Heartland Complaint

Case 1:21-cv-00322-JMS-TAB Document 1 Filed 02/08/21 Page 1 of 33 PageID #: 1
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
HEARTLAND CONSUMER
PRODUCTS LLC
Plaintiff,
v. Case No. 1:21-cv-322
SPEEDWAY, LLC JURY TRIAL DEMANDED
Defendant.
COMPLAINT FOR
PERMANENT INJUNCTION AND DAMAGES
For its complaint against Defendant Speedway, LLC (“Speedway” or “Defendant”),
Plaintiff, Heartland Consumer Products LLC (“Heartland” or “Plaintiff”), states as follows:
INTRODUCTION
Heartland is the owner of the famous SPLENDA® brand sugar substitute sweetener, which
sweetener is recognized around the world by its little yellow packets. SPLENDA Brand sucralose
sweetener (“SPLENDA® Brand Sweetener”) in its famous yellow package is 100% made in the
United States. All ingredients, including the paper and even the box of SPLENDA® Brand
Sweetener, are made in the United States. Speedway has and continues to deceive consumers by
providing sucralose-based sweetener products in yellow packages that Speedway customers
believe to be SPLENDA® Brand sweetener products. The active ingredient of Speedway’s yellow-
packeted sweetener is, upon information and belief, a product of China, and Speedway fails to
reveal this to its customers by notation on the packet or by display. Indeed, to the contrary, the
Speedway packets state that the product is packaged in the United States, thereby giving consumers
the impression that the sucralose inside is made in the United States.
Speedway’s conduct has unfairly, and in violation of the law, damaged and limited
Heartland’s rights in Heartland’s yellow trade dress and the SPLENDA® Brand. Moreover,
Speedway’s conduct has and continues to damage the hard-earned reputation held by Heartland
and to whittle away at the value of Heartland’s famous trade dress and trademark by using
Heartland’s property to identify non-SPLENDA® sucralose-based sweeteners. As the owner of
various famous trademarks relevant to this dispute, Heartland seeks damages and injunctive relief
to enjoin Speedway’s false advertising and wrongful use of Heartland’s yellow trade dress and the
SPLENDA® trademark in commerce.
NATURE OF THE ACTION
1. This action arises from Defendant’s unfair competition, trade dress infringement,
trademark dilution, and trademark infringement caused by Defendant’s unauthorized use of
Plaintiff’s trademark rights in and to the SPLENDA® Brand and Heartland’s trade dress rights in
and to the well-known yellow packets in which SPLENDA® Brand products are sold
(“SPLENDA® IP”).
2. Defendant’s use of yellow packets for Defendant’s knock-off sucralose, which,
upon information and belief, is manufactured in China, and the provision of these knock-off
products in the knock-off packaging at coffee kiosks in Defendant’s convenience stores has misled
and is misleading consumers concerning the source of those yellow packets.
3. Defendant’s advertisement of its use of those knock-off yellow packets online has
and is misleading consumers concerning the source of those yellow packets.
4. Plaintiff asserts unfair competition, false advertising, trade dress infringement, and
dilution claims under the Lanham Act, 15 U.S.C. §§ 1051 et seq., and Indiana state and common
law.
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THE PARTIES
5. Plaintiff Heartland is a limited liability company, organized and existing under the
laws of the State of Delaware, with a principal business address of 14390 Clay Terrace Boulevard,
Suite 205, Carmel, Indiana 46032, in Hamilton County.
6. Heartland is a global leader in the production of low-calorie sweetener products,
including the iconic SPLENDA® Brand sweetener, creamers, beverage concentrates, coffee, and
nutritional drinks.
7. Upon information and belief, Defendant Speedway LLC is organized and existing
under the laws of the State of Delaware with its principal place of business at 500 Speedway Drive,
Enon, Ohio 45353.
8. Upon information and belief, Speedway operates a chain of approximately 3,900
gas stations and convenience stores across thirty-six states, including in the State of Indiana.
JURISDICTION AND VENUE
9. This Court has subject matter jurisdiction over the claims asserted in this action
pursuant to at least 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331 and 1338(a) and (b).
10. This Court also has jurisdiction over the related state and common law claims
pursuant to at least 28 U.S.C. § 1338(b) and supplemental jurisdiction under 28 U.S.C. § 1367.
11. This Court has personal jurisdiction over Defendant because, upon information and
belief, Defendant is authorized to transact and regularly transacts business in this State and District,
and Defendant engages in other systematic and continuous contacts in this State and District.
12. Further, upon information and belief, Defendant has committed acts of trademark
infringement, trade dress infringement, dilution, and unfair competition in this State and District
that have caused harm to Plaintiff here.
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13. Venue is proper in this District and Division pursuant to at least 28 U.S.C.
§§ 1391(b)(1)-(2) and 1391(c)(2).
FACTUAL BACKGROUND
The SPLENDA® Brand
14. Each year, American consumers spend more than $700 million on sugar substitutes
— products that take the place of sugar and are low in calories.
15. Until 2000, the United States no-calorie sweetener market was dominated by
products made with saccharin (such as Sweet‘N Low®) or aspartame (such as Equal®).
16. In 2000, SPLENDA® Brand Sweetener was introduced as the first sucralose-based
sweetener.
17. Sucralose is manufactured starting with sugar and using a chemical process and
other components to create a sweetener that tastes like sugar.
18. SPLENDA® Brand Sweetener is a low-calorie sweetener using sucralose.
19. Since its introduction, SPLENDA® has been remarkably popular among
consumers.
20. After the introduction of SPLENDA®, other tabletop sucralose sweeteners began to
proliferate in the market.
21. SPLENDA® Brand sweetener, however, is the only low-calorie sweetener made in
the United States that comes in a yellow package.
22. SPLENDA® Brand Sweetener is sold and is available in both retail and food service
markets and is used in a variety of products across private and commercial kitchens.
23. SPLENDA® Brand Sweetener is used to sweeten beverages and is purchased by
consumers for cooking and baking in their homes.
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24. SPLENDA® Brand Sweetener is also used as an ingredient in third-party
commercial food production.
25. Across marketplaces, SPLENDA® Brand Sweetener has gained the trust of
customers by providing a superior product and brand experience for nearly two decades.
26. As a result, SPLENDA® is the market leader among low-calorie sweeteners in the
United States.
History of the SPLENDA® Brand
27. Years ago, researchers from an established British college, in conjunction with Tate
& Lyle PLC, were researching a new compound made from sugar, called sucralose.
28. As the story goes, a young researcher misheard a request to “test” the compound as
a request to “taste” it.
29. What the young researcher discovered was that sucralose was incredibly sweet, and,
more importantly, calorie free.
30. By 1990, several food and health organizations approved the use of sucralose in
food products, the sweetening ingredient in SPLENDA® Brand Sweetener.
31. Capitalizing on this approval, SPLENDA® Brand Sweetener made its worldwide
debut in Canada.
32. Not only was SPLENDA® Brand Sweetener sweet, it was also the first low-calorie
sweetener that consumers could use for cooking and baking.
33. In the United States, the FDA approved sucralose for use in connection with food
products and food preparation on April 1, 1998.
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34. Once again, SPLENDA® Brand Sweetener was at the forefront of the low-calorie
sweetener market by marketing SPLENDA® Brand Sweetener to U.S. consumers via the Internet
in 1999.
35. In September 2000, SPLENDA® Brand Sweetener officially launched in retail
stores across the United States.
36. In three short years after its launch in the United States, SPLENDA® Brand
Sweetener became the unrivaled leader in the low-calorie sweetener retail and food service
markets.
37. Additionally, sucralose has become one of the most extensively tested food
ingredients in the world.
38. Sucralose is approved for use in over 80 countries and used in more than 4000
products globally.
39. SPLENDA® is a brand recognized industry-wide and is associated with superior
customer service and product quality.
40. Plaintiff prides itself on the SPLENDA® reputation for product quality, customer
service, and innovation in the industry.
41. Since at least 2000, Plaintiff has continuously offered for sale and sold its line of
SPLENDA® Brand Sweetener using the color yellow as a per se color mark for its packets, boxes,
bags, and other products as a mark (hereinafter “Yellow Trade Dress” and, when referring to
Heartland’s products bearing the Yellow Trade Dress, the “Yellow Products”).
42. This is an image of the “perfectly portable yellow packet” synonymous with the
SPLENDA® Brand Sweetener and the Yellow Trade Dress:
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43. The Yellow Products are unique and superior to other sweeteners in the field
because, as detailed herein, they are made from sucralose made in the United States, by U.S.
workers, subject to U.S. environmental regulations, and are subject to rigorous quality control and
testing.
44. These Yellow Products do not derive any of their enhanced characteristics from use
of the Yellow Trade Dress; they are derived from the dedication to innovation of Heartland and its
predecessors.
45. As a result of its widespread, continuous, and exclusive use of the Yellow Trade
Dress since at least 1999 to identify the Yellow Products and SPLENDA® as the source of the
Yellow Products, Heartland owns valid and subsisting common law trade dress rights to the
Yellow Trade Dress.
46. The Yellow Products are by far the most preferred low-calorie sweetener products
in the United States, based on customer surveys and the SPLENDA® Brand’s leading market share.
47. Recognizing the value and strength of the SPLENDA® Brand, Heartland resolved
to acquire and invest in the brand.
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48. On September 25, 2015, Heartland purchased the SPLENDA® Brand and its
goodwill from McNeil Nutritionals, LLC (“McNeil”), a subsidiary of Johnson & Johnson
Consumer, Inc. (the “Transaction”).
49. The Transaction solidified Heartland’s position as a global leader in the low-calorie
sweetener market and was critical for Heartland to continue offering its customers the very best
tasting products to sweeten foods and beverages without adding calories.
50. As of September 26, 2020, a leading market research company, The Nielsen
Company, reports that American consumers spent $657 million on low-calorie sweeteners in the
preceding twelve (12) months.
51. At the time of the Nielsen Company September 26, 2020 report, the SPLENDA®
Brand also held the largest market share among low-calorie sweeteners, amounting to 26.6% of
the market.
52. Heartland has expended and continues to expend substantial time, effort, and other
resources in acquiring, developing, advertising, and otherwise promoting SPLENDA® Brand
Sweetener, both nationally and globally.
53. As a result, SPLENDA® is a famous brand, instantly and widely recognized by
consumers, the public, and the trade.
54. Additionally, SPLENDA® enjoys significant and valuable consumer goodwill.
SPLENDA® Yellow Trade Dress
55. Heartland’s yellow packaging is inherently distinctive because consumers are
predisposed to equate the color feature with a single source.
56. The very purpose of Heartland’s product packaging is to identify the source of the
product to consumers.
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57. Heartland’s Yellow Trade Dress makes such an impression on consumers that they
assume the trade dress is associated with a particular source.
58. Heartland’s Yellow Trade Dress is unique in the field of low-calorie sweeteners.
59. In addition, and as a result of Heartland’s and its predecessor’s extensive
advertising and marketing of the SPLENDA® Brand Sweetener in yellow packaging over twenty
years, the yellow packets have attained secondary (consumer brand recognition) meaning.
60. The recognition in consumers created by the Yellow Trade Dress includes not only
identifying yellow sweetener packets as containing SPLENDA® Brand Sweetener unless
consumers are provided with sufficient cues to conclude otherwise, but such consumer recognition
creates goodwill in and reliance on the known fact that SPLENDA® Brand Sweetener is a great-
tasting low-calorie sweetener that is from a single source, safely manufactured in the United States.
61. In grocery stores, other sellers of sucralose-based sweeteners in packages that have
yellow on them have been required to use a variety of cues to the consumer to reveal that the retail
package is not a SPLENDA® Brand package.
62. Heartland’s research discloses that, when consumers of low-calorie sweeteners are
asked whether the color yellow used on a sweetener packet is a brand-specific design element, a
statistically significant number of those consumers confirm that they believe that the color yellow
used on a sweetener packet is a brand-specific design element.
63. Heartland’s research discloses that a statistically significant number of consumers
of low-calorie sweeteners trust that yellow packets of sweetener originate from one single source.
64. In fact, Heartland’s research discloses that greater than 50% of customers of low-
calorie sweeteners asked about the source-indicating feature of yellow sweetener packages believe
that yellow packets of sweetener originate from one single source.
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65. The Seventh Circuit has repeatedly held that a 50–percent figure is regarded as
clearly sufficient to establish secondary meaning.
66. Therefore, the use of the SPLENDA® Brand and the Yellow Trade Dress has come
to represent Heartland’s reputation for providing U.S.-manufactured, great-tasting, low-calorie
sweetener and these source-indicating elements are synonymous with the Yellow Products and the
SPLENDA® Brand Sweetener.
67. The Yellow Trade Dress is not a functional product feature essential to the use of
low-calorie sweeteners themselves.
68. Instead the Yellow Trade Dress has come to act as an easy way for consumers to
identify the source of low-calorie sweeteners sold under the U.S.-manufactured SPLENDA®
brand.
SPLENDA® Intellectual Property
69. Heartland and its predecessors in interest have used a variety of legally protected
trademarks in connection with the SPLENDA® Brand Sweetener products.
70. For example, Heartland, through assignment or registration, is the current owner of
the following United States Trademark Registrations in connection with SPLENDA® Brand
Sweetener: Serial Nos. 1,544,079; 3,346,910; 4,664,653; 4,744,600; 5,104,211; and 5,224,428.
71. Heartland, through assignment, is the current owner of United States Trademark
Registration Number 1,544,079 for SPLENDA, which mark is registered for use with low-calorie
sweetener products and was first used in commerce on August 29, 1988.
72. Heartland, through assignment, is the current owner of incontestable United States
Trademark Registration Number 3,346,910 for SPLENDA, which mark is registered for use with:
printed publications (first used in commerce in December 2013), an interactive website providing
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information about low calorie sweeteners, recipes, cooking and baking (first used in commerce on
April 19, 1998), and an interactive website providing information about health information and
weight management information (first used in commerce on April 19, 1998).
Registration Number 4,664,653 for SPLENDA LIVING, which mark is registered for use with an
online journal in the form of a blog focusing on timely food, nutritional and health topics, exposing
myths about dieting, and low-calorie products and sweeteners and was first used in commerce at
least as early as January 10, 2014.
Registration Number 4,744,600 for CUANDO PIENSES EN AZUCAR, USA SPLENDA, which
mark translates to “when you think of sugar, use SPLENDA,” which mark is registered for use
with non-nutritional, low-calorie sweetening ingredients and artificial sweetener used in food
products and beverages (first used in commerce on February 28, 2014) and low-calorie sweetening
ingredients and artificial sweetener used in food products and beverages for medical use (first used
in commerce on February 28, 2014).
75. Heartland is the current owner of United States Trademark Registration Number
5,104,211 for SWEET SWAPS SPLENDA, which mark is registered for use with an interactive
website that features information and social media posts concerning sweeteners, recipes, cooking
and baking (first used in commerce on January 30, 2015) and an interactive website that features
information and social media posts concerning health information, healthy living, weight
management and lifestyle wellness information (first used in commerce on January 30, 2015).
76. Heartland is the current owner of United States Trademark Registration Number
5,224,428 for the use of the trademark SWEET ZERO, which mark is registered for use with
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artificial sweeteners and sugar substitutes and was first used in commerce at least as early as
December 1, 2016.
77. In addition to these registrations, as detailed herein, Heartland is the owner of
common law rights in the Yellow Trade Dress in connection with the Yellow Products.
78. These registrations, including any and all common law rights in the United States
in the SPLENDA® Brand and the Yellow Trade Dress, are referred to herein as the SPLENDA®
IP.
79. Heartland has also obtained trademark registrations worldwide for the SPLENDA®
IP in over 90 countries.
80. Heartland is the current owner of the following European Community Trademark
Registrations in connection with SPLENDA® Brand Sweetener: Trade Mark Nos. 001225767-
0004; 001225767-0005; 001225759-0006; 001225759-0002; 001225759-0008; 001225767-002;
and 001225767-006.
81. Each of the foregoing European Community Trademark Registrations is for a
design that includes a yellow-colored packet or package.
82. Heartland is the current owner of the following Canadian Trademark Registrations
in connection with SPLENDA® Brand Sweetener: Nos. 1475949; 1476102; 1476108; 1476111;
1476106; 1476115; 1475947; and 1476103.
83. Each of the foregoing Canadian Trademark Registrations is for a design that
includes a yellow-colored packet or package.
84. Heartland is the current owner of the following Colombian Trademark
Registrations in connection with SPLENDA® Brand Sweetener: Registration Nos. 08119164 and
08124263.
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85. Each of the foregoing Colombian Trademark Registrations is for a design that
includes a yellow-colored packet.
86. The SPLENDA® Brand and the Yellow Trade Dress are famous in the manner
defined by 15 U.S.C. § 1125(c).
87. The SPLENDA® Brand and the Yellow Trade Dress have been used continuously,
with wide promotion, and have never been abandoned.
DEFENDANT’S INFRINGEMENT
88. Defendant has engaged in the active deception of customers through
misappropriation of the Yellow Trade Dress in a manner that makes Speedway’s yellow sucralose
packets easily mistakable for SPLENDA® Brand Sweetener’s famous yellow packets, leading
customers to believe that Defendant carries SPLENDA® Brand Sweetener when Defendant does
not.
89. Defendant’s specific conduct also includes, and is not limited to, failing to provide
sufficient cues to the consumer that the yellow sweetener packets in Speedway stores are not the
leading brand sucralose-based sweetener sold by Heartland.
90. Speedway has a wide network of thousands of stores and, with knowledge or
reckless disregard of Heartland’s rights in the SPLENDA® Brand and the Yellow Trade Dress, has
contributed to mislabeling and misidentification of generic sweetener as actual SPLENDA® Brand
Sweetener in its stores.
91. Speedway’s activities, as described above, are likely to create a false impression
and deceive consumers and the public into believing that the knock-off sweetener provided by
Speedway in yellow packets in its convenience stores is SPLENDA® Brand Sweetener.
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92. Speedway’s activities, as described above, have created actual false impressions,
consumer confusion, and consumer deception among the public such that consumers harbor a
mistaken belief that SPLENDA® Brand Sweetener is being offered at Speedway convenience
stores.
93. Speedway has even taken steps to attempt a “private-labeling” of genuine
SPLENDA® Brand Sweetener by packaging its sucralose sweetener in yellow packets:
94. Moreover, Speedway has printed onto each packet “Packaged by SUGAR FOODS
CORP. N.Y., NY 10022 USA,” thereby leaving consumers with the mistaken impression that the
sucralose contained in the packet originated in the United States like SPLENDA® Brand
Sweetener.
95. The use of this yellow packaging demonstrates Speedway’s intent to benefit from
Heartland’s goodwill and hard-won association of Heartland’s Yellow Trade Dress with genuine
SPLENDA® Brand Sweetener.
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96. Speedway’s use of this yellow packaging without any cues to customers that the
product is not genuine SPLENDA® Brand Sweetener leads to the confusion of which Heartland
now complains.
97. This confusion is further amplified by Speedway’s description of these knock-off
packets as “Yellow,” which draws a strong association to the Yellow Trade Dress.
98. That association is again amplified by Speedway’s use of the term “Yellow Sugar
Substitute” on its website, thereby drawing a connection between the iconic Yellow Trade Dress
and Speedway’s palmed-off product.
99. An image of the Speedway website appears below:
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100. Consumers have a right to be told the truth about what is being added to their food
and to not be deceived, whether intentionally or not, by companies secretly substituting foreign
sourced sweeteners for genuine, American-made SPLENDA® Brand Sweetener.
101. Heartland brings this suit to vindicate its own rights and to protect consumers from
this deceptive conduct.
102. Heartland has expended substantial resources to market and promote SPLENDA®
Brand Sweetener and the fact that SPLENDA® Brand Sweetener is manufactured in the United
States.
103. That SPLENDA® Brand Sweetener is manufactured in the United States has been
a key element of Heartland’s marketing campaign for the SPLENDA® Brand.
104. Consumers have, therefore, come to expect that, when they select the Yellow
Products, they are receiving the highest quality low-calorie sweetener long represented by the
SPLENDA® Brand. Upon information and belief, Speedway intends to continue the above-
detailed course of conduct unless otherwise restrained.
105. Heartland is suffering irreparable injury and has suffered substantial damages as a
result of Speedway’s activities.
106. Heartland has no adequate remedy at law.
COUNT I
Trade Dress Infringement – Lanham Act, 15 U.S.C. § 1125
107. Heartland re-alleges the allegations contained in paragraphs 1 through 106 as if
fully set forth herein.
108. Heartland has continuously used the Yellow Trade Dress in interstate commerce in
connection with its Yellow Products since at least 2000.
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109. The strong consumer association with SPLENDA® as the source of yellow-
packeted sweeteners has made the Yellow Trade Dress a distinct color-based product packaging
mark that indicates the source of the goods to a consumer.
110. Heartland’s Yellow Trade Dress is inherently distinctive. See In re Forney Indus.,
Inc., 955 F.3d 940, 945 (Fed. Cir. 2020) (recognizing that “a distinct color-based product
packaging mark can indicate the source of the goods to a consumer, and, therefore, can be
inherently distinctive”).
111. In addition, the Yellow Trade Dress has acquired distinctiveness through secondary
meaning, and Heartland has established valid and subsisting federal and state common law rights
in the Yellow Trade Dress through Heartland’s use thereof.
112. Through such continuous and extensive use, Heartland has acquired significant
goodwill in the Yellow Trade Dress.
113. Speedway’s use of yellow sucralose packets is confusingly similar to the Yellow
Trade Dress in appearance, commercial impression, and meaning.
114. Speedway’s use of the Yellow Trade Dress is occurring and has occurred without
the consent or authorization of Heartland.
115. Further, Speedway provides yellow packets of knock-off sweetener without
sufficient cues to identify the product as not being genuine SPLENDA® Brand Sweetener.
116. Speedway’s infringing use of the Yellow Trade Dress in connection with the sale,
offer for sale, distribution, or advertising of goods, without sufficient cues to consumers that the
product is not genuine SPLENDA® Brand Sweetener, is likely to cause confusion as to source,
origin, sponsorship, affiliation, association, or approval and mislead consumers.
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117. As a result of this misconduct, Speedway has infringed the rights of Heartland as
the owner of the Yellow Trade Dress.
118. Upon information and belief, Speedway’s actions are intentional, willful, and
calculated to cause confusion, mistake or deception, entitling Heartland to enhanced damages and
attorneys’ fees under 15 U.S.C. § 1117.
119. As a result of Speedway’s violation of 15 U.S.C. § 1125(a), Heartland is entitled to
destruction of the infringing, knock-off packets under 15 U.S.C. § 1118.
120. As a result of Speedway’s misconduct, Heartland has been damaged and is entitled
to recover for the injuries sustained, including, and not limited to, Speedway’s profits from the
sale of infringing goods, actual damages, corrective advertising damages, costs of this litigation,
and attorneys’ fees associated with this litigation.
122. Speedway’s conduct caused, and will continue to cause, damage and irreparable
harm to Heartland unless this Court enjoins Speedway.
123. Therefore, Heartland is also entitled to permanent injunctive relief.
COUNT II
Common Law Trade Dress Infringement – Indiana Trademark Act, Ind. Code 24-2-1-15
125. Heartland has continuously used the SPLENDA® Brand and the Yellow Trade
Dress in interstate commerce in connection with its Yellow Products since at least 2000.
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127. Heartland’s Yellow Trade Dress is inherently distinctive.
130. Speedway’s use of yellow sucralose packets is confusingly similar to the Yellow
Trade Dress in appearance, commercial impression, and meaning.
131. Speedway’s use of the Yellow Trade Dress is occurring and has occurred without
the consent or authorization of Heartland.
132. Further, Speedway provides yellow packets of knock-off sweetener without
sufficient cues to identify the product as not being genuine SPLENDA® Brand Sweetener.
offer for sale, distribution, or advertising of goods, without sufficient cues to consumers that the
product is not genuine SPLENDA® Brand Sweetener, is likely to cause confusion as to source,
origin, sponsorship, affiliation, association, or approval and mislead consumers.
134. As a result of this misconduct, Speedway has infringed the rights of Heartland as
the owner of the Yellow Trade Dress.
sale of infringing goods, actual damages, punitive damages, corrective advertising damages, costs
of this litigation, and attorneys’ fees associated with this litigation.
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COUNT III
False Designation of Origin and Unfair Competition – Lanham Act, 15 U.S.C. § 1125(a)
140. Speedway’s packaging and identification of its “yellow sugar substitute” in a
manner that allows the packages to appear to customers to be genuine SPLENDA® Brand product
that is manufactured in the United States constitutes a false designation of origin, false or
misleading description of fact, or false or misleading representation of fact that is: (a) likely to
cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association
of such person with another person, or as to the origin, sponsorship, or approval of Speedway’s
goods or commercial activities; or (b) in commercial advertising or promotion, to misrepresent the
nature, characteristics, qualities or geographic origin of Speedway’s goods or commercial
activities.
141. Further, Speedway, in connection with its provision of coffee and other beverages
to consumers, provides generic low-calorie sweetener in the famous yellow-colored packets
commonly associated with genuine SPLENDA® Brand Sweeteners.
142. Speedway’s yellow-colored packets are not provided to customers with sufficient
cues to the consumer to prevent the mistaken belief by consumers that the yellow packets are in
fact SPLENDA® Brand Sweetener.
143. Those actions constitute a false designation of origin, false or misleading
description of fact, or false or misleading representation of fact that is: (a) likely to cause confusion,
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or to cause mistake, or to deceive as to the affiliation, connection or association of such person
with another person, or as to the origin, sponsorship, or approval of Speedway’s goods or
commercial activities; or (b) in commercial advertising or promotion, to misrepresent the nature,
characteristics, qualities or geographic origin of Speedway’s goods or commercial activities.
144. Speedway’s use of the SPLENDA® IP is occurring and has occurred without the
consent or authorization of Heartland.
145. As a result of this misconduct, Speedway has violated the rights of Heartland as the
owner of the Yellow Trade Dress.
146. Upon information and belief, Speedway has wrongfully promoted its goods as
SPLENDA® Brand Sweetener, including by referring to Speedway’s goods as “Yellow Sugar
Substitute” on its website, with knowledge that Speedway was misrepresenting the nature,
characteristics, qualities, and/or geographic origin of its goods.
147. Speedway’s provision of generic sweetener in yellow packets, without sufficient
cues to consumers that the product is not genuine SPLENDA® Brand Sweetener, provides
consumers with information that was and is misleading in context.
calculated to cause confusion, mistake or deception, entitling Heartland to enhanced damages and
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COUNT IV
False or Misleading Representation of Fact; False Advertising – Lanham Act,
15 U.S.C. § 1125(a)
155. Speedway’s packaging of its infringing product states “Packaged by SUGAR
FOODS CORP. N.Y., NY 10022 USA.”
156. This statement on Speedway’s packaging makes it appear to customers that the
sucralose contained therein is a product that is made in the United States.
157. Because, upon information and belief, Speedway’s sucralose is made in China, the
statement on Speedway’s infringing product constitutes a false or misleading description of fact
or false or misleading representation of fact that is: (a) likely to cause confusion, or to cause
mistake, or to deceive as to the origin or approval of Speedway’s goods or commercial activities;
or (b) in commercial advertising or promotion, to misrepresent the nature, characteristics, qualities
or geographic origin of Speedway’s goods or commercial activities.
158. Speedway’s packaging of its infringing product with the statement “Packaged by
SUGAR FOODS CORP. N.Y., NY 10022 USA,” without further disclosing that the sucralose
contained within that package is not in fact from the United States, is false and misleading.
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159. Consumers of food products value the place of production of those food items,
especially in light of the risks of dangerous food products from other countries, as has previously
occurred with contaminated baby formulas from China, contaminated dog food from China, the
sale of expired meat to global brands from China, and other contamination and purity-related
problems with food products produced outside of the United States.
160. Producing food within the United States, while often more expensive, can benefit
the producer because more customers are likely to trust and rely upon that brand knowing that the
product was manufactured in a well-regulated country like the United States.
161. Heartland has prided itself on manufacturing its SPLENDA® Brand Sweetener in
the United States to ensure consistent, extraordinary quality, and many consumers trust
SPLENDA® Brand Sweetener for that very reason.
162. The Federal Trade Commission (“FTC”), recognizing the importance to consumers
of U.S. origin claims in advertising and labeling, has regulated the use of such claims through
advisory opinions, individual cases, and a December 1, 1997 Enforcement Policy Statement on
U.S. Origin Claims (the “Policy Statement”), available at https://www.ftc.gov/public-
statements/1997/12/enforcement-policy-statement-us-origin-claims. See B. Sanfield, Inc. v.
Finlay Fine Jewelry Corp., 168 F.3d 967, 973 (7th Cir. 1999) (holding that the district court erred
in failing to consider advertising regulations and explaining that “as the administrative agency
charged with preventing unfair trade practices, the Commission’s assessment of what constitutes
deceptive advertising commands deference from the judiciary”).
163. Pursuant to the FTC’s Policy Statement, “the Commission will find an
advertisement or label deceptive . . . if it contains a representation or omission of fact that is likely
23
to mislead consumers acting reasonably under the circumstances, and that representation or
omission is material.” Such representations “may be made by either express or implied claims.”
164. The FTC’s Policy Statement explains that “[d]epending on the context, U.S.
symbols or geographic references, such as U.S. flags, outlines of U.S. maps, or references to U.S.
locations of headquarters or factories, may, by themselves or in conjunction with other phrases or
images, convey a claim of U.S. origin.”
165. In addition, the FTC’s Policy Statement explains that general terms such as
“‘produced’ or ‘manufactured’ in the United States are likely to require further qualification when
they are used to describe a product that is not all or virtually all made in the United States.”
166. That qualification is required because “[s]uch terms are unlikely to convey to
consumers a message limited to a particular process performed, or part manufactured, in the United
States” and so “they are likely to be understood by consumers as synonymous with ‘Made in USA’
and therefore as unqualified U.S. origin claims.”
167. The Policy Statement is clear that, when a product contains an unqualified claim
implying U.S. origin, the product should contain a negligible amount of foreign content.
168. Speedway’s packaging of its infringing product to state “Packaged by SUGAR
FOODS CORP. N.Y., NY 10022 USA,” involves the use of a general term that creates an
unqualified claim implying U.S. origin.
169. Speedway’s use of a general term creating an unqualified claim implying U.S.
origin conveys to many consumers that its product is made in the United States.
170. Upon information and belief, Speedway’s sucralose product is not manufactured in
the United States, but in China.
24
171. Speedway’s failure to disclose that its sucralose product is made in China,
especially after implying that the product is all or virtually all made in the United States, is false
and/or will mislead consumers.
172. Those actions constitute a false designation of origin, false or misleading
description of fact, or false or misleading representation of fact that is: (a) likely to cause confusion,
or to cause mistake, or to deceive as to the origin or approval of Speedway’s goods or commercial
activities; or (b) in commercial advertising or promotion, to misrepresent the nature,
characteristics, qualities or geographic origin of Speedway’s goods or commercial activities.
173. As a result of this misconduct, Speedway has prevented consumers from
demanding that Speedway provide SPLENDA® Brand Sweetener that is actually made in the
United States.
174. As a further result of this misconduct, Speedway has prevented consumers from
foregoing coffee purchases at Speedway stores in favor of other convenience stores that carry
genuine SPLENDA® Brand Sweetener.
calculated to cause confusion, mistake, or deception, entitling Heartland to enhanced damages and
25
COUNT V
Common Law Unfair Competition
187. Speedway has engaged in unfair competition against Heartland. These acts have
included, and are not limited to, the following particular misdeeds.
188. Speedway has misrepresented that its sweetener packets are SPLENDA® Brand
Sweetener by packaging its sweetener in yellow-colored packets that are confusingly similar to the
Yellow Trade Dress.
26
189. Speedway has misrepresented that its sweetener packets are SPLENDA® Brand
Sweetener by referring to those packets as “Yellow Sugar Substitute” thereby creating an
association in the minds of consumers that these packets contain SPLENDA® Brand Sweetener.
190. Speedway has reaped the benefits of customer association of Speedway with the
SPLENDA® Brand Sweetener without paying Heartland for that benefit.
offering for sale, distribution, or advertising of goods has caused and is likely to continue to cause
confusion, mistake, or deception concerning whether Speedway’s products are associated,
affiliated or connected with, or approved or sponsored by Heartland, constituting unfair
competition in violation of the common law of the State of Indiana.
192. Upon information and belief, as a proximate cause of its unlawful conduct,
Speedway has or will receive substantial profits to which it is not entitled.
193. Speedway has competed unfairly with Heartland and has realized unjust profits in
an amount to be established at trial.
calculated to cause confusion, mistake, or deception.
195. As a result of Speedway’s conduct, Heartland has been damaged and is entitled to
recover for the injuries sustained, including, and not limited to, Speedway’s profits from the sale
of infringing goods, actual damages, punitive damages, corrective advertising damages, costs of
this litigation, and attorneys’ fees associated with this litigation.
196. Further, Speedway has caused irreparable injury to Heartland’s reputation and
goodwill and, unless enjoined, Speedway will continue its acts of unfair competition.
197. Heartland is therefore also entitled to preliminary and permanent injunctive relief.
27
COUNT VI
Trademark Dilution – Lanham Act, 15 U.S.C. § 1125(c)
204. The Yellow Trade Dress, as protected under common law, is famous and inherently
distinctive and/or it has otherwise acquired substantial secondary meaning and widespread public
recognition in accordance with 15 U.S.C. § 1125(c).
205. The SPLENDA® Brand is famous and inherently distinctive and/or it has otherwise
acquired substantial secondary meaning and widespread public recognition in accordance with 15
U.S.C. § 1125(c).
206. Speedway’s use of the Yellow Trade Dress, without authorization from Heartland
and without providing genuine SPLENDA® Brand Sweetener to Speedway’s customers, is diluting
and dilutive of the distinctive quality of the famous and iconic Yellow Trade Dress, thereby
28
decreasing the capacity of the Yellow Trade Dress to identify and distinguish Heartland’s products
from knock-off sweeteners that are not guaranteed to be the made-in-America, great-tasting,
SPLENDA® Brand Sweetener, and otherwise resulting in a likelihood of tarnishment and/or
blurring of Heartland’s valuable and famous brand name through association of SPLENDA®
Brand Sweetener with lesser quality, Chinese-manufactured sucralose sweetening products.
207. Speedway has used Heartland’s Yellow Trade Dress for its own benefit in
connection with the sale of goods in Indiana and across the United States.
208. To the extent that Speedway’s use has been undertaken with the intent to use
Heartland’s Yellow Trade Dress as a generic indicator of non-branded sucralose-based sweetener,
such misconduct is misleading to consumers and likely to cause dilution by tarnishing and/or
blurring the goodwill in the Yellow Trade Dress.
209. Upon information and belief, Speedway’s actions demonstrate an intentional,
willful, knowing, and malicious intent to trade on the goodwill associated with Heartland, the
Yellow Trade Dress, and/or SPLENDA® Brand Sweetener and to dilute the distinctive quality of
the famous Yellow Trade Dress and/or the famous SPLENDA® Brand, resulting in irreparable
injury to Heartland and entitling Heartland to enhanced damages and attorneys’ fees under 15
U.S.C. § 1117.
210. As a result of Speedway’s violation of 15 U.S.C. § 1125(c), Heartland is entitled to
to recover for the injuries sustained.
29
COUNT VII
Trademark Dilution under Ind. Code 24-2-1-13.5
216. The Yellow Trade Dress is famous in Indiana and has been famous in Indiana since
at least, but perhaps earlier than, 2004.
217. The unauthorized commercial use of the Yellow Trade Dress by Speedway began
after the Yellow Trade Dress became famous in Indiana.
218. The unauthorized commercial use of the Yellow Trade Dress by Speedway without
sufficient cues to the consumer that the generic packets are not in fact SPLENDA® Brand
Sweetener has caused or is likely to cause dilution of the distinctive quality of the Yellow Trade
Dress through either tarnishment or blurring or both.
219. Speedway’s use of yellow low-calorie sweetener packets is misleading to
consumers and tarnishes and/or blurs the Yellow Trade Dress.
220. Heartland is entitled to injunctive relief against Defendant for its violations of Ind.
Code 24-2-1-13.5.
221. Upon information and belief, Speedway has willfully traded on the reputation of
the Yellow Trade Dress, and/or caused dilution of the Yellow Trade Dress, and Speedway will
continue its unlawful conduct unless enjoined.
222. As a result of Speedway’s willful misconduct, Heartland has been damaged and is
entitled to: all Heartland’s damages suffered by reason of Speedway’s use of the Yellow Trade
30
Dress, Speedway’s profits from the sale of infringing goods, and Heartland’s attorneys’ fees
associated with this litigation.
223. Further, Speedway has caused irreparable injury to Heartland’s reputation and
goodwill and, unless enjoined, Speedway will continue its acts of unfair competition.
224. Heartland is therefore also entitled to permanent injunctive relief.
PRAYER FOR RELIEF
WHEREFORE, Heartland respectfully requests that this Court:
A. Enter judgment that Speedway has infringed Heartland’s rights in the Yellow Trade
Dress, including and not limited to Heartland’s federal statutory and common law
rights;
B. Enter judgment that Speedway has diluted the distinctive quality of Heartland’s rights
in the Yellow Trade Dress, including and not limited to Heartland’s federal statutory
and common law rights;
C. Enter judgment that Speedway has falsely designated the origin of its yellow-packeted
sweetener and unfairly competed with Heartland;
D. Enter judgment that Speedway has engaged in false advertising concerning the country
of origin of the sweetener product contained in Speedway’s yellow packets;
E. Permanently enjoin Speedway, its officers, agents, representatives, employees, and
those persons acting in concert or participation with them, from using the Yellow Trade
Dress or any trade dress confusingly similar thereto in connection with any of
Speedway’s goods offered to consumers;
31
F. Permanently enjoin Speedway, its officers, agents, representatives, employees, and
those persons acting in concert or participation with them, from making unqualified
U.S. origin claims with respect to Speedway’s generic sucralose sweetener;
G. Order Speedway to pay actual damages that Heartland has suffered as a result of
Speedway’s infringement, dilution, false advertising, false designation of origin, and
unfair competition as provided for by federal and state statutes and common law,
including and not limited to 15 U.S.C. § 1117(a) and Ind. Code § 24-2-1-13.5(c);
H. Order Speedway to disgorge all profits attributable to its infringement, dilution, false
designation of origin, false advertising, and unfair competition as provided for by
federal and state statutes and common law, including and not limited to 15 U.S.C. §
1117(a) and Ind. Code § 24-2-1-13.5(d);
I. Order Speedway to deliver for destruction all packets that infringe Heartland’s Yellow
Trade Dress, as provided for by 15 U.S.C. § 1118.
J. Order Speedway to provide corrective advertising on its website and in its convenience
stores;
K. Grant Heartland enhanced damages, punitive damages, attorneys’ fees, and costs as
provided for by federal and state statutes, including and not limited to 15 U.S.C. § 1117
and Ind. Code § 24-2-1-13.5(d);
L. Grant further equitable relief in order to enjoin the harm caused by Speedway;
M. Grant Heartland prejudgment and post-judgment interest; and
N. Grant such other and further relief as this Court deems just and equitable.
JURY DEMAND
Heartland demands a trial by jury on all issues so triable.
32
Respectfully submitted,
/s/ Holiday W. Banta

Holiday W. Banta (Atty. No. 17852-49)
Jessa DeGroote (Atty. No. 35847-49)
ICE MILLER LLP
One American Square, Suite 2900
Indianapolis, IN 46282
(317) 236-2100
H.Banta@icemiller.com
Jessa.DeGroote@icemiller.com
Alice Kelly (pro hac vice forthcoming)

ICE MILLER LLP
200 West Madison Street, Suite 3500
Chicago, IL 60606-3417
(312) 726-1567
Alice.Kelly@icemiller.com
33

Heartland Complaint

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Heartland Complaint

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Case 1:21-cv-00322-JMS-TAB Document 1 Filed 02/08/21 Page 1 of 33 PageID #: 1

UNITED STATES DISTRICT COURT

v. Case No. 1:21-cv-322

SPEEDWAY, LLC JURY TRIAL DEMANDED

For its complaint against Defendant Speedway, LLC (“Speedway” or “Defendant”),

Plaintiff, Heartland Consumer Products LLC (“Heartland” or “Plaintiff”), states as follows:

providing sucralose-based sweetener products in yellow packages that Speedway customers

Heartland’s property to identify non-SPLENDA® sucralose-based sweeteners. As the owner of

SPLENDA® trademark in commerce.

NATURE OF THE ACTION

trademark dilution, and trademark infringement caused by Defendant’s unauthorized use of

2. Defendant’s use of yellow packets for Defendant’s knock-off sucralose, which,

and is misleading consumers concerning the source of those yellow packets.

and is misleading consumers concerning the source of those yellow packets.

Suite 205, Carmel, Indiana 46032, in Hamilton County.

6. Heartland is a global leader in the production of low-calorie sweetener products,

Enon, Ohio 45353.

8. Upon information and belief, Speedway operates a chain of approximately 3,900

JURISDICTION AND VENUE

that have caused harm to Plaintiff here.

§§ 1391(b)(1)-(2) and 1391(c)(2).

The SPLENDA® Brand

other components to create a sweetener that tastes like sugar.

18. SPLENDA® Brand Sweetener is a low-calorie sweetener using sucralose.

proliferate in the market.

the United States that comes in a yellow package.

23. SPLENDA® Brand Sweetener is used to sweeten beverages and is purchased by

consumers for cooking and baking in their homes.

24. SPLENDA® Brand Sweetener is also used as an ingredient in third-party

commercial food production.

History of the SPLENDA® Brand

a request to “taste” it.

more importantly, calorie free.

food products, the sweetening ingredient in SPLENDA® Brand Sweetener.

sweetener that consumers could use for cooking and baking.

products and food preparation on April 1, 1998.

35. In September 2000, SPLENDA® Brand Sweetener officially launched in retail

stores across the United States.

ingredients in the world.

39. SPLENDA® is a brand recognized industry-wide and is associated with superior

customer service and product quality.

service, and innovation in the industry.

SPLENDA® Brand Sweetener and the Yellow Trade Dress:

Yellow Trade Dress.

to acquire and invest in the brand.

Consumer, Inc. (the “Transaction”).

tasting products to sweeten foods and beverages without adding calories.

preceding twelve (12) months.

resources in acquiring, developing, advertising, and otherwise promoting SPLENDA® Brand

Sweetener, both nationally and globally.

53. As a result, SPLENDA® is a famous brand, instantly and widely recognized by

consumers, the public, and the trade.

54. Additionally, SPLENDA® enjoys significant and valuable consumer goodwill.

SPLENDA® Yellow Trade Dress

55. Heartland’s yellow packaging is inherently distinctive because consumers are

predisposed to equate the color feature with a single source.

assume the trade dress is associated with a particular source.

59. In addition, and as a result of Heartland’s and its predecessor’s extensive

identifying yellow sweetener packets as containing SPLENDA® Brand Sweetener unless

package is not a SPLENDA® Brand package.

used on a sweetener packet is a brand-specific design element.