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I N T HE UNI T ED ST AT ES DISTRI CT COURT


F OR T HE NORT HERN DISTRI CT OF NE W YORK


)
THE GOLUB CORPORATION, )
)
Plaintiff, )
) Jury Trial Demanded
v. )
)
WAKEFERN FOOD CORPORATION, )
D/B/A SHOPRITE SUPERMARKETS, INC. ) Civil Action No.
)
Defendant. )
)


COMPL AI NT AND DE MAND F OR JURY TRI AL

PlaintiII The Golub Corporation ('PlaintiII or 'Golub), Ior its Complaint against
DeIendant WakeIern Food Corporation, d/b/a ShopRite Supermarkets, Inc. ('DeIendant or
'WakeIern) alleges as Iollows:
NATURE OF T HE AC TI ON
1. This is an action for trademark infringement, false designation of origin, unfair
competition and dilution under the Lanham Act, 15 U.S.C. 1051, et seq.; and related claims for
trademark infringement, unfair competition and dilution under New York State statutory and
common law.
T HE PARTI ES
2. The Golub Corporation is a corporation organized and existing under the laws of
the State of Delaware with its headquarters located at 461 Nott Street, Schenectady, New York,
12308.
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3. Upon information and belief, Wakefern Food Corporation, d/b/a ShopRite
Supermarkets, Inc. is a corporation organized and existing under the laws of the State of New
Jersey with its headquarter located at 5000 Riverside Drive, Keasbey, New Jersey, 08738.
JURISDI CTI ON AND VENUE
4. This Court has jurisdiction under 15 U.S.C. 1121, and 28 U.S.C. 1331, 1338.
5. This Court has personal jurisdiction over Defendant Wakefern consistent with the
principles underlying the U.S. Constitution and N.Y.C.P.L.R. 302, because upon information
and belief, Wakefern conducts or solicits business within this district and elsewhere in New York
and derives substantial revenue from the sales of its products and/or services within this district
and elsewhere in New York. Plaintiff is further informed and believes that New York consumers
in this District interact with the WakeIern owned website, located at 'www.shoprite.com, by
searching Ior, requesting and purchasing DeIendant`s products and/or services.
6. Venue is proper in this Court pursuant to 28 U.S.C. 1391, because among other
things, (a) this is an action arising out of allegations of infringement of intellectual property,
including trademark and trade dress infringement, (b) Plaintiff is in this District, (c) a substantial
part oI the events giving rise to PlaintiII`s claims occurred in this District, and/or (d) DeIendant
is subject to personal jurisdiction of this Court.
BAC K GROUND
7. Plaintiff Golub is the parent corporation of Price Chopper, Inc., Price Chopper
Operating Co., Inc., Price Chopper Operating Co. of Massachusetts, Inc., Price Chopper
Operating Co. of New Hampshire, Inc., Price Chopper Operating Co. of Pennsylvania, Inc., and
Price Chopper Operating Co. of Vermont, Inc.
8. Plaintiff Golub is the owner of numerous trademark registrations, including the
United States Trademark Registration Nos. 1,149,164 and 1,148,595 for the mark PRICE
Case 1:11-cv-01254-NAM-DRH Document 1 Filed 10/20/11 Page 2 of 12
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CHOPPER. Copies of the U.S. Trademark Office records for these registrations are attached
hereto as Exhibit A.
9. Plaintiff Golub adopted the PRICE CHOPPER mark and has continuously used
it in interstate commerce for retail supermarket and gasoline station services since at least as
early as May of 1973.
10. Plaintiff Golub operates retail supermarket stores using the PRICE CHOPPER
mark in New York, Connecticut, Massachusetts, New Hampshire, Pennsylvania and Vermont.
11. Plaintiff Golub adopted the PRICE CHOPPER mark and has continuously used
it in interstate commerce for:

Mouth Wash, Nail Polish Remover, Fabric Softener, Laundry Bleach, Household
Ammonia, Toilet and Laundry Soap, Laundry and Dishwashing Detergent, since at least
as early as May of 1974;

Vitamins, Rubbing Alcohol, Hydrogen Peroxide for Medicinal Use, Mineral Oil for
Medicinal Use, Cotton Cleaning Swabs for Medicinal Use, since at least as early as
November of 1973;

Paper Bags and Facial Tissues, since at least as early as October 2, 1973;

Plastic Bags-Namely, Sandwich Bags, Garbage Bags and Trash Bags, since at least as
early as October 1973;

Mayonnaise, Salad Dressing, Dairy Products Excluding Ice Cream, Eggs, Canned Fruits
and Vegetables, Jams, Pickles, Jellies, Peanut Butter, Milk Substitute for Coffee; Meat
and Meat Products, Poultry and Fish, since at least as early as August of 1971;

Catsup, Tomato Sauce, Tomato Puree, Tomato Paste, Vinegar, Mustard, Table Syrup,
Bread, Muffins, Doughnuts, Coffee, Ice Cream, Waffles, Chocolate, Cake, Honey and
Cocoa, since at least as early as August of 1971;

Fresh Fruits and Vegetables, Canned and Dry Dog and Cat Food and Bird Seed, since at
least as early as January of 1978;

Fruit Juices, Tomato Juice, Fruit Punch, Fruit Drinks Containing Water, Soft Drinks,
Non-Alcoholic Mixers, Vichy Water and Powdered Soft Drink Mix, since at least as
early as October 2, 1973; and
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Book Matches, since at least as early as November 6, 1973.

12. The validity of the registered PRICE CHOPPER mark and of the registrations
oI the mark, PlaintiII Golub`s ownership oI the mark, and PlaintiII Golub`s exclusive right to use
said registered mark in commerce for the above mentioned goods and services are incontestable
under 15 U.S.C.A. 1065, and 15 U.S.C.A. 1115(b), as Plaintiff Golub has filed the required
affidavit with the Commissioner of Patents and Trademarks.
13. Since on or about March 24, 1981, Plaintiff Golub has given notice that its mark
is registered in the U.S. Patent and Trademark Office by displaying with the mark as used the
letter R enclosed within a circle. Plaintiff has requested Defendant to cease and desist from its
acts of trademark infringement and has given Defendant actual notice of Plaintiff's registrations.
14. Due to PlaintiII`s dedication, innovation and commitment to providing quality
products and services, Plaintiff Golub has established itself as an industry leader in retail grocery
services and goods.
15. Through PlaintiII`s continuous use oI its PRICE CHOPPER mark in connection
with the above-identified goods and services, Plaintiff has developed valuable good will in its
PRICE CHOPPER mark and PlaintiII`s PRICE CHOPPER mark is well known in the
numerous states throughout the northeast region as a source of origin in Plaintiff for such goods
and services.
16. Over the years, Plaintiff has expended considerable resources in establishing the
PRICE CHOPPER mark in the minds of consumers as a source of high quality grocery
products and services, for an excellent value.
17. The name PRICE CHOPPER has become associated in the minds of purchasers
with Plaintiff as one of the largest and most reputable provider of groceries and grocery services
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in the greater northeast region of the United States, including the Capital District region of New
York.
18. Upon information and belief, Defendant Wakefern operates retail grocery stores
under the name ShopRite in select regions of New York, New Jersey, Pennsylvania, Connecticut,
Delaware and Maryland.
19. Upon information and belief, Defendant Wakefern owns and operates the
ShopRite of Niskayuna store, located at 2333 Nott Street East, Niskayuna, New York, 12309.
20. Upon information and belieI, DeIendant WakeIern`s ShopRite oI Niskayuna store
is the Iirst oI the several ShopRite stores planned to be opened in the New York`s Capital
District area.
21. Upon inIormation and belieI, DeIendant WakeIern`s ShopRite grocery stores did
not operate any retail grocery stores in Upstate New York, until the opening of the store in
Niskayuna, New York on or about October 2, 2011.
22. PlaintiII discovered that when a search Ior 'price chopper or other variation oI
PlaintiII`s mark is conducted on Internet search engines, including Google, Bing and Yahoo!, an
advertisement Ior DeIendant`s retail grocery stores appears immediately above the search results
list. The advertisement contains PlaintiII`s mark and a link to DeIendant`s website. Copies oI
the search results screenshots for searches run on search engines for Google, Bing and Yahoo!,
on or about October 20, 2011 Ior 'price chopper, copies oI the search results screenshots Ior
searches run on search engine Google on or about October 20, 2011 Ior 'price chopper ad and
'price chopper Ilyer showing DeIendant`s advertisement, and the screenshot oI the clicked
through link, are annexed hereto and attached herewith as Exhibit B.
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23. Upon information and belief, Internet search providers offering Internet
advertising programs, such as Google`s AdWords or Sponsored Links programs, or Yahoo!`s
and Bing`s MicrosoIt Ad Center Program, allows an advertiser to purchase certain keywords to
cause its advertisement or sponsored link to appear when a search is conducted using the
purchased keywords and similar variations thereof.
COUNT I
I NFRI NGE MENT OF F EDERAL L Y RE GIST E RED TRADE MARKS
24. Plaintiff repeats and realleges each and every allegation contained in paragraphs 1
to 23.
25. Upon information and belief, Defendant Wakefern has inIringed PlaintiII Golub`s
registered mark in interstate commerce by various acts, including purchasing keywords including
or relating to the PRICE CHOPPER mark and engaging in Internet advertising campaigns
using the PRICE CHOPPER mark, to sell, oIIer Ior sale and advertise WakeIern`s retail
grocery goods and/or services. DeIendant`s use oI the PRICE CHOPPER mark is without
permission or authority of Plaintiff Golub and such use by Defendant is likely to cause
confusion, to cause mistake and/or to deceive.
26. Upon information and belief, Defendant has purchased and used keywords,
including PlaintiII`s PRICE CHOPPER trademark or similar variations thereoI, in Internet
advertising programs, including Google`s AdWords program, or Yahoo!`s and Bing`s Microsoft
Ad Center Program, with the full knowledge that so doing will cause Defendant to appear as an
'Ad or 'Sponsored Link when a consumer types 'price chopper or other variations oI
PlaintiII`s registered mark into an Internet search engine.
27. Upon information and belieI, consumers searching Ior PlaintiII`s products and/or
grocery stores have been diverted to DeIendant`s stores.
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28. DeIendant`s acts alleged herein oI trademark inIringement have been committed
with the intent to cause confusion, mistake and to deceive.
29. Pursuant to 15 U.S.C. 1117, PlaintiII is entitled to damages Ior DeIendant`s
violations and an accounting of profits made by Defendant through its actions and recovery of
PlaintiII`s costs oI this action.
30. The intentional, willful, and wrongful acts of Defendant makes this an exceptional
case entitling PlaintiII to an award oI treble damages and reasonable attorneys` Iees pursuant to
15 U.S.C. 1117(a) and (b).
31. DeIendant`s activities have caused and will cause Iurther irreparable injury to
Plaintiff and unless such activities are restrained by this Court they will be continued and will
continue to cause great and irreparable injury to Plaintiff.
32. Plaintiff may have no adequate remedy at law in the event that monetary damages
cannot be properly calculated.
33. Pursuant to 15 U.S.C. 1116, Plaintiff is entitled to preliminary and permanent
injunctive relieI to prevent DeIendant`s continuing conduct.
34. Upon information and belief, unless enjoined by this court, Defendant will
continue its course of conduct and wrongfully use, infringe upon and otherwise profit from the
sale oI products through the unauthorized use oI PlaintiII`s mark.
COUNT I I
F ALSE DESI GNATI ON OF ORI GI N AND UNF AI R COMPE TI TI ON UNDER T HE
L ANHAM ACT
35. Plaintiff repeats and realleges each and every allegation contained in paragraphs 1
to 34.
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36. This claim arises under section 43 of the Lanham Act, Title 15 of the United
States Code Section 1125, for false advertising and/or false designation of origin. This Court has
jurisdiction over this claim pursuant to 15 U.S.C. 1121.
37. The use of the PRICE CHOPPER mark by Defendant constitutes a false
designation of origin or sponsorship as to the goods and/or services made available by Defendant
and Ialsely represents that DeIendant`s goods and/or services originate from Plaintiff or that
DeIendant`s goods and/or services are or have been sponsored, approved, authorized or licensed
by Plaintiff or are in some way affiliated or connected with Plaintiff. As a consequence,
DeIendant`s unauthorized use is likely to divert and have diverted customers away from the
Plaintiff.
38. DeIendant`s conduct is likely to conIuse, mislead, or deceive purchasers or
potential purchasers, and constitutes false advertising and/or false designation of origin, in
violation of 15 U.S.C. 1125(a).
39. Plaintiff has no control over the nature and quality of the goods and services
offered by Defendant. Any failure, neglect or default by Defendant in providing such goods
and/or services will reflect adversely on Plaintiff as the believed source of origin thereof,
hampering efforts by Plaintiff to continue to protect its outstanding reputation for high quality
goods and services with excellent value, resulting in loss of sales thereof and the considerable
expenditures to promote its goods and services under the mark, all to the irreparable harm of the
Plaintiff.
40. Upon investigation and information, Defendant has engaged and continues to
engage in the aIoresaid activities willIully and with knowledge oI PlaintiII`s rights in and to the
PRICE CHOPPER mark.
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41. DeIendant`s activities have caused and will cause Iurther irreparable injury to
Plaintiff and unless such activities are restrained by this Court, they will be continued and will
continue to cause great and irreparable injury to Plaintiff.
42. Plaintiff may have no adequate remedy at law in the event that monetary damages
cannot be properly calculated.
COUNT I I I
UNF AI R COMPE TI TI ON AND TRADE MARK I NFRI NGE MENT UNDER ST AT E
COMMON L AW
43. Plaintiff repeats and realleges each and every allegation contained in paragraphs 1
to 42.
44. DeIendant`s acts, as alleged herein, constitute trademark inIringement and unIair
competition under the common law of the State of New York.
45. Defendant has infringed the PRICE CHOPPER mark and continues to do so by
its unauthorized use of the same in promoting, offering for sale and/or selling its own goods
and/or services.
46. DeIendant`s acts are likely to cause conIusion, or to cause mistake, or to deceive
as to affiliation, connection, or association with Plaintiff, or origin, sponsorship, or affiliation of
Defendant by Plaintiff.
47. Upon information and belief, Defendant intends that others rely upon these unfair
methods of competition and unfair or deceptive trade practices.
48. DeIendant`s deceptive business practices involve conduct addressed to the market
generally and implicate consumer protection concerns because the deceptive practices have
caused and continue to cause injury to consumers. Unless DeIendant`s acts are restrained by this
Court, DeIendant`s deceptive business practices will continue and the public will continue to
suffer great and irreparable injury.
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49. Upon inIormation and belieI, DeIendant`s actions have been willIul and
deliberate.
50. The acts of Defendant as alleged herein constitute trademark infringement unfair
competition and misappropriation oI PlaintiII`s common law trademark rights under the laws oI
the State of New York, which will cause irreparable injury to Plaintiff unless enjoined by this
Court. Plaintiff has acquired a reputation for quality and value for its goods and services and
consumers have come to identify the PRICE CHOPPER mark as identifying retail grocery
products and services emanating exclusively from Plaintiff. As a result, the PRICE CHOPPER
mark represents a valuable asset to Plaintiff.
51. Plaintiff has suffered, and continues to suffer, substantial and irreparable injury as
a result oI DeIendant`s deceptive business practices and thereIore PlaintiII is entitled to
injunctive relief under New York common law.
COUNT I V
DI LUTI ON I N VI OL ATI ON OF F EDERAL ANTI-DI LUTI ON ST ATUT E
52. Plaintiff repeats and realleges each and every allegation contained in paragraphs 1
to 51.
53. PlaintiII`s PRICE CHOPPER mark is strong and distinctive, has long been used
in connection with the goods and services on which it appears, has long been the subject of
substantial advertising and promotion, has been used and advertised throughout numerous States,
including New York, Massachusetts, New Hampshire, Pennsylvania, Vermont and Connecticut,
is widely recognized by consumers and those in the trade, is in substantially exclusive use by
Plaintiff and is federally registered, as alleged above. Plaintiff's mark PRICE CHOPPER is
recognized by the general consuming public as a designation of source for the goods and services
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of Plaintiff and is therefore a famous mark. The acts of Defendant alleged herein were
commenced from a time after Plaintiff's mark became famous.
54. DeIendant has made use oI PlaintiII`s Iamous PRICE CHOPPER in interstate
commerce in connection with the promotion of Defendant`s own goods and services.
DeIendant`s acts are in violation oI Lanham Act 43(c) in that they are likely to cause dilution
by blurring by impairing the distinctiveness of Plaintiff's famous mark, all to the irreparable
injury to and damage of Plaintiff. DeIendant`s acts are also in violation oI Lanham Act 43(c) in
that they are likely to cause dilution by tarnishment by harming the reputation of Plaintiff's
famous mark PRICE CHOPPER, all to the irreparable injury to and damage of plaintiff.
55. Defendant committed these acts willfully and with the intent to create an
association with PlaintiII`s Iamous mark. DeIendant willIully intended to trade on the
recognition oI PlaintiII`s Iamous mark. DeIendant willIully intended to harm the reputation oI
the famous mark.
JURY TRI AL DE MANDED
56. Plaintiff hereby demands a trial by jury.
RE LI E F RE QUEST ED
WHEREFORE, Plaintiff Golub prays for judgment against Defendant, granting the Plaintiff:
A. An injunction enjoining Defendant and all persons acting in concert or participation
with it or persons acting or purporting to act on its behalf, including but not limited to
its partners, owners, agents, representatives, employees, attorneys, successors and
assigned any and all persons acting in concert or privity with them, from:
1. Using or inIringing PlaintiII`s marks, including the PRICE CHOPPER
mark;
2. False designation of origin;
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3. Diluting PlaintiII`s marks, including the PRICE CHOPPER mark; and
4. Unfairly competing with Plaintiff.
B. Damages Ior DeIendant`s violation oI 15 U.S.C. 1125 and treble damages for
willful violation of the same;
C. Damages and punitive damages in connection with the state law claims;
D. An accounting and award oI DeIendant`s proIits derived by them Irom any oI the
wrongful acts complained of herein;
E. Increased damages pursuant to 15 U.S.C. 1117;
F. PlaintiII`s costs oI this action;
G. Pre-judgment and/or post-judgment interest;
H. PlaintiII`s attorneys` Iees, including attorneys` Iees pursuant to 15 U.S.C. 1117
and/or New York State law; and
I. Such other and further relief against DeIendant in Iavor oI PlaintiII`s as this Court
deems just, equitable and proper.

Dated: October 20, 2011 Respectfully submitted,



/s/ Robert E. Heslin__
Robert E. Heslin, Esq. (NDNY BRN: 101,969)
Caroline B. Ahn, Esq. (NDNY BRN: 514,926)
HESLIN ROTHENBERG FARLEY & MESITI P.C.
5 Columbia Circle
Albany, New York 12203-5160
Telephone: (518) 452-5600
Facsimile: (518) 452-5579
E-mail: reh@hrfmlaw.com
Email: cba@hrfmlaw.com

Attorneys for Plaintiff The Golub Corporation

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EXHIBIT B






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Google Search Result Ior 'price chopper:




Enlarged Ad:


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Bing Search Result Ior 'price chopper:




Enlarged Ad:




Case 1:11-cv-01254-NAM-DRH Document 1-2 Filed 10/20/11 Page 3 of 7
Yahoo! Search Result Ior 'price chopper:



Enlarged Ad:



Case 1:11-cv-01254-NAM-DRH Document 1-2 Filed 10/20/11 Page 4 of 7
Google Search Result Ior 'price chopper ad:


Case 1:11-cv-01254-NAM-DRH Document 1-2 Filed 10/20/11 Page 5 of 7
Google Search Result Ior 'price chopper Ilyer:



Case 1:11-cv-01254-NAM-DRH Document 1-2 Filed 10/20/11 Page 6 of 7
Directed webpage upon clicking on the ad:


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EXHIBIT A
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