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

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF OKLAHOMA

)
HY-VEE, INC., )
) Civil Action No. 11-CV-344-GKF-TLW
Plaintiff, )
)
vs. )
)
HY VEE CHINESE BUFFET, )
) JURY TRIAL DEMANDED
Defendant. )
)

COMPLAINT

COMES NOW, Plaintiff Hy-Vee, Inc. (“Plaintiff”), and for its Complaint against

Defendant, 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 5820

Westown Parkway, West Des Moines, Iowa 50266.

2. Upon information and belief, Defendant, Hy Vee Chinese Buffet, is an Oklahoma

corporation 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, a

Chinese food buffet restaurant utilizing the name “Hy Vee” at the location of 709 West Rogers

Boulevard, Skiatook, Oklahoma, 74070. In addition, upon information and belief, Defendant

utilizes the phone number (918)396-9925 wherein the “918” area code is designated to serve the

North Eastern portion of Oklahoma. As such, upon information and belief, Defendants are doing

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

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

District.

4. This action arises under the Acts of Congress for trademark infringement under

the Lanham Act, Title 15 U.S.C. § 1051, et seq., and common law. This is an action is also for

false designation of origin and unfair competition in violation of 15 U.S.C. § 1125(a) and

common law.

5. This Court has subject matter jurisdiction under 15 U.S.C. § 1121(a) and 28

U.S.C. § 1338(a), as this dispute contemplates, in part, federal questions arising under Section 43

of the Lanham Act, 15 U.S.C. § 1125.

6. Subject matter jurisdiction over the non-federal questions raised herein is proper

under 28 U.S.C. § 1367, as such claims are so related to the federal question claims that they

form 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 Midwestern

states, including Illinois, Iowa, Kansas, Minnesota, Missouri, Nebraska, South Dakota and

Wisconsin. 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-VEE
DRUGSTORE 3,123,338; HY-VEE DU JOUR (design) 3,355,723; HY-VEE ENRICH (stylized)
2
Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 3 of 11

10. 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 which

offer a broad array of grocery related food and non-food items. In addition, many of these stores

have Chinese-food restaurants within them which operate under the name “Hy-Vee Chinese

Express”. (Ex. 2). Hy-Vee Chinese Express is the company’s fastest growing and most popular

dining service. (Ex. 2).

12. Hy-Vee, Inc. spends enormous quantities of time, money and energy promoting

and developing recognition of its “Hy-Vee” mark and related retail stores and services. This

promotion includes spending many millions of dollars annually in advertising efforts and

charitable endeavors. Much of this advertising and recognition extends beyond the area in which

Hy-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 its

flagship 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
3,303,271; HY-VEE GRAND SELECTIONS 2,564,131; HY-VEE HARVEST CHIPS (design)
3,914,944; HY-VEE HOME HELPERS 3,231,652; HY-VEE HOMEGROWN (stylized) 85/084,505
(allowed); HY-VEE KITCHEN HELPERS 3,231,653; HY-VEE RANCH DIPPERS 3,164,153; HY-
VEE SEASONS (design) 3,483,308; HY-VEE SIMPLYLIGHT (stylized) 77/819,460 (allowed); HY-
VEE SPLASH 2,202,608; HY-VEE THUNDER SPORT DRINK (stylized) 3,502,808; HY-VEE
UNVEIL 3,231,395; HY-VEE VUE (design) 3,254,601; HY-VEE WATER REFRESHERS
3,164,152; and HY-VEE MAINSTREET (stylized) 85/288,693 (pending)
3
Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 4 of 11

16. Through Hy-Vee, Inc.’s continual use and promotion of the “Hy-Vee” mark in

connection with its business, including but not limited to Chinese food sales and the operation of

“Hy-Vee Chinese Express”, the “Hy-Vee” mark has become associated in the minds of the

public with Hy-Vee, Inc.’s goods and services. Accordingly, the “Hy-Vee” mark has acquired

secondary meaning with the relevant consuming public as being affiliated, connected or

associated with Hy-Vee, Inc.

DEFENDNAT’S UNLAWFUL CONDUCT

17. Upon information and belief, Hy-Vee, Inc. recently learned that Defendant, Hy

Vee Chinese Buffet recently started a Chinese food buffet restaurant at a single location at 709

West Rogers Boulevard, Skiatook, Oklahoma, 74070. (Exs. 3 & 4).

18. Upon information and belief Defendant offers prepared Chinese food at this

location.

19. Upon information and belief Defendant promotes itself as “Hy Vee Chinese

Buffet”, answers the phone by stating “Hy Vee Chinese” and has a sign in front of the business

which reads “Hy Vee Chinese Buffet”.

20. For purposes of background, upon learning of this conduct Hy-Vee, Inc. sent

cease and desist letters to Hy Vee Chinese Buffet on March 9, 2011 and April 25, 2011 in an

attempt to resolve this dispute without having to resort to litigation. (Exs. 5 & 6). However,

Defendant failed to respond to either letter.

21. By owning and operating a Chinese restaurant under the designation “Hy Vee,”

Defendant's use is likely to cause confusion or mistake amongst prospective consumers, or is

likely to mislead and/or deceive prospective consumers with respect to the origin and quality of

Defendant's services and/or products.

4
Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 5 of 11

22. Defendant targets the same consumer base as Hy-Vee, Inc.

23. Hy-Vee, Inc.’s goodwill is extremely valuable, and Defendant’s continued

unauthorized use of the “Hy-Vee” mark is detrimental to Hy-Vee, Inc.

24. Defendant has not received authorization or permission from Hy-Vee, Inc. to use

or continue using the “Hy-Vee” mark. Similarly, Hy-Vee, Inc. has not acquiesced to Defendant's

use of the “Hy-Vee” mark.

FIRST CLAIM FOR RELIEF

(Federal Trademark Infringement, 15 U.S.C. § 1117)

25. Hy-Vee, Inc. repeats and re-alleges, and incorporates by reference, the foregoing

paragraphs as though the same were fully set forth at length herein.

26. This cause of action is for trademark infringement pursuant to 15 U.S.C. § 1117 et

seq.

27. Hy-Vee, Inc. owns U.S. Service Mark Registration No. 2,076,819 for the mark

“Hy-Vee.” (Ex.1)1.

28. Hy-Vee, Inc. uses the mark in association with Chinese food restaurants within

many of its grocery stores. (Ex. 2).

29. Defendant's continued use of the mark “Hy Vee Chinese Buffet” is likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of

Defendant with Hy-Vee, Inc. and Hy-Vee, Inc. is likely to be damaged by such actions.

Accordingly, such conduct constitutes trademark infringement under Section 32 of the Lanham

Act.

5
Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 6 of 11

30. Defendant’s conduct described above has caused and, if not enjoined, will

continue to cause irreparable damage to the intellectual property rights of Hy-Vee, Inc, and its

business, reputation and goodwill. Hy-Vee, Inc.’s damages from the aforesaid unlawful actions

of Defendant, to the extent ascertainable, have not yet been determined.

SECOND CLAIM FOR RELIEF

(False Designation Of Origin And Unfair Competition

Per Section 43 Of The Lanham Act, 15 U.S.C. § 1125)

31. Hy-Vee, Inc. repeats and re-alleges, and incorporates by reference, the foregoing

paragraphs as though the same were fully set forth at length herein.

32. This cause of action is for false designation of origin and federal unfair

competition pursuant to 15 U.S.C. § 1125 et seq.

33. The aforementioned activities by Defendant constitute unfair competition and

false designation of origin, and are likely to cause confusion, mistake, or deception in violation

of the Lanham Act.

34. Defendant's conduct described above has caused and, if not enjoined, will

continue to cause irreparable damage to the intellectual property rights of Hy-Vee, Inc., and its

business, reputation and goodwill. Hy-Vee, Inc.’s damages from the aforesaid unlawful actions

of Defendant, to the extent ascertainable, have not yet been determined.

THIRD CLAIM FOR RELIEF

(STATE COMMON LAW UNFAIR COMPETITION)

35. Hy-Vee, Inc. repeats and re-alleges, and incorporates by reference, the foregoing

paragraphs as though the same were fully set forth at length herein.

36. This cause of action arises under the common law under the state of Oklahoma.

6
Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 7 of 11

37. Defendant's activities constitute unfair competition and unfair trade practices,

which are likely to cause confusion, mistake, or deception with Hy-Vee, Inc.’s “Hy-Vee” mark,

thereby constituting common law unfair competition.

38. Defendant's conduct described above has caused and, if not enjoined, will result

in the loss of the exclusive rights and benefits that Hy-Vee, Inc. is entitled to enjoy under the

common law and will continue to cause irreparable damage to the rights of Hy-Vee, Inc. in its

“Hy-Vee” mark, and its business, reputation, and good will.

39. On information and belief, Defendant will continue to infringe Hy-Vee, Inc.’s

valuable intellectual property unless restrained by this Court.

40. Hy-Vee, Inc. has suffered and is continuing to suffer irreparable injury for which

there is no adequate remedy at law.

41. Hy-Vee, Inc.’s damages from the aforesaid unlawful actions of Defendant, to the

extent ascertainable, have not yet been determined.

FOURTH CLAIM FOR RELIEF

(Dilution)

42. Hy-Vee, Inc. repeats and re-alleges, and incorporates by reference, the foregoing

paragraphs as though the same were fully set forth at length herein.

43. Defendant's activities constitute trademark dilution of the “Hy-Vee” mark, in

violation of Section 43(c) of the Lanham Act., 15 U.S.C. § 1125(c). The “Hy-Vee” mark can be

considered incontestable, conclusively valid, famous, registered, and protected under the

Trademark Act, at the time Defendant began using the “Hy Vee” designation.

44. Defendant's use of the “Hy Vee” designation will tarnish and dilute the distinctive

qualities of the “Hy-Vee” mark, thereby causing injury to Hy-Vee, Inc..

7
Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 8 of 11

45. As a direct and proximate result of Defendant's wrongful conduct, Hy-Vee, Inc.,

amongst other things, is deprived of value in its “Hy-Vee” mark as a commercial asset. Hy-Vee,

Inc. does not fully benefit from the strength of the “Hy-Vee” mark that has resulted from Hy-

Vee, Inc’s extensive advertising, sales, success, goodwill, and consumer recognition.

46. Defendant's conduct is continuing and will continue unless restrained by the

Court. Unless Defendant is enjoined from engaging in their wrongful conduct, Hy-Vee, Inc. will

suffer irreparable injury and further harm, for which it has no adequate remedy at law. Defendant

should be ordered to immediately cease operating Chinese food restaurants or buffets utilizing

the “Hy Vee” designation.

47. Hy-Vee, Inc.’s damages from the aforesaid unlawful actions of Defendant, to the

extent ascertainable, have not yet been determined.

FIFTH CLAIM FOR RELIEF

(Unjust Enrichment)

48. Hy-Vee, Inc. repeats and re-alleges, and incorporates by reference, the foregoing

paragraphs as though the same were fully set forth at length herein.

49. This cause of action arises under the common law.

50. By the acts and activities of Defendant complained of herein, Defendant has been

unjustly enriched to the detriment of Hy-Vee, Inc. through its use of confusingly similar

designations for its goods and services provided under the designation “Hy Vee.”

51. Such activities damage Hy-Vee, Inc.’s business, reputation, and good will, and

benefit Defendant's business.

52. Hy-Vee, Inc.’s damages from the aforesaid unlawful actions of Defendant, to the

extent ascertainable, have not yet been determined.

8
Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 9 of 11

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Hy-Vee, Inc. prays that the Court enter judgment in its favor on

each and every claim for relief set forth above and award relief including but not limited to the

following:

1. That the Court preliminary and permanently enjoin and restrain Defendant, its

officers, directors, agents, employees and all persons in active concert or participation with it

who receives actual notice of the injunction, by personal service or otherwise, from doing,

abiding, causing or abetting any of the following:

A. infringing or contributing to the infringement of the “Hy-Vee" mark or

any variant thereof;

B. engaging in any acts or activities directly or indirectly calculated to

infringe any of Hy-Vee, Inc.’s marks;

C. using in selling, offering for sale, promoting, advertising, marketing or

distributing of press releases, articles, advertisements or marketing materials that include false

designation of origin;

D. using any designation, term, marks, slogan, logo, configuration or design

that is confusingly similar to Hy-Vee, Inc’s “Hy-Vee” mark; and

E. otherwise competing unfairly with Hy-Vee, Inc. in any manner

whatsoever.

2. That the Court find that Defendant is infringing Hy-Vee, Inc.’s mark, that

Defendant is competing unfairly with Hy-Vee, Inc., and that Defendant has been unjustly

enriched.

9
Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 10 of 11

3. That the Court order Defendant to deliver up to Hy-Vee, Inc. for destruction, at

Defendant's expense, all signage, newsletters, articles, web site materials, literature, brochures,

promotional materials, advertisements, menus and other communications to the public in the

possession or under the control of Defendant, and any other material or any representations that

are or may contain designations similar to Hy-Vee, Inc.’s “Hy-Vee” mark.

4. That the Court order Defendant to account for and pay to Hy-Vee, Inc. the

damages to which Hy-Vee, Inc. is entitled as a consequence of the infringement of Hy-Vee,

Inc.’s “Hy-Vee” mark in violation of Section 1117 of Title 15 of the United States Code.

5. That the Court order Defendant to account for and pay to Hy-Vee, Inc. the

damages to which Hy-Vee, Inc. is entitled as a consequence of the infringement of Hy-Vee,

Inc.’s “Hy-Vee” mark in violation of Section 1125 of Title 15 of the United States Code.

6. That the Court order Defendant to account for and to pay over to Hy-Vee, Inc. all

damages suffered by Hy-Vee, Inc. as a result of Defendant's unfair competition.

7. That the Court order Defendant to account for and pay over to Hy-Vee, Inc. all

profits received by Defendant from its unlawful acts, and for its unjust enrichment.

8. That the Court award Hy-Vee, Inc. its actual damages and interest allowed by

law.

9. That the Court award Hy-Vee, Inc. its compensatory, incidental, and

consequential damages.

10. That the Court award Hy-Vee, Inc. enhanced, treble, and/or punitive damages

because of willful actions.

11. That the Court award Hy-Vee, Inc. its reasonable attorneys’ fees and the costs of

this action.

10
Case 4:11-cv-00344-GKF -TLW Document 2 Filed in USDC ND/OK on 06/02/11 Page 11 of 11

12. That the Court grant Hy-Vee, Inc. such other relief as is just and proper.

JURY TRIAL DEMAND

COMES NOW the Plaintiff and hereby demands a trial by jury of all issues herein.

By: /s Cassandra L.Wilkinson

Cassandra L. Wilkinson, OK Bar No. 20368
Head, Johnson & Kachigian, P.C.
Moore Manor
228 West 17th Place
Tulsa, Oklahoma 74119
Telephone: 918.587.2000
Facsimile: 918.584.1718
E-mail: cwilkinson@hjklaw.com

Attorneys For Plaintiff Hy-Vee, Inc.

11