Complaint Hy Vee

1

IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF OKLAHOMA

)HY-VEE, INC., )) Civil Action No.Plaintiff, ))vs. ))HY VEE CHINESE BUFFET, ))

JURY TRIAL DEMANDED

Defendant. ))

COMPLAINT

COMES NOW, Plaintiff Hy-Vee, Inc. (“Plaintiff”), and for its Complaint againstDefendant, Hy Vee Chinese Buffet – Skiatook, OK (“Defendant”), states and alleges as follows:

THE PARTIES

1.

Plaintiff is an Iowa corporation having a principal place of business at 5820Westown Parkway, West Des Moines, Iowa 50266.2.

Upon information and belief, Defendant, Hy Vee Chinese Buffet, is an Oklahomacorporation having a principal place of business at 709 West Rogers Boulevard, Skiatook,Oklahoma, 74070 with a phone number of (918)396-9925.

JURSIDICTION, AND VENUE

3.

Upon information and belief, Defendant began, and continues to operate, aChinese food buffet restaurant utilizing the name “Hy Vee” at the location of 709 West RogersBoulevard, Skiatook, Oklahoma, 74070. In addition, upon information and belief, Defendantutilizes the phone number (918)396-9925 wherein the “918” area code is designated to serve theNorth Eastern portion of Oklahoma. As such, upon information and belief, Defendants are doing

Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 1 of 11

11-CV-344-GKF-TLW

2business in this district and elsewhere. Therefore, Defendants are subject to jurisdiction in thisDistrict.4.

This action arises under the Acts of Congress for trademark infringement underthe Lanham Act, Title 15 U.S.C. § 1051, et seq., and common law.

This is an action is also forfalse designation of origin and unfair competition in violation of 15 U.S.C. § 1125(a) andcommon law.5.

This Court has subject matter jurisdiction under 15 U.S.C. § 1121(a) and 28U.S.C. § 1338(a), as this dispute contemplates, in part, federal questions arising under Section 43of the Lanham Act, 15 U.S.C. § 1125.6.

Subject matter jurisdiction over the non-federal questions raised herein is properunder 28 U.S.C. § 1367, as such claims are so related to the federal question claims that theyform part of the same case and controversy.7.

The subject matter of this Court is also invoked under 28 U.S.C. § 1391.8.

Venue is proper in this District in accordance with 28 U.S.C. § 1391.

PLAINTIFF’S BUSINESS AND TRADEMARK RIGHTS

9.

Plaintiff, Hy-Vee, Inc. operates more than 220 retail stores in eight Midwesternstates, including Illinois, Iowa, Kansas, Minnesota, Missouri, Nebraska, South Dakota andWisconsin. Hy-Vee, Inc. is the owner of a great number of federal trademark and service mark registrations for its famous “Hy-Vee” mark, including U.S. Service Mark Registration No.2,076,819.

1

(Ex. 1).

1

Hy-Vee, Inc. also owns the following federal registrations for the mark “HY-VEE” or variations thereof including:

DR. HY-VEE

2,608,001;

HY-VEE

(design) 3,217,660;

HY-VEE

(word mark) 3,217,662 &3,217,663;

HY-VEE BLUE RIBBON BEEF SATISFACTION GUARANTEED

(stylized) 3,672,607;

HY-VEE COMPLETE CAT

3,164,159;

HY-VEE COMPLETE DOG

3,551,923;

HY-VEEDRUGSTORE

3,123,338;

HY-VEE DU JOUR

(design) 3,355,723;

HY-VEE ENRICH

(stylized)

Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 2 of 11

310.

Hy-Vee, Inc. has been using the famous “Hy-Vee” in association with Hy-Vee,Inc’s business since as early as 1957. (Ex. 1).11.

Many of Hy-Vee, Inc.’s stores are progressive full-service grocery stores whichoffer a broad array of grocery related food and non-food items. In addition, many of these storeshave Chinese-food restaurants within them which operate under the name “Hy-Vee ChineseExpress”. (Ex. 2). Hy-Vee Chinese Express is the company’s fastest growing and most populardining service. (Ex. 2).12.

Hy-Vee, Inc. spends enormous quantities of time, money and energy promotingand developing recognition of its “Hy-Vee” mark and related retail stores and services. Thispromotion includes spending many millions of dollars annually in advertising efforts andcharitable endeavors. Much of this advertising and recognition extends beyond the area in whichHy-Vee, Inc. operates its grocery stores.13.

In addition to having a footprint of 220 stores which extend across 8 states, Hy-Vee, Inc. also promotes the “Hy-Vee” on the internet through various domains including itsflagship domain

www.hyvee.com

. 14.

Through these efforts the “Hy-Vee” mark has become distinctive.15.

Through these efforts the “Hy-Vee” mark has become famous.

3,673,848;

HY-VEE FISH MARKET

(stylized) 3,634,614;

HY-VEE FRUITY GO

(U.S Serial No.85/150,370 (pending);

HY-VEE FUNPAWS

(design) 3,467,033;

HY-VEE GARDEN HELPERS