Trinity Groves v. Trader Joe's - Complaint

Case 3:20-cv-03364-L Document 1 Filed 11/10/20 Page 1 of 23 PageID 1
UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
TRINITY GROVES RESTAURANT §

INCUBATOR PARTNERS, LP, a Texas §
Limited Partnership, and CHOCOLATE §
HOUSE INCUBATOR RETAIL, LLC, a §
Texas Limited Liability Company, §
§
Plaintiffs, §
§ CIVIL ACTION NO. _______
v. §
§ JURY TRIAL DEMANDED
TRADER JOE’S COMPANY, a California §
Corporation, and TRADER JOE’S EAST §
INC., a Massachusetts Corporation, §
§
Defendants. §
PLAINTIFFS’ ORIGINAL COMPLAINT
This is an action for trademark and trade dress infringement, patent infringement,
unfair competition and dilution by Trinity Groves Restaurant Incubator Partners, LP,
and Chocolate House Incubator Retail, LLC (“Plaintiffs”) against Trader Joe’s Company
and Trader Joe’s East Inc. (“Defendants”).
PARTIES
1. Trinity Groves Restaurant Incubator Partners, LP (“Trinity”) is a Texas
limited partnership with its principal place of business at 331 Singleton Boulevard, Suite
200, Dallas, Texas 75212.
2. Chocolate House Incubator Retail, LLC (“Chocolate House”) is a Texas
limited liability company with its principal place of business at 331 Singleton Boulevard,
Suite 200, Dallas, Texas 75212.
Plaintiffs’ Original Complaint Page 1

3. Trader Joe’s Company is a California corporation with its principal place of
business at 800 S. Shamrock Avenue, Monrovia, California 91016. Trader Joe’s Company
may be served through its registered agent, Paracorp Incorporated at 3610-2 N. Josey
Lane, Suite 223, Carrollton, Texas 75007.
4. Trader Joe’s East Inc. is a Massachusetts corporation with its principal place
of business at 160 Federal Street, Boston, Massachusetts 02110. Trader Joe’s East Inc. may
be served through its registered agent, Paracorp Incorporated at 3610-2 N. Josey Lane,
Suite 223, Carrollton, Texas 75007.
JURISDICTION AND VENUE
5. This action arises under the patent laws of the United States, 35 U.S.C. § 101,
et seq., the trademark laws of the United States, 15 U.S.C. § 1051, et seq., Texas common
law trademark and trade dress infringement, unfair competition, and dilution under
TEX. BUS. & COM. CODE § 16.102.
6. This Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 and 28
U.S.C. §§ 1331, 1338, and 1367.
7. This suit is based on federal questions and statutes, namely 15 U.S.C. § 1051 et
seq. and 35 U.S.C. § 101 et seq.
8. In addition, jurisdiction under 28 U.S.C. § 1332 exists because the parties have
diversity of citizenship and the matter in controversy exceeds $75,000, exclusive of
interest and costs.

9. Supplemental jurisdiction over the causes of action under state law is proper,
as they are substantially related to those causes over which the court has original
jurisdiction, pursuant to 28 U.S.C. § 1367.
10. Upon information and belief, Trade Joe’s Company and Trader Joe’s East Inc.
are jointly owned and managed companies that operate as a single joint business
enterprise doing business as Trader Joe’s (collectively, “Trader Joe’s” or “Defendants”)
with at least Dan Bane, Sharon Drabeck, and Mitch Nadler as directors of Trader Joe’s.
11. This Court has personal jurisdiction over Defendants because Defendants
own and operate Trader Joe’s retail stores in the Northern District of Texas and
throughout Texas, and market, offer for sale and sell the accused products through the
Trader Joe’s retail stores and the Trader Joe’s website (www.traderjoes.com). Defendants
regularly conduct business in Texas and in this District via their Trade Joe’s retail stores
and website and have committed and continue to commit acts of trademark and trade
dress infringement, patent infringement, unfair competition and trademark dilution in
Texas and in this District.
12. Defendants have directly or indirectly infringed the asserted patent in the
Northern District of Texas by making, importing, using, selling, or offering for sale the
accused product in Texas and in this District; directly or indirectly placing the same into
the stream of commerce to be distributed, marketed, sold, or offered for sale in Texas
and in this District; and knowingly inducing or contributing to others’ infringement of
the asserted patent by contracting with and directing others to use, distribute, market,

sell, or offer for sale the accused product for which there are no substantial non-
infringing uses in Texas and in this District.
13. Defendants are subject to this Court’s jurisdiction because Defendants have
established minimum contacts with the forum such that the exercise of jurisdiction over
Defendants would not offend traditional notions of fair play and substantial justice by
deriving substantial revenue from the sale and use of products and services, including
the accused product, within this District; expecting or being in a position to reasonably
expect its actions to have consequences within this District; and regularly doing
business, soliciting business, engaging in other persistent acts of conduct; and deriving
substantial revenue from goods and services provided to individuals in Texas and in this
District.
14. Plaintiffs are Texas business entities with their principal places of business in
this District. These acts cause injury to Plaintiffs within the District.
15. Venue is proper in this District under 28 U.S.C. § 1391 because a substantial
part of the events or omissions giving rise to Plaintiffs’ claims occurred, or a substantial
part of property that is the subject of the action is situated, in this District. Venue is also
proper under 28 U.S.C. § 1400(b) because the Defendants have regular and established
places of business in this District and have committed acts of patent infringement in this
District.
CARL THE SNOWMAN
16. Plaintiffs make unique and decorative chocolates that incorporate various
distinct elements exclusively used by Plaintiffs. Such elements are often relied upon by

consumers to indicate the source of the chocolates as Plaintiffs’ brand. Plaintiffs’
products have been featured in numerous ads and articles about premier chocolates
since 2014. In addition to their retail presences online and in their own stores, Plaintiffs
partner with Neiman Marcus nationwide. One of Plaintiffs’ most famous products, Carl
the Snowman (“CARL”), was on Oprah’s Favorite Things List for 2018
(https://www.oprahmag.com/life/a24483259/oprah-favorite-things-2018/).
17. Trinity is the owner of all rights, title and interest in and to (1) U.S.
Trademark No. 5,030,523 (attached as Exhibit A) which covers the CARL product and
design for “chocolates and chocolate based ready to eat candies and snacks; drinking
chocolate, namely, chocolate based beverages; and marshmallows, all sold as a kit”
(referred to as “the ‘523 Registration”), and (2) all common law trademark and/or trade
dress rights in the shape and design of the CARL product for chocolate-based candies,
snacks and beverages (collectively, the “CARL Trade Dress”), as shown below:
18. Chocolate House is the owner by assignment of all rights, title, and interest in
and to U.S. Patent No. D891,027 (“the ’027 Patent”), which is directed to a food product,
and is attached as Exhibit B. One figure from the ‘027 Patent of the design is reproduced
below:

FIG . I
ACCUSED PRODUCT
19. Defendants make, use, import, sell, offer for sale, advertise and market a
Trader Joe’s branded product known as “Hot Cocoa Snowman,” which was posted in
the fall of 2019 on their website
(https://www.traderjoes.com/FearlessFlyer/Article/5248) and which was covered in
news articles (https://www.sheknows.com/food-and-recipes/articles/2131920/trader-
joes-new-holiday-products-2019/) (the “Accused Product”).
20. An image of the Accused Product is reproduced hereinbelow:

21. The Accused Product impermissibly replicates CARL’s distinctive features,
which are covered by the ‘523 Registration, the ’027 Patent, and the CARL Trade Dress.
Namely, both products consist of: (a) a white-color winter or holiday themed chocolate
figure; (b) a snowman in which the snowman figure is made up of one larger rounded
base with a smaller rounded ball stacked on top of the larger base to form snowman
shape; (c) a snowman having two brown-color chocolate-based eyes with a triangular
orange-color nose; (d) a snowman wearing a hat which is positioned slightly askew to
the right of the snowman; and (e) a snowman made of an outer chocolate shell, which is
meant to be dissolved in hot liquid to form a chocolate-based beverage. A side-by-side
comparison of Defendants’ Accused Product and Plaintiffs’ CARL product that
demonstrates the foregoing is set forth below:

COUNT ONE
FEDERAL TRADEMARK INFRINGEMENT (15 U.S.C. § 1114(a))
U.S. Registration No. 5,030,523
22. Plaintiffs repeat and re-allege the allegations in the foregoing paragraphs.
23. Trinity owns the ‘523 Registration which covers a three-dimensional product
having a shape and design comprising a configuration of a snowman with eyes, a nose
and a button, wearing a hat, sitting atop a square piece of chocolate. The product shape
and design of the Accused Product is confusingly similar to Trinity’s registered mark
comprising the product shape and design as set forth in the ‘523 Registration, and
Defendants’ use, manufacture, advertising, marketing, distribution and/or sale of the
Accused Product is likely to cause confusion, mistake or deceive relevant consumers as
to source or origin.
24. Defendants’ use, manufacture, advertising, marketing, distribution and/or
sale of the Accused Product is likely to cause confusion, or to cause mistake, or to
deceive the consumer as to the affiliation, connection or association of Defendants with
Trinity, or as to the origin, sponsorship, or approval by Trinity of Defendants’ goods or
commercial activities.
sale of the Accused Product enables Defendants to unfairly benefit from Trinity’s
reputation, success and goodwill in its registered mark, thereby giving Defendants’
Accused Product sales and commercial value it would not have otherwise.

26. Prior to Defendants’ use of Trinity’s registered mark, Defendants were aware
of Trinity’s business and had either actual notice and knowledge, or constructive notice
of Trinity’s ‘523 Registration and use and sale of its CARL products.
27. Defendants’ unauthorized use of Trinity’s registered mark for its Accused
Product is likely, if not certain, to deceive or to cause confusion or mistake among
consumers as to the origin, sponsorship, or approval of the Accused Product and/or to
cause confusion or mistake as to any affiliation, connection or association between
Trinity and Defendants, and between Trinity’s and Defendants’ respective products, in
violation of 15 U.S.C. § 1114(a).
28. Trinity is informed and believes, and on that basis alleges, that Defendants’
infringement of Trinity’s registered mark as described herein has been and continues to
be intentional, willful, and without regard to Trinity’s rights.
29. Trinity is informed and believes, and on that basis alleges, that Defendants
have gained profits by virtue of their infringement of Trinity’s registered mark.
30. Trinity will suffer and is suffering irreparable harm from Defendants’ use of
Trinity’s registered mark in connection with the commercialization of Defendants’
Accused Product insofar as Trinity’s invaluable goodwill is being eroded by Defendants’
continuing infringement. Trinity has no adequate remedy at law to compensate it for the
loss of business reputation, customers, market position, confusion of potential customers
and goodwill flowing from Defendants’ infringing activities. Pursuant to 15 U.S.C. §
1116, Trinity is entitled to an injunction against Defendants’ continuing infringement of

Trinity’s registered mark. Unless enjoined, Defendants will continue their infringing
conduct.
31. Because Defendants’ actions have been committed with intent to damage
Trinity and to confuse and deceive the public, Trinity is entitled to treble its actual
damages or Defendants’ profits, whichever is greater, and to an award of costs and, this
being an exceptional case, reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a) and
15 U.S.C. § 1117(b).
COUNT TWO
PATENT INFRINGEMENT
The ‘027 Patent
33. Chocolate House owns the ’027 Patent.
34. Defendants, without authorization from Chocolate House, have made, used,
offered for sale, sold, and/or imported into the United States, and continue to make, use,
offer for sale, sell, and/or import in or into the United States, the Accused Product which
has a design that infringes the ’027 Patent.
35. The overall appearance of the design(s) of the ’027 Patent and the
corresponding design of the Accused Product are substantially the same.
36. An ordinary observer will perceive the overall appearance of the design(s) in
the ’027 Patent and the corresponding design of the Accused Product to be substantially
the same.
37. Chocolate House is informed and believes, and on that basis alleges, that
Defendants intended to copy the design covered by the ’027 Patent.

38. Defendants sell and offer to sell the Accused Product directly to end-user
customers through their retail stores.
39. Defendants sell and offer to sell the Accused Product directly to end-user
customers in the United States, including in Texas.
40. Chocolate House is informed and believes, and on that basis alleges, that
Defendants have infringed and continue to infringe the ’027 Patent within the meaning
of 35 U.S.C. § 271 at least by making, using, selling, offering to sell, and/or importing the
Accused Product into the United States without Chocolate House’s authorization.
COUNT THREE
FEDERAL UNFAIR COMPETITION/FALSE DESIGNATION
OF ORIGIN (15 U.S.C. § 1125(a))
The CARL Trade Dress
42. Trinity is the owner of all right and title to the distinctive CARL Trade Dress.
The CARL Trade Dress is inherently distinctive and not functional, or has otherwise
acquired secondary meaning in the marketplace.
43. Trinity has extensively promoted the distinctive CARL Trade Dress which
has resulted in Trinity’s acquisition of valuable, legally protected rights in the CARL
Trade Dress as well as considerable goodwill.
44. Defendants have unfairly competed with and infringed the CARL Trade
Dress by using, manufacturing, advertising, marketing, distributing and/or selling their
Accused Product that includes a combination of several elements of the CARL Trade
Dress, such as: (a) a white-color winter or holiday themed chocolate figure; (b) a
snowman in which the snowman figure is made up of one larger rounded base with a

smaller rounded ball stacked on top of the larger base to form a snowman shape; (c) a
snowman having two brown-color chocolate-based eyes with a triangular orange-color
nose; (d) a snowman wearing a hat which is positioned slightly askew to the right of the
snowman; and (e) a snowman made of an outer chocolate shell, which is meant to be
dissolved in hot liquid to form a chocolate-based beverage. By appropriating the CARL
Trade Dress, Defendants intended to trade on Trinity’s and CARL’s reputation and
goodwill.
45. Defendants’ use, manufacture, distribution, advertising, marketing and
selling of the Accused Product constitutes a false designation of origin which has caused
confusion, or is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of Defendants with Trinity, or as to the origin,
sponsorship, or approval of Defendants’ Accused Product or commercial activities by
Trinity. Defendants’ actions have enabled Defendants to benefit unfairly from Trinity’s
reputation and success, thereby giving Defendants’ Accused Product sales and
commercial value it would not have otherwise.
46. Defendants’ actions constitute unfair competition, false designation of origin
and trade dress infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C.
§ 1125(a).
47. Upon information and belief, Defendants had knowledge of Trinity’s CARL
products when they designed their Accused Product and, therefore, Defendants’
infringement has been and continues to be intentional, willful and without regard to
Trinity’s rights in the CARL Trade Dress.

48. Trinity has been and will continue to be irreparably harmed and damaged by
Defendants’ conduct, and Trinity lacks an adequate remedy at law to compensate for
this harm and damage.
49. Trinity is informed and believes, and on that basis alleges, that Defendants
have gained profits by virtue of their infringement of Trinity’s CARL Trade Dress.
50. Trinity has also sustained damages as a direct and proximate result of
Defendants’ infringement of the CARL Trade Dress.
51. Because Defendants’ actions have been willful, Trinity is entitled to treble its
actual damages or Defendants’ profits, whichever is greater, and to an award of costs
and, this being an exceptional case, reasonable attorneys’ fees pursuant to 15 U.S.C. §
1117(a).
COUNT FOUR
FEDERAL TRADEMARK/TRADE DRESS DILUTION (15 U.S.C. § 1125(c))
U.S. Registration No. 5,030,523 and the CARL Trade Dress
53. Trinity’s respective registered mark and the CARL Trade Dress each are
famous and have been in use on products and advertised continuously throughout the
United States since December 1, 2014.
54. Trinity’s respective registered mark and the CARL Trade Dress each have
received extensive publicity through third-party recognition and are famously
associated and recognized with Trinity’s products.

55. Both the registered mark and the CARL Trade Dress became famous prior to
Defendants’ use, manufacture, distribution, advertising, marketing and selling of the
Accused Product.
56. The foregoing acts of Defendants have caused dilution, or are likely to cause
dilution of the registered mark and the CARL Trade Dress, and have induced others to
act in a manner that dilutes or is likely to dilute the distinctive quality of the registered
mark and the CARL Trade Dress and is intended to undermine the uniqueness and
distinctiveness of the registered mark and the CARL Trade Dress, constituting a
violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
57. Defendants have willfully sought to trade on the recognition, or harm the
reputation, of the registered mark and the CARL Trade Dress, and cause dilution and
induce others to dilute the registered mark and the CARL Trade Dress. Further evidence
of Defendants’ intent to trade on the recognition of Trinity’s registered mark and the
CARL Trade Dress are the facts that the CARL product and the Accused Product both
consist of: (a) a white-color winter or holiday themed chocolate figure; (b) a snowman in
which the snowman figure is made up of one larger rounded base with a smaller
rounded ball stacked on top of the larger base to form a snowman shape; (c) a snowman
having two brown-color chocolate-based eyes with a triangular orange-color nose; (d) a
snowman wearing a hat which is positioned slightly askew to the right of the snowman;
and (e) a snowman made of an outer chocolate shell, which is meant to be dissolved in
hot liquid to form a chocolate-based beverage.

58. By reason of all the foregoing, Trinity has been damaged by Defendants’
willful and deliberate use of the registered mark and the CARL Trade Dress in the
manner set forth above and will continue to be damaged unless Defendants are enjoined
from the same.
59. Trinity has a substantial likelihood of success stemming from a demonstrably
clear legal right, and Defendants’ acts have caused and will cause irreparable injury to
Trinity for which Trinity has no adequate remedy at law.
60. Because Defendants’ actions have been willful, Trinity is entitled to the
remedies as described by 15 U.S.C. § 1125(c)(5), which references 15 U.S.C. §§ 1117(a)
and 1118.
COUNT FIVE
TEXAS COMMON LAW TRADEMARK/TRADE DRESS INFRINGEMENT
62. Defendants’ acts constitute trademark/trade dress infringement under the
common law of the State of Texas.
63. Defendants’ use of the CARL Trade Dress and/or colorable imitations thereof
is likely to cause consumer confusion as to the origin, sponsorship, and affiliation of its
Accused Product, at least by creating the false and misleading impression that its
Accused Product is manufactured by, authorized by, or otherwise associated with
Trinity.
64. Trinity’s CARL Trade Dress is entitled to protection under common law. The
CARL Trade Dress includes unique, distinctive, and non-functional designs, or has

otherwise acquired secondary meaning in the marketplace. Trinity has extensively and
continuously promoted and used the CARL Trade Dress in the United States and the
State of Texas. Through extensive and continuous use, the CARL Trade Dress has
become a well-known indicator of the origin and quality of the CARL product.
65. Defendants’ use of the CARL Trade Dress has caused, and unless enjoined,
will continue to cause substantial and irreparable injury to Trinity for which Trinity has
no adequate remedy at law, including at least substantial and irreparable injury to the
goodwill and reputation for quality associated with the CARL Trade Dress and CARL
product.
66. Upon information and belief, Defendants’ use of the CARL Trade Dress and
colorable imitations thereof has been intentional, willful, and malicious. Defendants’ bad
faith is evidenced at least by the similarity of its Accused Product to the CARL Trade
Dress, as demonstrated above, and by Defendants’ continuing disregard for Trinity’s
rights.
67. Further, as a result of such infringement, Defendants have made unjust
profits and ill-gotten gains from the marketing, promotion, distribution, and sale of the
Accused Product by trading on the goodwill associated with Trinity and its products,
including the CARL product and the CARL Trade Dress.
68. Trinity is entitled to injunctive relief, and Trinity is entitled to recover at least
Defendants’ profits, Trinity’s damages, punitive damages, costs, and reasonable
attorneys’ fees.

COUNT SIX
TRADE DRESS DILUTION UNDER TEX. BUS. & COM. CODE § 16.103
70. Defendants’ offers to sell, sales, distribution, and/or advertisement of the
Accused Product violates § 16.103 of the TEXAS BUSINESS AND COMMERCE CODE.
sale of the Accused Product, in competition with Trinity, constitutes common law trade
dress dilution because of Defendants’ use of the CARL Trade Dress and/or colorable
imitations thereof. Such use is likely to cause dilution of Trinity’s CARL Trade Dress.
72. The CARL Trade Dress is entitled to protection under Texas law. The CARL
Trade Dress includes unique, distinctive, and non-functional designs, or has otherwise
acquired secondary meaning in the marketplace in the United States and in Texas.
Trinity has extensively and continuously promoted and used the CARL Trade Dress in
the United States and in the State of Texas. Through that extensive and continuous use,
the CARL Trade Dress has become a well-known indicator of the origin and quality of
the CARL product. Moreover, the CARL Trade Dress acquired secondary meaning
before Defendants commenced their unlawful use of the CARL Trade Dress in
connection with the Accused Product.
73. Defendants’ use of the CARL Trade Dress has caused, and unless enjoined
will continue to cause, substantial and irreparable injury to Trinity for which Trinity has
no adequate remedy at law, including substantial and irreparable injury to the goodwill

and reputation for quality associated with the CARL Trade Dress and the CARL
product.
74. Upon information and belief, Defendants’ use of the CARL Trade Dress and
colorable imitations thereof has been intentional, willful, and malicious. Defendants’ bad
faith is evidenced at least by the similarity of their Accused Product to the CARL Trade
Dress, as demonstrated above, and by Defendants’ continuing disregard for Trinity’s
rights.
Accused Products by trading on the intellectual property associated with Trinity’s
products, including the CARL product and the CARL Trade Dress.
76. Trinity is entitled to injunctive relief and to recover at least Defendants’
profits, Trinity’s damages, punitive damages, costs, and reasonable attorneys’ fees under
TEX. BUS. & COM. CODE § 16.104.
COUNT SEVEN
TEXAS COMMON LAW UNFAIR COMPETITION
78. Defendants’ conduct and actions set forth above constitute unfair competition
in violation of the common law of the State of Texas by simulating or copying the CARL
Trade Dress in an intentional and calculated manner that is likely to cause consumer
confusion as to the origin, sponsorship, and affiliation of Defendants’ Accused Product
and/or to pass off Defendants’ Accused Products as those of Trinity.

79. As a result of such unfair competition, Trinity has suffered damages and
sustained injury to its goodwill, business reputation and the CARL product symbolized
by the CARL Trade Dress. Defendants’ unauthorized activities undermine Trinity’s
goodwill and negatively impact Trinity’s ability to develop and promote the CARL
product.
80. Upon information and belief, Defendants’ use of Trinity’s CARL Trade Dress
and colorable imitations thereof has been intentional, willful, and malicious and their
bad faith is evidenced at least by the similarity of the Accused Product to Trinity’s CARL
product and the CARL Trade Dress, as demonstrated above.
Accused Product by trading on the intellectual property associated with the CARL
product, including the CARL Trade Dress, as described above.
attorneys’ fees.
COUNT EIGHT
COMMON LAW MISAPPROPRIATION
84. Defendants’ advertisements, promotions, offers to sell, sales, and/or
distribution of the Accused Product as described above, in direct competition with
Trinity, constitute common law misappropriation.

85. Plaintiffs created the CARL product through extensive time, labor, effort,
skill, and money. Defendants have wrongfully used the CARL Trade Dress and/or
colorable imitations thereof, in direct competition with Trinity and gained a special
advantage because Defendants were not burdened with the expenses incurred by Trinity
in creating its CARL product. Defendants have commercially damaged Trinity, at least
by causing consumer confusion as to the origin, sponsorship, and affiliation of
Defendants’ Accused Product, by creating the false and misleading impression that its
Accused Product is manufactured by, authorized by, or otherwise associated with
Trinity, and by taking away sales that Trinity would have made.
86. Defendants’ use of the CARL Trade Dress and colorable imitations thereof
has been intentional, willful, and malicious. Defendants’ bad faith is evidenced at least
by the similarity of the Accused Product to the Trinity’s CARL Trade Dress, as
demonstrated above, and by Defendants’ continuing disregard for Trinity’s rights.
87. Further, as a result of Defendants’ unfair acts, Defendants have made unjust
profits and ill-gotten gains from the marketing, promotion, distribution, and sale of its
Accused Product by trading on the intellectual property and goodwill associated with
Trinity’s CARL products.
attorneys’ fees.

COUNT NINE
UNJUST ENRICHMENT
90. Defendants have made unjust profits from the sale of its Accused Product by
improperly trading on and using the intellectual property rights of Trinity in the CARL
product, including the CARL Trade Dress.
91. Defendants’ conduct and actions set forth above constitute unjust enrichment
under the common law of Texas.
92. Trinity is entitled to a disgorgement of the unjust profits made by
Defendants.
DEMAND FOR JURY TRIAL
93. Plaintiffs demand that all issues so triable be determined by a jury.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs pray for relief against Defendants as follows:
94. A judgment that Defendants have infringed Trinity’s registered mark as set
forth in the ‘523 Registration;
95. A judgment that Defendants have infringed Trinity’s CARL Trade Dress;
96. All damages sustained by Trinity based on Defendants’ infringement of the
CARL Trade Dress, false designations of origin, dilution of the CARL Trade Dress, and
acts of unfair competition;
97. An order and judgment preliminarily and permanently enjoining
Defendants, their officers, agents, servants, employees, representatives, licensees,

successors, assigns, and all those in privity, active concert, or participation with any of
them from using the CARL Trade Dress, or anything confusingly similar thereto, and
from using, affixing, offering for sale, and advertising drinkable chocolate snowmen in
the configuration currently used for the Accused Product or any configuration
substantially similar thereto;
98. Damages awarded under 15 U.S.C. § 1117(a) in the amount of total profits
received by Defendants from, and any damages sustained by Trinity as a result of,
Defendants’ sales of the Accused Product;
99. Enhanced damages awarded under 15 U.S.C. § 1117(a) up to three times
the amount found as actual damages for Defendants’ trade dress infringement, false
designations of origin, dilution, and acts of unfair competition;
100. A judgment that Defendant has infringed the ‘027 Patent;
101. An order and judgment preliminarily and permanently enjoining
Defendants, their officers, agents, servants, employees, representatives, licensees,
successors, assigns, and all those in privity, active concert, or participation with any of
them from further infringement, inducing the infringement, and contributing to the
infringement of the ‘027 Patent;
102. All damages adequate to compensate Chocolate House for Defendants’
infringement of the ‘027 Patent, and in no event less than a reasonable royalty for
Defendants’ acts of infringement, including all pre-judgment and post-judgment interest
at the maximum rate permitted by law;

103. All damages, including treble damages, based on any infringement found
to be willful, pursuant to 35 U.S.C. § 284, together with prejudgment interest;
104. Damages in the amount of total profits received by Defendants from, and
any damages sustained by Trinity as a result of, Defendants’ common law trade dress
infringement, common law unfair competition, and unjust enrichment;
105. Damages awarded under TEX. BUS. & COM. CODE § 16.104 in the amount of
total profits received by Defendants from, and any damages sustained by Trinity as a
result of, Defendants’ sales of the Accused Product;
106. Costs of suit and reasonable attorneys’ fees; and
107. Such other and further relief as the Court deems just and equitable.
Respectfully submitted,
/s/ S. Wallace Dunwoody

S. Wallace Dunwoody
wdunwoody@munckwilson.com
Texas Bar No. 24040838
William A. Munck
wmunck@munckwilson.com
Robert McCutcheon
rmccutcheon@munckwilson.com
Amanda Greenspon
Florida Bar No. 1014584
agreenspon@munckwilson.com
MUNCK WILSON MANDALA, LLP

12770 Coit Road, Suite 600
Dallas, Texas 75251
Telephone: (972) 628-3600
Telecopier: (972) 628-3616
ATTORNEYS FOR PLAINTIFFS

Case 3:20-cv-03364-L Document 1-1 Filed 11/10/20 Page 1 of 3 PageID 24
EXHIBIT A
Reg. No. 5,030,523 Trinity Groves Restaurant Incubator Partners, LP (TEXAS LIMITED PARTNERSHIP)
425 Bedford Street
Registered Aug. 30, 2016 Dallas, TX 75212
CLASS 30: Chocolates and chocolate based ready to eat candies and snacks; drinking
Int. Cl.: 30 chocolate, namely, chocolate based beverages; and marshmallows, all sold as a kit
Trademark FIRST USE 12-1-2014; IN COMMERCE 12-1-2014
Principal Register The mark consists of a three-dimensional beverage container comprising a configuration of a
snowman with eyes, a nose and a button, wearing a hat, sitting atop a square piece of
chocolate shown in broken lines which serves only to show the position or placement of the
mark. The stippling in the drawing is for shading purposes only.
SER. NO. 86-844,335, FILED 12-09-2015

BARNEY LAWREN CHARLON, EXAMINING ATTORNEY
Director of the United States

Patent and Trademark Office
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE

DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*

What and When to File:
• First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
• Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*

What and When to File:
• You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an

extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
international registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5030523
EXHIBIT B
Case 3:20-cv-03364-L Document 1-2 I 1111111111111111
Filed 11/10/20 111111111111111Page 2 of11111111111111111
11111 1111111111 5 PageID 28IIII
II IIIII
US00D891027S
c12) United States Design Patent c10) Patent No.: US D891,027 S

Weiser (45) Date of Patent: ** Jul. 28, 2020
(54) FOOD PRODUCT 0249,027 s * 8/1978 Dibble Dll/125

4,925,683 A 5/1990 Fischbach et al.
(71) Applicant: Chocolate House Incubator Retail, 4,980,181 A 12/1990 Camp et al.
D402,395 s * 12/1998 Archambault ............... 026/126
LLC, Dallas, TX (US) D458,697 s * 6/2002 Kaufman ......................... 026/7
D523,271 s * 6/2006 Nida .............................. D6/521
(72) Inventor: Katherine T. Weiser, Dallas, TX (US) D540,621 s * 4/2007 Wahl .............................. D7/515
D589,572 s * 3/2009 Ferguson ..................... 021/629
(73) Assignee: Chocolate House Incubator Retail, D614,828 s * 5/2010 Lowry ........................... Dl/106
LLC, Dallas, TX (US) D723,416 s * 3/2015 Geren Dll/128
D729,687 s * 5/2015 McKee Dll/127
9,664,373 B2 * 5/2017 Zhang ................. F2 l V 33/0028
(**) Term: 15 Years
(21) Appl. No.: 29/659,127 OTHER PUBLICATIONS

Image, Instagrampost from "PuurChocolat," Dec. 13, 2014, 1 page.
(22) Filed: Aug. 6, 2018 "Chocolate snowman truffles", GoodtoKnow, Oct. 2011, 2 pages.
Stephanefalies, "Homemade Chocolates!", Instructables, 2013, 4
Related U.S. Application Data pages.
(63) Continuation of application No. 15/050,079, filed on Ann Reardon, "Chocolate Cup Recipe", HowToCookThat, 2013, 3
pages.
Feb. 22, 2016.
(Continued)
(51) LOC (12) Cl. ............................................... 01-01
(52) U.S. Cl. Primary Examiner - Katie Jane Stofko
USPC ........................................................... Dl/107
(58) Field of Classification Search
USPC ..... Dl/100-130, 199; 426/5, 76, 87, 92, 94, (57) CLAIM
426/95, 99, 101, 103, 108, 138-139, 143, The ornamental design for a food product, as shown and
426/144, 279, 282, 283, 391, 514, 549, described.
426/660; D24/102; D30/160; D6/598;
Dll/125, 128; D28/8.1, 8.2
CPC . A23G 3/54; A23G 4/20; A23G 3/343; A23G DESCRIPTION
3/36; A23G 3/28; A61K 9/2072; A61K
9/2095 FIG. 1 is a front perspective view of a food product showing
See application file for complete search history. my new design; and,
FIG. 2 is a rear perspective view thereof.
(56) References Cited The broken lines showing the button-like feature in FIGS. 1
and 2 show portions of the food product that form no part of
U.S. PATENT DOCUMENTS the claimed design while the remaining broken lines shown
Dl94,476 S * l/ 1963 Gottsegen ...................... D7 /604 in FIGS. 1 and 2 illustrates environment that forms no part
Dl96,124 S * 8/1963 Argiro ......................... D21/629 thereof.
3,249,217 A * 5/1966 Irving B65D 75/366
206/461 1 Claim, 2 Drawing Sheets
US D891,027 S
Page 2
(56) References Cited
OTHER PUBLICATIONS
Vangie Baga-Reyes, "20 Best Desserts for 2011", Philippine Daily
Inquirer, Oct. 2011, 2 pages.
"Oreo Truffle Snowmen", Kraft Food & Family, 2006, 3 pages.
Mindi Cherry, "Snowman Truffles", MomsNeedToKnow, Dec.2014,
5 pages.
* cited by examiner
U.S. Patent Jul. 28, 2020 Sheet 1 of 2 US D891,027 S
•
F7
V :... '.
,':.
.. · ·\ ii
\ Ji
\ /;'
''-. -------- ,c..-c:..-.:---~-,::,(,'
FIG. l
U.S. Patent Jul. 28, 2020 Sheet 2 of 2 US D891,027 S
:,··: '~ .·•

-:·~)Ti·\.-
·: -,~ ·:.: , :~~--: ~
. : •, ··:: : :.-/.::·>·.
·.·.. .::-/'
(:111:',f
FIG. 2
JS 44 (Rev. 10/20) - TXND (Rev. 10/20) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS
Trinity Groves Restaurant Incubator Partners, LP; and Trader Joe's Company; and
Chocolate House Incubator Retail, LLC Trader Joe's East Inc.
(b) County of Residence of First Listed Plaintiff Dallas County, TX County of Residence of First Listed Defendant Los Angeles County,CA
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
S. Wallace Dunwoody, Munck Wilson Mandala, LLP,
12770 Coit Rd #600, Dallas TX 75251, (972) 628-3600
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
1 U.S. Government ✖ 3 Federal Question PTF DEF PTF DEF
□ Plaintiff
□ (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place ✖ 4 4
□ □ of Business In This State □ □
X 5
□2 U.S. Government
Defendant □4 Diversity
(Indicate Citizenship of Parties in Item III)
Citizen of Another State
□2 □ 2 Incorporated and Principal Place
of Business In Another State □ 5
□
Citizen or Subject of a
Foreign Country □3 □ 3 Foreign Nation
□ 6
□6
IV. NATURE OF SUIT (Place an “X” in One Box Only) Click here for: Nature of Suit Code Descriptions.
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure 422 Appeal 28 USC 158 375 False Claims Act
120 Marine 310 Airplane 365 Personal Injury - of Property 21 USC 881 423 Withdrawal 376 Qui Tam (31 USC
130 Miller Act 315 Airplane Product □ Product Liability 690 Other 28 USC 157 3729(a))
140 Negotiable Instrument Liability 367 Health Care/ 400 State Reapportionment
150 Recovery of Overpayment 320 Assault, Libel &
□ Pharmaceutical PROPERTY RIGHTS 410 Antitrust
& Enforcement of Judgment Slander Personal Injury 820 Copyrights 430 Banks and Banking
151 Medicare Act 330 Federal Employers’ Product Liability 830 Patent 450 Commerce
152 Recovery of Defaulted Liability 368 Asbestos Personal 835 Patent - Abbreviated 460 Deportation
Student Loans 340 Marine □ Injury Product New Drug Application 470 Racketeer Influenced and
(Excludes Veterans) 345 Marine Product Liability ✖ 840 Trademark Corrupt Organizations
153 Recovery of Overpayment Liability PERSONAL PROPERTY LABOR 880 Defend Trade Secrets 480 Consumer Credit
□ of Veteran’s Benefits 350 Motor Vehicle 370 Other Fraud 710 Fair Labor Standards Act of 2016 (15 USC 1681 or 1692)
□ 160 Stockholders’ Suits
190 Other Contract
355 Motor Vehicle
Product Liability
B 371 Truth in Lending
380 Other Personal
Act
720 Labor/Management SOCIAL SECURITY
485 Telephone Consumer
Protection Act
□ 195 Contract Product Liability 360 Other Personal
□ Property Damage Relations 861 HIA (1395ff) 490 Cable/Sat TV
B 196 Franchise Injury
362 Personal Injury - □ 385 Property Damage
Product Liability
740 Railway Labor Act
751 Family and Medical
862 Black Lung (923)
863 DIWC/DIWW (405(g))
850 Securities/Commodities/
Exchange
Medical Malpractice Leave Act 864 SSID Title XVI 890 Other Statutory Actions
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 790 Other Labor Litigation 865 RSI (405(g)) 891 Agricultural Acts
210 Land Condemnation 440 Other Civil Rights Habeas Corpus: 791 Employee Retirement 893 Environmental Matters
220 Foreclosure 441 Voting 463 Alien Detainee Income Security Act FEDERAL TAX SUITS 895 Freedom of Information
230 Rent Lease & Ejectment 442 Employment 510 Motions to Vacate 870 Taxes (U.S. Plaintiff Act
240 Torts to Land 443 Housing/ Sentence or Defendant) 896 Arbitration
245 Tort Product Liability Accommodations 530 General 871 IRS—Third Party 899 Administrative Procedure
290 All Other Real Property 445 Amer. w/Disabilities - 535 Death Penalty IMMIGRATION 26 USC 7609 Act/Review or Appeal of
Employment Other: 462 Naturalization Application Agency Decision
446 Amer. w/Disabilities - 540 Mandamus & Other 465 Other Immigration 950 Constitutionality of
Other 550 Civil Rights Actions State Statutes
448 Education 555 Prison Condition
560 Civil Detainee -
Conditions of
Confinement
V. ORIGIN (Place an “X” in One Box Only)
1 Original 2 Removed from 3 Remanded from 4 Reinstated or 5 Transferred from 6 Multidistrict 8 Multidistrict
□ □ □ □ □ □ □
✖
Proceeding State Court Appellate Court Reopened Another District Litigation - Litigation -
(specify) Transfer Direct File
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
35 U.S.C. § 101, et seq., 15 U.S.C. § 1051, et seq.
VI. CAUSE OF ACTION Brief description of cause:
Defendants have infringed the asserted patent by making, importing, using, selling, or offering for sale the accused product
VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. $75,000 JURY DEMAND:
□ Yes
✖
□ No
VIII. RELATED CASE(S)
(See instructions):
IF ANY JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
11/10/2020
FOR OFFICE USE ONLY
RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE

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Case 3:20-cv-03364-L Document 1 Filed 11/10/20 Page 1 of 23 PageID 1

UNITED STATES DISTRICT COURT

TRINITY GROVES RESTAURANT §

PLAINTIFFS’ ORIGINAL COMPLAINT

and Trader Joe’s East Inc. (“Defendants”).

1. Trinity Groves Restaurant Incubator Partners, LP (“Trinity”) is a Texas

200, Dallas, Texas 75212.

2. Chocolate House Incubator Retail, LLC (“Chocolate House”) is a Texas

Suite 200, Dallas, Texas 75212.

Plaintiffs’ Original Complaint Page 1

3. Trader Joe’s Company is a California corporation with its principal place of

Lane, Suite 223, Carrollton, Texas 75007.

Suite 223, Carrollton, Texas 75007.

JURISDICTION AND VENUE

TEX. BUS. & COM. CODE § 16.102.

U.S.C. §§ 1331, 1338, and 1367.

seq. and 35 U.S.C. § 101 et seq.

diversity of citizenship and the matter in controversy exceeds $75,000, exclusive of

interest and costs.

Plaintiffs’ Original Complaint Page 2

jurisdiction, pursuant to 28 U.S.C. § 1367.

enterprise doing business as Trader Joe’s (collectively, “Trader Joe’s” or “Defendants”)

dress infringement, patent infringement, unfair competition and trademark dilution in

Texas and in this District.

and in this District; and knowingly inducing or contributing to others’ infringement of

Plaintiffs’ Original Complaint Page 3

infringing uses in Texas and in this District.

CARL THE SNOWMAN

Plaintiffs’ Original Complaint Page 4

consumers to indicate the source of the chocolates as Plaintiffs’ brand. Plaintiffs’

Plaintiffs’ Original Complaint Page 5

the fall of 2019 on their website

(https://www.traderjoes.com/FearlessFlyer/Article/5248) and which was covered in

news articles (https://www.sheknows.com/food-and-recipes/articles/2131920/trader-

joes-new-holiday-products-2019/) (the “Accused Product”).

20. An image of the Accused Product is reproduced hereinbelow:

Plaintiffs’ Original Complaint Page 6

21. The Accused Product impermissibly replicates CARL’s distinctive features,

meant to be dissolved in hot liquid to form a chocolate-based beverage. A side-by-side

comparison of Defendants’ Accused Product and Plaintiffs’ CARL product that

demonstrates the foregoing is set forth below:

Plaintiffs’ Original Complaint Page 7

Defendants’ use, manufacture, advertising, marketing, distribution and/or sale of the

Accused Product is likely to cause confusion, mistake or deceive relevant consumers as

24. Defendants’ use, manufacture, advertising, marketing, distribution and/or

sale of the Accused Product is likely to cause confusion, or to cause mistake, or to

deceive the consumer as to the affiliation, connection or association of Defendants with

Trinity, or as to the origin, sponsorship, or approval by Trinity of Defendants’ goods or

25. Defendants’ use, manufacture, advertising, marketing, distribution and/or

Plaintiffs’ Original Complaint Page 8

Product is likely, if not certain, to deceive or to cause confusion or mistake among

consumers as to the origin, sponsorship, or approval of the Accused Product and/or to

cause confusion or mistake as to any affiliation, connection or association between

violation of 15 U.S.C. § 1114(a).

be intentional, willful, and without regard to Trinity’s rights.

have gained profits by virtue of their infringement of Trinity’s registered mark.

Trinity’s registered mark in connection with the commercialization of Defendants’

Accused Product insofar as Trinity’s invaluable goodwill is being eroded by Defendants’

loss of business reputation, customers, market position, confusion of potential customers

and goodwill flowing from Defendants’ infringing activities. Pursuant to 15 U.S.C. §

1116, Trinity is entitled to an injunction against Defendants’ continuing infringement of

Plaintiffs’ Original Complaint Page 9

33. Chocolate House owns the ’027 Patent.

Trinity Groves v. Trader Joe's - Complaint

Trinity Groves v. Trader Joe's - Complaint