

located at 7059 S. Ashland Avenue, Chicago, Illinois. Southern is owned by N. Choudri and
operates as a Mobil gas station.
13.

Defendant South Chicago One, Inc., d/b/a “Clark Gas and Food” is an Illinois

corporation located at 7283 S. Chicago, Avenue, Chicago, Illinois that operates as a Clark gas
station. N. Choudri is listed as the secretary of this corporation and Bashir Choudri is listed as
the President.

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JURISDICTION AND VENUE
14.

This Court has personal jurisdiction over the Defendants because they have

engaged in business activities in, and directed to, the State of Illinois and within this judicial
district, and because Defendants have knowingly committed tortious acts aimed at and causing
harm within the state of Illinois and this judicial district.
15.

This Court has jurisdiction over the subject matter of this action pursuant to 15

U.S.C. §1121(a) and 28 U.S.C. §§1338 and 1367. Plaintiffs’ claims are, in part, based on
violations of the Lanham Act, as amended, 15 U.S.C. §§ 1051-1127, et seq. and the Trademark
Act of 1946, 15 U.S.C. §1141(1). The Court has jurisdiction over the state law claims asserted
herein pursuant to 28 U.S.C. §§1338(b) and 1367.
16.

Venue is proper in this judicial district pursuant to 28 U.S.C. §1391(a) and (c)

because this is where Plaintiffs reside, because Plaintiffs and the Defendants transact business in
this district, and because the Defendants are subject to personal jurisdiction in this judicial
district. Furthermore, the harm to Plaintiffs described herein continues to occur in this judicial
district.
ALLEGATIONS COMMON TO ALL CLAIMS
Plaintiffs’ Business and Top Tobacco’s TOP Marks.
17.

For many years, Top Tobacco, its predecessors and affiliates, including Republic

Tobacco and its predecessors, have been engaged in the distribution and sale of smoker’s
articles, including tobacco and related products such as cigarette rolling papers. One market in
which Plaintiffs compete is the “roll-your-own” market, in which Plaintiffs manufacture, market
and distribute tobacco and cigarette papers, sold both together and separately. Top Tobacco,
through its exclusive distributor Republic Tobacco, distributes such goods to distributors,

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wholesalers, retailers, resellers and to consumers across the United States through tobacco shops,
drugstores, tobacco outlets, novelty, convenience and other retail stores.

As a result, Top

Tobacco has become one of the best-known manufacturers of tobacco and tobacco-related
products.
18.

The TOP-brand of tobacco is one of the oldest tobacco brands in the United

States. Top Tobacco’s predecessors first began to use the TOP Marks with tobacco in the United
States in the early 1900s. Thus, for over 100 years, Top Tobacco and its predecessors have used
the TOP Marks continuously in connection with tobacco, and over those many decades, TOP has
become one of the best-known brands of tobacco in the United States. In fact, TOP is the
leading selling brand of roll-your-own tobacco in the United States. (The “TOP Marks” are
described with particularity in paragraph 24, below.)
19.

Since Top Tobacco’s predecessors’ first use of the TOP Marks with tobacco over

100 years ago, the range of smoking-related products with which the TOP Marks have been used
has expanded. Beginning in or around the early 1940s, Top Tobacco’s predecessors began using
the TOP Marks with cigarette papers. Through Top Tobacco’s and its predecessors’ continuous
use of the TOP Marks with cigarette papers, TOP also has become one of the best-known brands
of cigarette papers in the United States.
20.

Top Tobacco manufactures its TOP-brand tobacco and distributes it to Republic

Tobacco. Republic Tobacco is the exclusive distributor of Top Tobacco’s TOP-brand products,
and sells those products nationwide to wholesalers, retailers such as convenience, drug and food
stores, mass merchandisers, cash-and-carry businesses and tobacco outlet chains. In the past five
years alone Republic Tobacco has sold tens of millions of dollars’ worth of both smoking
tobacco and cigarette papers under Top Tobacco’s TOP Marks.

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21.

Republic Tobacco promotes and advertises Top Tobacco’s TOP-brand products.

For years prior to the conduct of Defendants alleged herein, Republic Tobacco and its
predecessors have devoted significant time, effort and resources to marketing and promoting
smoking tobacco and cigarette papers under and in connection with the TOP Marks. In fact,
Republic Tobacco and its predecessors have spent millions of dollars promoting the TOP Marks
and Top Tobacco’s products sold in connection therewith.
22.

As a result of the many decades of continuous and extensive use of the TOP

Marks in interstate commerce in connection with tobacco and cigarette papers, Top Tobacco’s
TOP Marks have developed considerable recognition. The TOP Marks thus have acquired a
distinctiveness and secondary meaning signifying Top Tobacco, and Top Tobacco has worked
diligently to establish, and now owns, considerable and valuable goodwill in and symbolized by
its TOP Marks.
23.

As a result of Plaintiffs’ and their predecessors’ use and extensive promotion of

the TOP Marks in connection with tobacco and cigarette papers, the TOP Marks have become
well-known and recognized by the public as identifying and distinguishing Top Tobacco’s
products. Indeed, as the Seventh Circuit has observed in another setting, “TOP Tobacco and its
predecessors have been in...the cigarette market for more than 100 years. The mark TOP® ...is
well known among merchants and customers.” See Top Tobacco, L.P. v. North Atlantic
Operating Co., Inc., 509 F.3d 380 (7th Cir. 2007). This consumer goodwill and recognition in
the TOP Marks constitutes one of Top Tobacco’s most valuable assets.

Accordingly, the

integrity of Top Tobacco’s TOP Marks is extremely valuable to Top Tobacco, and crucial to the
continued vitality and growth of its business.

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24.

Top Tobacco maintains federal trademark registrations including, among others,

Registration No. 2,739,465 (the “Design Mark”) and Registration No. 2,831,105 (the “Word
Mark”) for use in connection with cigarette rolling papers. (Together, these registrations are
referred to herein as the “Paper Marks.”)

Top Tobacco also maintains federal trademark

registrations including, among others, Registration Nos. 2,293,958. 2,739,466, 3,029,855,
3,407,400, 3,677,986, 3,677,987, 3,710,606, 3,720,176, and 3,918,139, for word and design
marks used in connection with tobacco and smokers’ articles. (Collectively, these registrations
are referred to herein as the “Tobacco and Tobacco Products Marks.”) Copies of the registration
records for Registration Nos. 2,739,465, 2,831,105, 2,293,958, 2,739,466, 3,029,855, 3,407,400,
3,677,987, 3,677,986, 3,710,606, 3,720,176, and 3,918,139 are collectively attached hereto as
Exhibit 1. (Together, the Paper Marks and Tobacco and Tobacco Products Marks are referred to
herein as the “TOP Marks.”)
25.

The registration of the TOP Marks constitutes prima facie evidence of their

validity and conclusive evidence of Top Tobacco’s exclusive right to use the TOP Marks in
connection with the products identified therein and other commercial goods.
26.

The TOP Marks qualify as famous marks, as that term is used in 15 U.S.C.

§1125(c)(1).
27.

The TOP Marks at issue in this case have been continuously used and have never

been abandoned.
28.

TOP-brand products are manufactured and sourced exclusively for, and under the

direction of, Republic Tobacco, and such products are sold in and through Republic Tobacco.

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Defendants’ Knowing Distribution and/or Resale of Counterfeit Goods.
29.

Plaintiffs maintain an anti-counterfeiting program to protect against violations of

the TOP Marks. Plaintiffs have become aware that Defendants have been offering for sale what
purport to be authentic TOP rolling papers bearing the TOP Marks but which are, in fact,
counterfeit and/or infringing TOP branded and labeled products. By their conduct, Defendants
have been knowingly and willfully violating the TOP Marks and Top Tobacco’s trademark
rights. As described below, Defendants’ deliberate conduct has significant impact on Plaintiffs in
that Defendants are trafficking in large quantities of counterfeit merchandise and selling this
counterfeit merchandise, thereby violating Plaintiffs’ rights under federal and Illinois law.
30.

Defendants know that Republic Tobacco is the only legitimate distributor of

authentic TOP-brand cigarette papers, which are manufactured in France, because Midwestern
has, from time-to-time, purchased for resale authentic TOP-brand products from Republic
Tobacco.

Indeed, Midwestern has purchased authentic TOP-brand cigarette papers from

Republic Tobacco, and was purchasing authentic product regularly from approximately February
16, 2009, until May 18, 2010. Then, nearly one year passed before Midwestern made another
purchase of authentic TOP-brand cigarette papers from Republic Tobacco, on or about May 3,
2011.
31.

Defendants know that all so-called “TOP” rolling paper inventory is counterfeit

because it was purchased from sources other than Republic Tobacco and made somewhere other
than France. On information and belief, the counterfeit product obtained and distributed and/or
resold by Defendants is unlawfully manufactured in a facility in China.

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Plaintiffs’ Investigators’ Purchases of Counterfeit Goods from Defendants.
32.

On October 15, 2011, investigators hired by Republic (the “investigators” or the

“investigator”) purchased what purported to be TOP-brand rolling papers from four gas stations
in the Chicago area. These gas stations were identified as sharing common ownership with
Midwestern. On information and belief, Midwestern was the supplier of rolling papers to these
four gas stations. Purchases were made at: (1) 63rd and Yale (Mobil); (2) BP at 7059 S. State St.;
(3) Clark Gas and Food; and (4) Mobil at 7059 S. Ashland.
33.

In January 2011, Republic sent samples of the product purchased from the four

area gas stations obtained during the October 2010 buys to Republic Technologies in France for
testing. Republic Technologies confirmed that all of the samples purchased from the four gas
stations listed above were counterfeit.
34.

Republic Technologies determined that, among other things, the counterfeit

papers have a different composition than authentic TOP-brand papers (TOP-brand papers have a
100% textile composition vs. the counterfeit papers, which were comprised principally of wood
fiber), the glue used on the counterfeit paper is different than the glue used on authentic TOPbrand papers, there is a discrepancy in color of the blue leaves of the counterfeit paper as
compared to authentic TOP-brand papers, and the box and cover of the counterfeit papers are
different than the box and cover for the authentic TOP-brand papers.
35.

On March 19, 2011, the investigators purchased what appeared to be TOP rolling

papers from the same four gas stations.
36.

On March 25, 2011, Republic sent samples of the product purchased from the

four area gas stations obtained during the March 2011 buys to Republic Technologies in France
for testing. Republic Technologies determined that three of the four samples were counterfeit.

10

(The fourth sample, purchased from Clark Gas and Food, was determined to be authentic TOP
product.)

Republic Technologies determined that the three counterfeit samples were

substantially similar the counterfeit product they had previously tested in January 2011.
37.

On April 8, 2011, and April 9, 2011, investigators made two purchases of cartons

of what Midwestern represented were TOP-brand rolling papers directly from Midwestern.
During these purchases, it was determined that Midwestern was selling sealed cartons of what
appear to be authentic TOP-brand rolling papers, as well as smaller, unmarked cartons
containing boxes of what purported to be authentic TOP-brand papers.

A manager at

Midwestern differentiated the two boxes by explaining that Midwestern sells “boxes of 30” and
“boxes of 40.” The “boxes of 30” were unmarked cartons. Indeed, the “boxes of 30” actually
contained only 28 boxes of paper, as the clerk had to remove the tape from the box and add two
additional boxes in order to total 30. The “boxes of 40” were sealed cardboard boxes marked
with Republic Tobacco logos and still containing the original shipping label from when the
carton was purchased from Republic Tobacco in Glenview. (See Photographs of “Boxes of 30”
and “Boxes of 40,” attached hereto as Exhibits 2.) Significantly, Republic Tobacco does not sell
its TOP-brand rolling paper product in “Boxes of 30.”
38.

On May 11, 2011, Republic Tobacco sent samples from the unmarked “Box of

30” obtained during the April 2011 buys to Republic Technologies in France for testing.
Republic Technologies determined that all of the samples were counterfeit and that the technical
characteristics of the counterfeit product were nearly identical to counterfeit product analyzed
from the earlier gas station buys. Based on these test results and on information and belief, these
counterfeit products are being unlawfully produced by the same Chinese facility.

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39.

Plaintiffs have examined the papers purchased from Midwestern and from the gas

stations believed to be supplied by Midwestern and have made the following determinations,
which demonstrate that Defendants have and continue to (i) intentionally, knowingly and
willfully represent their merchandise as TOP-brand products when they are, in fact, “colorable
imitations” and/or “counterfeits” of Plaintiff’s authentic TOP–brand cigarettes rolling paper as
those term are defined in 15 U.S.C. § 1127, and (ii) with the specific intention to confuse and
deceive the public. Specifically these rolling papers include labels, graphics, and logos which
dilute, counterfeit, are confusingly similar and/or are colorable imitations of the authentic TOPbrand products, the TOP Marks, the Paper Marks and the Tobacco and Tobacco Products Marks.
Additionally, the cigarettes papers do not match the specification of authentic TOP-brand
products, notwithstanding Defendants’ efforts to portray these items as authentic TOP-brand
products, and in so doing, to confuse the public.
FIRST CLAIM FOR RELIEF
(15 U.S.C. § 114(1) - Trafficking in Goods Bearing Counterfeit Paper Marks)
40.

Plaintiffs repeat and re-allege the allegations contained in paragraphs 1 through

40 of this Complaint as if fully set forth herein.
41.

This claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C.

§1114(1), and is for the infringement and counterfeiting of trademarks registered in the United
States Patent and Trademark Office by Plaintiffs.
42.

Defendants’ willful, knowing and intentional production, distribution, sale and

offer for sale of counterfeit merchandise is in violation of 15 U.S.C. §1114(1), and is likely to
create confusion and mistake in the minds of consumers in causing them to believe that Plaintiffs
have authorized or approved the use of its Paper Marks on the counterfeit merchandise.

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43.

Plaintiffs have been, are now, and will be irreparably harmed by Defendants’

aforementioned wrongful acts, unless enjoined by the Court. There is no adequate remedy at law
for the harm caused by the wrongful acts alleged herein.
44.

In light of the likelihood of irreparable damage that will be caused by the sale of

counterfeit merchandise, the hardships that have been and are continuing to be dealt to Plaintiffs
on a daily basis both financially and to its reputation, and the harm that will come to
unsuspecting consumers of counterfeit merchandise, injunctive relief is warranted in order to
prevent defendants from continuing to violate the Trademark Act.
45.

Wherefore, Plaintiffs pray for the relief requested below.
SECOND CLAIM FOR RELIEF
(15 U.S.C. § 114(1) - Trafficking in Goods Bearing
Counterfeit Tobacco and Tobacco Products Marks)

46.

Plaintiffs repeat and re-allege the allegations contained in paragraphs 1 through

40 of this Complaint as if fully set forth herein.
47.

This claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C.

§1114(1), and is for the infringement and counterfeiting of trademarks registered in the United
States Patent and Trademark Office by Plaintiffs.
48.

Defendants’ willful, knowing and intentional production, distribution, sale and

offer for sale of counterfeit merchandise is in violation of 15 U.S.C. §1114(1), and is likely to
create confusion and mistake in the minds of consumers in causing them to believe that Plaintiffs
have authorized or approved the use of its Tobacco and Tobacco Products Marks on the
counterfeit merchandise.

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49.

Plaintiffs have been, are now, and will be irreparably harmed by Defendants’

aforementioned wrongful acts, unless enjoined by the Court. There is no adequate remedy at law
for the harm caused by the wrongful acts alleged herein.
50.

In light of the high probability of success for Plaintiffs in a trial on the merits, the

likelihood of irreparable damage that will be caused by the sale of counterfeit merchandise, the
hardships that have been and are continuing to be dealt to Plaintiffs on a daily basis both
financially and to its reputation, and the harm that will come to unsuspecting consumers of
counterfeit merchandise, injunctive relief is warranted in order to prevent defendants from
continuing to violate the Trademark Act.
51.

Wherefore, Plaintiffs pray for the relief requested below.
THIRD CLAIM FOR RELIEF

(15 U.S.C. § 1125(a) - False Designation of Origin and Trademark Infringement)
52.

Plaintiffs repeat and re-allege the allegations contained in paragraphs 1 through

40 of this Complaint as if fully set forth herein.
53.

This claim arises under Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a) and

alleges the Defendants’ use in commerce of false designations of origin and false descriptions
and representations.
54.

The TOP Marks are nationally recognized, including within the Northern District

of Illinois, as being affixed to goods and merchandise of the highest quality and coming from a
single source, Republic.
55.

The trademarks of Top Tobacco and, specifically, the TOP Marks, are in full

force and effect and Republic Tobacco is the exclusive distributor of products with these marks.

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56.

Defendants have entered the false-represented products into interstate commerce

by causing them to be sold to consumers in Illinois and within this judicial district. Defendants’
conduct has deceived the unsuspecting consuming public into believing that the counterfeit
product is authentic TOP-brand product when it is not.
57.

Defendants willfully, knowingly and intentionally have sold and continue to sell

counterfeit items bearing false marks that are either intentionally similar or identical to the TOP
Marks and violated 15 U.S.C.§1125(a), in that this use in commerce is in total disregard of
Republic Tobacco’s rights to control its marks.
58.

Defendants’ intentional use of the TOP Marks on inferior quality merchandise

threatens Plaintiffs’ control and use of the marks.

Plaintiffs have lost sales and suffered

diminished reputation as a result of Defendants’ acts and has otherwise been damaged.
59.

Moreover, Defendants’ willful, knowing and intentional infringement of the TOP

Marks will irreparably injure Plaintiffs’ business, and good will. The intentional nature of
Defendants’ aforementioned wrongful acts also makes this an exceptional case pursuant to 15
U.S.C. § 1117.
60.

Plaintiffs have been, is now, and will be irreparably harmed by defendants’

aforementioned wrongful acts, unless enjoined by the Court. There is no adequate remedy at law
for the harm caused by the wrongful acts alleged herein.
61.

Wherefore, Plaintiffs pray for the relief requested below.
FOURTH CLAIM FOR RELIEF
(15 U.S.C. § 1125(c) - Trademark Dilution)

62.

Plaintiffs repeat and re-allege the allegations contained in paragraphs 1 through

40 of this Complaint as if fully set forth herein.

15

63.

Defendants’ willful, knowing and intentional actions alleged herein constitute

dilution of Top Tobacco’s trademarks pursuant to 15 U.S.C. § 1125(c). Top Tobacco trademarks
are distinctive and famous, have been used throughout the United States for more than two
decades, and have been advertised throughout the United States in various forms of media and in
national advertising campaigns. Indeed, the TOP Marks were distinctive and famous at the time
of the activity complained of. The public generally associates Top Tobacco’s trademarks with
Plaintiffs.
64.

Defendants have been willfully distributing, selling and offering for distribution

and sale products that clearly purport to be those of Plaintiffs and in so doing are creating the
likelihood of confusion, mistake, or deception between Defendants’ merchandise and Plaintiff’s
products, especially because Defendants have been offering counterfeit product for sale
alongside authentic product.
65.

Defendants counterfeit product are of an inferior quality and not subject to the

quality control of Plaintiffs.
66.

Through their willful, intentional, knowing and purposeful actions of trading on

the Plaintiff’s reputation, and by diluting the quality of these marks, weakening the ability of the
public to distinguish Plaintiffs’ goods, tarnishing the reputation of Plaintiffs and thereby
deceiving the public, Defendants’ conduct constitutes dilution of Top Tobacco’s trademarks,
and, therefore, has damaged Plaintiffs.
67.

Defendants actions were done with the intent to exploit Plaintiffs’ reputation and

dilute Top Tobacco’s trademarks.

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68.

Plaintiffs have been, are now, and will be irreparably harmed by defendants’

aforementioned wrongful acts, unless enjoined by the Court. There is no adequate remedy at law
for the harm caused by the wrongful acts alleged herein.
69.

Wherefore, Plaintiffs pray for the relief requested below.
FIFTH CLAIM FOR RELIEF

(815 ILCS 510, et seq. - Violation of Illinois Uniform Deceptive Trade Practices Act)
70.

Plaintiffs repeat and re-allege the allegations contained in paragraphs 1 through

40 of this Complaint as if fully set forth herein.
71.

Defendants’ willful, knowing and intentional actions alleged herein constitute

deceptive trade practices within the meaning of 815 ILCS 510/2, in that the actions constitute
unlawful, unfair or fraudulent business acts or practices. Pursuant to 815 ILCS 510/3, Plaintiffs
are entitled to preliminary and permanent injunctive relief ordering Defendants to cease this
unfair competition, as well as disgorgement of all of Defendants’ profits associated with this
unfair competition.
72.

Plaintiffs have been, are now, and will be irreparably harmed by defendants’

aforementioned wrongful acts, unless enjoined by the Court. There is no adequate remedy at law
for the harm caused by the wrongful acts alleged herein.
73.

Wherefore, Plaintiffs pray for the relief requested below.
SIXTH CLAIM FOR RELIEF
(Common Law Trademark Infringement)

74.

Plaintiffs repeat and re-allege the allegations contained in paragraphs 1 through

40 of this Complaint as if fully set forth herein.

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75.

Top Tobacco owns all rights, title and interest in and to the TOP Marks, including

all common law rights in such marks.
76.

Defendants, without authorization from Plaintiff, have used and are continuing to

use spurious designations and that identical to, substantially indistinguishable from, or
confusingly similar to the TOP Marks.
77.

The foregoing acts of Defendants are intended to cause, have caused, and are

likely to continue to cause confusion, mistake, deception among consumers, the public, and trade
as to whether Defendants’ counterfeit products originate from, or are affiliated with, sponsored
by, or endorsed by Plaintiffs, especially because Defendants have been offering counterfeit
product for sale alongside authentic product.
78.

Upon information and belief, Defendants have acted with knowledge of Top

Tobacco’s ownership of the TOP Marks and with deliberate intention or willfull blindness to
unfairly benefit from the incalculable goodwill symbolized thereby.
79.

Defendants acts constitute trademark infringement in violation of the common

law of the State of Illinois.
80.

Upon information and belief, Defendants have made and will continue to make

substantial profits and/or gains to which they are not in law or equity entitled.
81.

Upon information and belief, Defendants intend to continue their infringing acts,

unless restrained by the Court.
82.

Defendants’ acts have damaged and will continue to damage Plaintiffs, and they

have no adequate remedy at law.
83.

Wherefore, Plaintiffs pray for the relief requested below.

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SEVENTH CLAIM FOR RELIEF
(765 ILCS 1035/15 - Illinois Anti-Dilution Act)
84.

Plaintiffs repeat and re-allege the allegations contained in paragraphs 1 through

40 of this Complaint as if fully set forth herein.
85.

The foregoing acts of Defendants constitute trademark dilution in violation of

Illinois common law and the Illinois Anti-Dilution Act (765 ILCS 1035/15).
86.

The TOP Marks are strong distinctive marks that have been in use for many years

and have achieved enormous and widespread public recognition.
87.

Through prominent, long, and continuous use in commerce, including commerce

within the State of Illinois, the TOP Marks have become and continue to be famous and
distinctive.
88.

Defendants’ sale of the counterfeit products, without authorization from Plaintiffs,

is diluting the distinctive quality of the TOP Marks and decreasing capacity of such marks to
identify and distinguish TOP-brand products and has caused a likelihood of harm to Plaintiffs’
business reputation, especially because Defendants have been offering counterfeit product for
sale alongside authentic product.
89.

Defendants have diluted the distinctive quality of the famous TOP Marks.

90.

Upon information and belief, Defendants have made and will continue to make

substantial profits and/or gains to which they are not in law or equity entitled.
91.

Upon information and belief, Defendants intend to continue their unlawful acts,

unless restrained by the Court.
92.

Defendants acts have damaged and will continue to damage Plaintiffs, and they

have has no adequate remedy at law.

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93.

Wherefore, Plaintiffs pray for the relief requested below.
EIGHT CLAIM FOR RELIEF
(Common Law Unfair Competition)

94.

Plaintiffs repeat and re-allege the allegations contained in paragraphs 1 through

40 of this Complaint as if fully set forth herein.
95.

The foregoing acts of Defendants constitute unfair competition in violation of the

common law of the State of Illinois.
96.

Upon information and belief, Defendants have made and will continue to make

substantial profits and/or gains to which they are not in law or equity entitled.
97.

Upon information and belief, Defendants intend to continue their unlawful acts,

unless restrained by the Court.
98.

Defendants acts have damaged and will continue to damage Plaintiffs, and they

have has no adequate remedy at law.
99.

Wherefore, Plaintiffs pray for the relief requested below.
PRAYER FOR RELIEF

WHEREFORE, Plaintiffs pray for the following relief:
1.

That judgment be entered as follows:
a.

in favor of Plaintiffs that Defendants violated the anti-counterfeiting
provisions of 15 U.S.C. § 1114(1);

b.

in favor of Plaintiffs that Defendants’ unlawful use of the TOP Marks in
interstate commerce constitutes false designation of origin and trademark
infringement, pursuant to 15 U.S.C. 1125(a);

c.

in favor of Plaintiffs that Defendants’ unlawful use of Plaintiffs’
trademarks in interstate commerce dilutes those marks and is a violation of
15 U.S.C. 1125(c);

d.

in favor of Plaintiffs that Defendants violated the Illinois Uniform
Deceptive Trade Practices Act;

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e.
f.

in favor of Plaintiffs that Defendants’ unlawful use of the TOP Marks
dilutes those marks and is a violation of 765 ILCS 1035/15;

g.
2.

in favor of Plaintiffs that Defendants have infringed Plaintiffs’ common
law trademark rights;

in favor of Plaintiffs that Defendants have in the past, and are presently,
unfairly competing with Plaintiffs;

An order requiring that Defendants, their subsidiaries, officers, agents, servants,

employees, owners and representatives, and all other persons or entities in active concert or
participation with them, be preliminarily and thereafter permanently enjoined and restrained
from:
a.

making any unauthorized use of the TOP Marks, or any reproduction,
counterfeit, copy or colorable imitation thereof, or any other of Plaintiffs’
marks, in connection with the sale of any goods or offering of any
services;

b.

manufacturing, distributing, advertising, marketing, promoting, offering
for sale, or selling any goods, wares, or services, including but not limited
to all rolling papers, or any other goods with marks or trade dress that look
confusingly similar to any of the TOP Marks, as well as any other forms
of markings, packaging, labels, wrappers, containers, articles, products,
displays, signs, circulars, kits, literature, materials, receptacles, catalogs,
price lists, promotional materials or websites and the like bearing a
reproduction, counterfeit, copy or colorable imitation of the TOP Marks;

c.

using any mark, trade dress, design, statement, or representation that may
be calculated to falsely represent or that has the effect of falsely
representing that the services or products of Defendants are in any way
sponsored by, originate with, or are in any way associated or approved by
Plaintiffs;

d.

falsely representing itself or its goods or services as affiliated, connected,
associated, or approved by Plaintiffs;

e.

advertising, marketing, promoting, offering for sale, selling, importing,
exporting, distributing and/or transferring rolling papers and related
products complained of herein and/or anything confusingly similar
thereto, or any reproduction, counterfeit, copy or colorable imitation
thereof, and/or any other of the TOP Marks;

f.

advertising, marketing, promoting, offering for sale, selling, and/or
distributing the rolling papers and related products complained of herein
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and/or anything confusingly similar thereto, or any reproduction,
counterfeit, copy or colorable imitation thereof, through any means
whatsoever, including but not limited to retail, wholesale, via the Internet,
mail order, telephone, or any other method of inter- or intrastate
commerce;
g.

h.
3.

doing any other act or thing calculated or likely to cause confusion or
mistake in the minds of members of the public, including prospective
customers of Plaintiffs, as to the source of the goods offered, distributed,
marketed, advertised, or sold by Defendants, or as to whether there is a
connection between Plaintiffs and Defendants; and
assisting, aiding, or abetting any other person or entity in engaging in any
of the acts set forth in (a) through (g) above;

An order that Defendants file with this Court and serve upon Plaintiffs within

thirty days after entry of the injunction, a report in writing under oath setting forth in detail the
manner and form in which Defendants have complied with the injunction entered by this Court;
4.

An order pursuant to 15 U.S.C. §§ 1116 and 1118 directing Defendants to deliver

up for destruction all products, catalogues, advertising, promotional and marketing materials in
its possession, custody, or control, or in the possession, custody, or control of any of its agents,
that feature any of the TOP Marks and/or any other goods that may infringe Plaintiffs’ Marks;
5.

An award of actual damages sustained by Plaintiffs, according to proof.

6.

An award of Defendants’ gains, profits and advantages derived from their

respective infringements, unfair competition and deceptive business practices.
7.

A declaration that this case is exceptional within the meaning of 15 U.S.C. §

8.

An award of Plaintiffs’ reasonable attorneys’ fees together with three times the

1117;

amount of whichever is greater of Defendants’ profits from its use of the TOP Marks or
Plaintiffs’ actual damages resulting from Defendants’ use of the TOP Marks, pursuant to 15
U.S.C. § 1117(a)-(b);

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9.

An award of exemplary and/or punitive damages to deter willful and wanton

conduct and to avoid future confusion or deception of the public and unfair competition with the
TOP Marks, pursuant to 15 U.S.C. § 1117(a) and common law;
10.

An award of Plaintiffs’ costs of this action and reasonable counsel fees and costs;

11.

An award of any other relief that this Court deems just and proper under the

circumstances.

Dated: June 30, 2011

KATTEN MUCHIN ROSENMAN LLP

By: /s Dara Chevlin Tarkowski
Martin T. Tully
Dara Chevlin Tarkowski
KATTEN MUCHIN ROSENMAN LLP
525 W. Monroe St.
Chicago, Illinois 60661
[phone]
Attorneys for Plaintiffs
Top Tobacco, L.P. and
Republic Tobacco, L.P.

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DEMAND FOR JURY TRIAL
Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff demands a trial by
jury.

Dated: June 30, 2011

By: /s Dara Chevlin Tarkowski
Martin T. Tully
Dara Chevlin Tarkowski
Katten Muchin Rosenman LLP
525 W. Monroe St.
Chicago, Illinois 60661
[phone]
Attorneys for Plaintiffs
50654838

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