Cheddar Bob's v. Macsnmelts - Trademark Complaint EDNY PDF

Case 2:16-cv-01331-LDW-AYS Document 1 Filed 03/17/16 Page 1 of 22 PageID #: 1
UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK
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CHEDDAR BOBS INC,
Plaintiffs,
CIVIL ACTION NO. 2:16-cv-1331
-againstCOMPLAINT
MACSNMELTS MANAGEMENT COMPANY, LLC,
MACSNMELTS 1, LLC, MACSNMELTS 2, LLC, and
ROBERT CROAK
Defendants.
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Plaintiff Cheddar Bobs Inc., (hereinafter, Plaintiff) by and through its undersigned
counsel, for its complaint against Defendants Macsnmelts Management Company, LLC, an Ohio
Limited Liability Company with an address at 1309 Bryden Road, Columbus, OH 43205,
Macsnmelts 1, LLC, an Ohio Limited Liability Company with an address at 1300 Bryden Road,
Columbus, OH 43205, and Macsnmelts 2, LLC, an Ohio Limited Liability Company with an
address at 1309 Bryden Road, Columbus, OH 43205, and Mr. Robert Croak, an individual with an
address at 148 Main St. Toledo, OH 43605 states and alleges the following:
NATURE OF ACTION
1.
This is an action for trademark infringement and false designation of origin under the
Trademark Act of 1946, as amended (The Lanham Act, 15 U.S.C. 1050 et seq.), false designation
of origin under Lanham Act, 15 U.S.C. 1125(A), false designation of origin under Lanham Act
15 U.S.C. 1125(A), unfair business practices under N.Y. GEN. BUS. LAW 349, injury to
business reputation; and unfair competition under N.Y. GEN. BUS. 360-L, and common law
trademark infringement and unfair competition from Defendants deliberate and unconscionable
actions in infringing on Plaintiffs trademarks, including Plaintiffs MAC & MELTS mark and
related marks within Plaintiffs MAC & MELTS family of marks, by reproducing, infringing upon,
and diluting Plaintiffs MAC & MELTS trademark, in a manner that infringed upon Plaintiffs
MAC & MELTS mark and made willful, unauthorized use of said marks in a calculated effort by
Defendants to respectively enrich themselves through unauthorized use of Plaintiffs intellectual
property.
2.
In so doing, Plaintiffs have been grievously injured by Defendants infringements, as they
have been undertaken without Plaintiffs permission, and without his control, and in a manner
that damages the image associated with Plaintiffs marks, brand, work, and intellectual property.
THE PARTIES
3.
Plaintiff Cheddar Bobs Inc., is a New York corporation with a principal place of
business at 684 Stewart Avenue, Garden City, NY 11530. Plaintiff provides restaurant services
under the trademarks MAC & MELTS (word mark) and the MAC & MELTS (stylized plus
design) mark depicted below:
4.
Plaintiffs restaurant services under the MAC & MELTS trademarks combine typical
comfort food, such as macaroni and cheese and grilled cheese, with artisan and gourmet
ingredients to create unique and proprietary variations of classic comfort foods for Plaintiffs
customers. Plaintiff offers a vast menu of offerings of variations of gourmet and specialty
macaroni and cheese, grilled cheese sandwiches, soups, salads and other offerings in a unique
2
environment designed to capitalize on the publics desire for delicious tasting comfort foods.
Consumers seeking Plaintiffs restaurant services can review the menu and photos of food on
Plaintiffs Website, www.macnmelts.com, or visit Plaintiffs restaurant location at 684 Stewart
Avenue, Garden City, NY, 11530.
5.
Upon information and belief, Defendant Macsnmelts Management Company LLC.
(Macsnmelts) is an Ohio Limited Liability Company that transacts and engages in business
and business relationships in the State of New York, and has a principal place of business located
at 1309 Bryden Road, Columbus, OH 43205.
6.
Upon information and belief, Defendant Macsnmelts 1, LLC (Macsnmelts 1) is an
Ohio Limited Liability Company that transacts and engages in business and business
relationships in the State of New York with a principal place of business located at 1300 Bryden
Road, Columbus, OH 43205.
7.
Upon information and belief, Defendant Macsnmelts 2, LLC (Macsnmelts 2) is an
Ohio Limited Liability Company that transacts and engages in business and business
relationships in the State of New York with a principal place of business located at 1309 Bryden
Road, Columbus, OH 43205.
8.
Upon information and belief, Defendant Robert Croak (Croak) is an individual
transacts and engages in business and business relationships in the State of New York with an
address at 148 Main St., Toledo, OH 43605.
9.
Defendants Macsnmelts, Macsnmelts 1, Macsnmelts 2, and Croak are collectively
referred to as MMC or Defendants.
10.
Upon information and belief, MMC owns, operates, and provides restaurant services at
the Westgate Village Plaza, which is located at 3330 W. Central Avenue, Toledo, OH 43606.
11.
Upon information and belief, Defendants own, operate, and provide restaurant services
under the designation MACS N MELTS. Under the MACS N MELTS designation,
Defendants provide restaurant services for casual fast food, such as macaroni and cheese and
grilled cheese, using artisan and local ingredients. Defendants also own and operate the website
http://www.macsnmelts.com (MMC Website), which provides MMCs menu and information
regarding its restaurant locations.
JURISDICTION AND VENUE
12.
This Court has original jurisdiction over the subject matter of this action pursuant to
28 U.S.C. 1331 (federal question), 1338(a) (acts of Congress relating to trademarks), and
1338(b) (pendent unfair competition claims) as well as pursuant to 15 U.S.C. 1121 (original
jurisdiction of all actions arising under Lanham Act). This Court has supplemental jurisdiction
over the asserted state tort claims pursuant to 28 U.S.C. 1367(a).
13.
This Court has jurisdiction over Plaintiffs' state-law claims pursuant to 28 U.S.C. 1332,
because there is diversity of citizenship among the parties and the amount in controversy exceeds
$75,000, and to 28 U.S.C. 13 67(a), because those claims that are so related to claims in the
action within this Court's original jurisdiction that they form part of the same case or controversy
4
under Article III of the United States Constitution.
14.
This Court also has specific personal jurisdiction over Defendants pursuant to N.Y.
C.P.L.R. 302(a)(3) in that Defendants have committed tortious acts without the state causing
injury to Plaintiff and that, upon information and belief, regularly does or solicits business, or
engages in any other persistent course of conduct, or derives substantial revenue from goods
used or consumed or services rendered, in the state or should reasonably expect the act to have
consequences in the state and derives substantial revenue from interstate or international
commerce.
15.
Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and 1391(c) as the
Defendant is subject to the Courts personal jurisdiction and, upon information and belief, a
substantial part of the events or omissions giving rise to the claim occurred in the Eastern District
of New York.
FACTS
16.
Since at least as early as October 2012, Plaintiff has owned, maintained, and developed
U.S. common law and equivalent trademark rights in the mark MAC & MELTS for use in
conjunction with restaurant services, namely, providing of food and beverages for consumption
on and off the premises (the MAC & MELTS Mark).
17.
Plaintiff has used the MAC & MELTS Mark on the Plaintiffs Website,
http://macnmelts.com, and provided restaurant services at its restaurant located at 684 Stewart
Avenue, Garden City, NY 11530.
18.
In addition to its marketing and promotional activities using the MAC & MELTS mark,
Plaintiff and the MAC & MELTS Mark have received unsolicited media exposure wherein the
MAC & MELTS Mark is associated with Plaintiff. For example, Plaintiff and its MAC &
MELTS offerings have been featured on various Websites and blogs, including TripAdvisor,
Newsday.com, Yelp, YouTube, the Automobile Association of America, and elsewhere.
19.
Plaintiff continuously used the MAC & MELTS Mark in interstate commerce since at
least as early as October 2012, in connection with restaurant services.
20.
Plaintiff, from October 2012 to the present has made bona fide use of the MAC &
MELTS Mark in the ordinary course of trade.
21.
As a result of the widespread use and display of the MAC & MELTS Mark, the public
use the MAC & MELTS Mark to identify and refer to Plaintiffs restaurant services, the public
and the trade recognize that such designations refer to high quality restaurant services emanating
from a single source, and said MAC & MELTS Mark has built up secondary meaning and
extensive goodwill.
22.
In addition, Plaintiff is the owner of United States Trademark Registration No. 4,686,669,
registered on February 17, 2015, for MAC & MELTS (stylized plus design see below) for
Restaurant services, namely, providing of food and beverages for consumption on and off the
premises in International Class 43 (hereinafter, the 669 Mark). The 669 Mark is now valid,
subsisting, uncancelled, and unrevoked.
23.
The 669 Mark has been used in commerce continuously since on or about October 2012
(1) in connection with and to identify Plaintiffs services enumerated above and (2) to distinguish
said services from similar services offered by other companies, by, and without limitation,
prominently displaying MAC & MELTS (design) on said services.
24.
The 669 Mark and the MAC & MELTS Mark are collectively referred to as Plaintiffs
Marks. True and accurate copies of Plaintiffs use of the Plaintiffs Marks with restaurant
services, along with a copy of the registration certificate of 669 Mark, are attached hereto as
Exhibit A.
25.
As a result of Plaintiffs widespread, continuous and exclusive use of Plaintiffs Marks to
identify its restaurant services and Plaintiff as its source, Plaintiff owns valid and subsisting
federal statutory and common law rights in Plaintiffs Marks.
26.
Plaintiff offers its goods and services under Plaintiffs Marks to consumers seeking its
restaurant services.
Defendants Infringement of Plaintiffs Marks
27.
Upon information and belief, Defendant Croak is a recognized entrepreneur due to the
successful Sillybandz brand and has since been featured on television shows and news features
including but not limited to, How I Made My Millions, Bloomberg, CNN, MTVs Made,
Bravos-Housewives of Beverly Hills, GSN-High Stakes Poker, Wall Street Journal, and Inc.
Magazine.
28.
Upon information and belief, due to his prior commercial successes, Defendant Croak is
a sophisticated individual understanding the importance of branding, trademark usage, and

protections associated with trademarks. Defendant Croak is the owner of numerous businesses
other than MMC, including ShopJunki, Verso Group, Dynamic Orchestra, Lazer Shirts, and
Deepstacks. http://www.robertcroak.com/
29.
Upon information and belief, Defendant Croak is the founder of MMC and the restaurant
services provided under the MACS N MELTS Marks.
30.
Upon information and belief, MMCs stated purpose is to provide restaurant services
focusing on fast comfort casual food.
31.
Defendants have never received or been provided with a license, assignment, or any other
permission, express or implied, to use any of Plaintiffs Marks.
32.
Upon information and belief, on or about October, 2014, Defendants opened a restaurant
in Westgate Village Plaza located at 3330 West Central Avenue Toledo, Ohio 43606 using the
marks MACS N MELTS, MACS N MELTS GOURMET MACARONI & GRILLED
CHEESE, and the design marks depicted below (collectively, the MACS N MELTS Marks)
without license or permission of Plaintiff to use Plaintiffs Marks.
33.
Defendants use of the MACS N MELTS Marks, also used on the MMC Website, are
used in tandem with restaurant services.
34.
True and accurate copies of Defendants use of the MACS N MELTS Marks in tandem
with restaurant services and on the MMC Website are provided in Exhibit B.
35.
Upon information and belief, Defendants use the MACS N MELTS Marks with the
statutory notice of registration by using the symbol in connection with the MACS N MELTS
Marks. However, upon information and belief Defendants have not secured any federal
trademark registrations for any of the respective MACS N MELTS Marks.
36.
Upon information and belief, Defendants MACS N MELTS Marks are used connection
with restaurant services. As such, Defendants goods and services under the MACS N MELTS
Marks are identical to or substantially similar to and competitive with Plaintiffs restaurant
services offered with Plaintiffs Marks.
37.
Upon information and belief, Plaintiffs restaurant services provided under Plaintiffs
Marks and Defendants restaurant services provided under the MACS N MELTS Marks are sold
in the same channels of trade and bear a similar cover price.
38.
The MACS N MELTS Marks used by Defendants are substantially similar to Plaintiffs
Marks. The MACS N MELTS Marks and Plaintiffs Marks both begin with the word MAC,
and end with the term MELTS. In addition, both the MACS N MELTS Marks and Plaintiffs
Marks incorporate the term and within the marks Plaintiffs Marks use an ampersand
symbol, while the MACS N MELTS Marks use the letter N with an apostrophe to connote
that the N is used as an informal version of the word and. As such, both & and N sound
the same, have the same meaning, and are equivalent, underscoring that Plaintiffs Marks and the
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MACS N MELTS marks are visually similar, phonetically similar, and they evoke similar or
identical connotations.
39.
Upon information and belief, the Defendants are attempting to create a franchise
opportunity under the MACS N MELTS Marks by soliciting business in other states to open
restaurant locations under the MACS N MELTS Marks.
40.
Upon information and belief, when searching for Plaintiff on popular Internet search
engines such as Google or Bing, a search of Plaintiffs Marks provides results showing both the
MMC Website and Plaintiffs Website, www.macnmelts.com.
41.
On or about November 2015, Plaintiff became aware of Defendants use of the MACS N
MELTS Marks in conjunction with its restaurant services.
42.
On or about November 9, 2015, Plaintiff contacted MMC via letter and requested that
MMC immediately cease and desist from any usage of the MACS N MELTS Marks, cease any
activities that may indicate or be construed to indicate that MMCs products or services are the
same as or associated with Plaintiffs products or services, and that MMC take all necessary
commercially reasonable steps to destroy or dispose of any materials that use or include the
MACS N MELTS Marks which are in the control or oversite of MMC, including the MMC
Website. A copy of this letter is attached hereto as Exhibit C.
43.
Plaintiff has followed up with MMC by email numerous times since November 9, 2015
11
without any substantive response from MMC.
44.
On information and belief, as of the date of this Complaint, the MACS N MELTS Marks
are still in use by Defendants.
45.
MMCs actions as alleged in connection with its use of the MACS N MELTS Marks on
restaurant services is intended to, and is likely to cause confusion, mistake or deception as to the
source of origin of Plaintiffs restaurant services in that the public, the trade, and others are likely
to believe that MMCs restaurant services are the same as Plaintiffs restaurant services, or are
authorized, sponsored, or approved by Plaintiff, or are otherwise affiliated or connected with
Plaintiff and/or Plaintiffs Marks.
46.
MMCs intentional use of the MACS N MELTS Marks with the statutory notice symbol
noting a federal registration of a trademark, while MMC does not have any federal
registrations for the MACS N MELTS marks, amounts to misuse of the federal notice and a form
of false advertising under Lanham Act 43(a), demonstrates MMCs intentional infringement
and passing off of the Plaintiffs Marks, including Plaintiffs 669 Mark, and MMCs unclean
hands.
COUNT I
TRADEMARK INFRINGEMENT UNDER LANHAM ACT 15 U.S.C. 1114
47.
Plaintiff repeats and realleges all prior allegations.
48.
Plaintiff is the exclusive owner of the distinctive Plaintiffs Marks, including the MAC &
MELTS Mark and the 669 Mark.

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49.
Plaintiffs Marks are inherently distinctive and have been in use in commerce with
restaurant services since at least as early as October 2012.
50.
Plaintiffs Marks are strong, well-known, and have garnered widespread publicity and
public recognition in New York and elsewhere.
51.
Plaintiffs Marks, including the 669 Mark, are valid, subsisting, and uncancelled; and are
distinctive and strong due to extensive and exclusive use in commerce by Plaintiff with
Plaintiffs restaurant services for many years prior to Defendants unauthorized use.
52.
Based on Plaintiffs use, publishing, advertising, marketing, and popularity of Plaintiffs
Marks, the marks have acquired secondary meaning so that the public associates Plaintiffs
Marks and the MAC & MELTS mark with Plaintiffs goods and services.
53.
Defendants unauthorized and willful use in commerce of the MACS N MELTS Marks,
including MACS N MELTS, with restaurant services that are competitive with and similar to or
identical with the restaurant services offered in commerce by Plaintiff using Plaintiffs Marks is
likely to cause confusion, mistake or deception with Plaintiffs Marks and constitutes trademark
infringement in violation of Section 32(1) of the Lanham Act, 15 U.S.C. 1114(1).
54.
The MACS N MELTS Marks used by Defendants are substantially similar to Plaintiffs
Marks in appearance, sound, and evoke similar or identical connotations.
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55.
Defendants intentional misuse of the statutory notice of federal registration further
demonstrates that Defendants use of the MACS N MELTS Marks, which are confusingly
similar or identical to Plaintiffs Marks, demonstrates that Defendants unauthorized and willful
use in commerce of the MACS N MELTS Marks is willful.
56.
Defendants unauthorized and willful use in commerce of the MACS N MELTS Marks,
including MACS N MELTS, is similar to or identical in appearance to Plaintiffs Marks as

described herein and is likely to cause confusion, mistake or deception with Plaintiffs Marks
and constitutes trademark infringement in violation of Section 32(1) of the Lanham Act, 15
U.S.C. 1114(1).
57.
Upon information and belief, Defendants use of MACS N MELTS Marks, including
MACS N MELTS, in connection with the services has been made notwithstanding Plaintiffs
well-known and prior-established rights in Plaintiffs Marks and with both actual and
constructive notice of federal registration rights of Plaintiffs Marks under 15 U.S.C. 1072.
58.
Upon information and belief, Defendants infringing activities have caused and, unless
enjoined by this Court, will continue to cause, irreparable harm and injury to Plaintiff, and to
Plaintiffs reputation and goodwill in Plaintiffs Marks. Even after providing actual notice that
Defendants use of the MACS N MELTS Marks infringe Plaintiffs Marks, Defendants
continue to use the MACS N MELTS Marks. Plaintiff has no adequate remedy at law.
59.
Plaintiff is entitled to, among other relief, injunctive relief and an award of actual
14
damages, Defendants profits, enhanced damages and profits, reasonable attorneys fees and
costs of the action under Sections 34 and 35 of the Lanham Act, 15 U.S.C. 1116, 1117,
together with prejudgment and post-judgment interest.
COUNT II
FALSE DESIGNATION OF ORIGIN UNDER 15 U.S.C. 1125(A)
60.
61.
Plaintiff is the exclusive owner of the distinctive Plaintiffs Marks, including the MAC &
MELTS Mark and the 669 Mark.
62.
Plaintiffs Marks are distinctive and have been in use in commerce with restaurant
services since at least as early as October 2012.
63.
Plaintiffs Marks are strong, well-known, and have garnered widespread publicity and
public recognition in New York and elsewhere.
64.
Based on Plaintiffs use, publishing, advertising, marketing and popularity of Plaintiffs
Marks, the marks have acquired secondary meaning so that the public associates Plaintiffs
Marks and MACS & MELTS with Plaintiffs goods and services.
65.
Plaintiffs Marks, including the 669 Mark, are valid, subsisting, and uncancelled; and are
distinctive and strong due to extensive and exclusive use in commerce by Plaintiff with
Plaintiffs restaurant services for many years prior to Defendants unauthorized use.
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66.
Upon information and belief, Defendants actions as alleged in connection with the use of
the MACS N MELTS Marks with Defendants restaurant services are intended to cause
consumer confusion, and are likely to cause confusion, mistake or deception as to the source of
origin of Defendants restaurant services. Defendants use of the MACS N MELTS Marks as a
trademark is identical to or substantially similar to Plaintiffs prior and current use of Plaintiffs
Marks.
67.
Due to the highly similar or identical nature of the MACS N MELTS Marks and
Plaintiffs Marks, along with the identical or highly similar nature of the restaurant services
offered under those marks, the trade and others are likely to believe that Defendants restaurant
services offered under the MACS N MELTS Marks are the same as Plaintiffs restaurant
services, or are authorized, sponsored, or approved by Plaintiff, or are otherwise affiliated or
connected with Plaintiff and their valuable trademarks, including the Plaintiffs Marks.
68.
Defendants unauthorized and willful use in commerce of the MACS N MELTS Marks
with restaurant services that are competitive and similar to or identical with the restaurant
services that are offered in commerce by Plaintiff using Plaintiffs Marks is likely to cause
confusion, mistake or deception with Plaintiffs Marks and constitutes trademark infringement,
false designation of origin, false representation, and false description in violation of the Lanham
Act, Section 43(a), 15 U.S.C. 1125(a), all to the substantial and irreparable injury of the public
and of Plaintiffs business reputation and goodwill.
16
69.
Upon information and belief, Defendants infringing activities have caused and, unless
enjoined by this Court, will continue to cause, irreparable harm and injury to Plaintiffs, and to
Plaintiffs reputation and the goodwill in Plaintiffs Marks. Defendants continue to use the
MACS N MELTS Marks without the express authorization of Plaintiffs. Plaintiffs have no
adequate remedy at law.
70.
damages, Defendants profits, enhanced damages and profits, reasonable attorneys fees and
costs of the action under Section 34 and Section 35 of the Lanham Act, 15 U.S.C. 1116,
1117, together with prejudgment and post-judgment interest.
71.
COUNT III
UNFAIR BUSINESS PRACTICES UNDER N.Y. GEN. BUS. LAW 349
72.
73.
Defendants use of the MACS N MELTS Marks to promote, market, or sell products and
services, including on the MMC Website, constitutes a deceptive act or practice in the conduct of
Defendants business, trade, or commerce, and in the furnishing of services to consumers and
therefore a violation of N.Y. Gen. Bus. Law. 349 et seq.
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74.
Defendants, through its content and conduct, are causing a likelihood of confusion as to
the source, sponsorship, affiliation, connection, association or approval of Defendants by or with

Plaintiff.
75.
Plaintiff has been damaged by Defendants acts complained of in an amount to be
determined at trial, and if Defendants conduct is allowed to continue, Plaintiff and his goodwill
and reputation will continue to suffer immediate, substantial and irreparable injury that cannot be
adequately calculated and compensated in monetary damages.
76.
Defendants materially misleading practice of using the MACS N MELTS Marks to
identify goods and services provided by Defendants is likely to cause the consuming public at
large to be misled as to the true source, sponsorship, or affiliation of the goods and services
offered by Defendants and is likely to cause confusion or mistake or to deceive.
77.
Plaintiff is entitled to monetary damages in an amount to be proven at trial and injunctive
relief prohibiting Defendants from using the MACS N MELTS Marks or any other trade name,
trademark, service mark or domain name that is likely to be confused with Plaintiffs Marks or
otherwise unfairly competing with Plaintiff. Without preliminary and permanent injunctive
relief, Plaintiff has no means by which to control the continuing injury to the reputation and
goodwill associated with Plaintiffs Marks. No amount of money damages can adequately
compensate Plaintiff if it suffers damage to its reputation and associated goodwill through the
false and unauthorized use by Defendants of its marks containing substantially all of Plaintiffs
Marks.
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COUNT IV
TRADEMARK INFRINGEMENT UNDER N.Y. GEN. BUS. LAW 360, et seq.
78.
79.
Defendants use of the MACS N MELTS Marks as described herein constitutes
trademark infringement under New York common and/or statutory law N.Y. Gen. Bus. Law.
360-k and 360-o.
80.
Upon information and belief, Defendants acts were done with knowledge of their
violations of law and/or done in bad faith or done under circumstances where treble damages and
attorneys fees should be awarded to Plaintiff.
81.
damages, Defendants profits, enhanced damages and profits, treble damages, reasonable
attorneys fees, and any other remedy provide under N.Y. Gen. Bus. Law 360-m and costs of
the action together with prejudgment and post-judgment interest.
82.
COUNT V
INJURY TO BUSINESS REPUTATION AND UNFAIR COMPETITION UNDER N.Y.
GEN. BUS. 360-L
83.
84.
By making unauthorized use in commerce of substantially all of Plaintiffs Marks on
similar or identical goods and services, Defendants unauthorized use of the MACS N MELTS
Marks to identify Defendants services is likely to cause confusion, mistake, or deception as to
the affiliation or connection of Defendants with Plaintiff and as to the sponsorship or approval of
Defendants goods or services by Plaintiff.
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85.
Defendants distributing, marketing, advertising, offering for sale and selling of its goods
and services under the MACS N MELTS Marks trademark causes confusion and mistake,
deceives and misleads the purchasing public, trades upon Plaintiffs high quality reputation, and
improperly appropriates to Defendants the valuable goodwill of Plaintiff.
86.
The aforesaid conduct by Defendants constitutes a likelihood of injury to the business
reputation of Plaintiff in violation of N.Y. Gen. Bus. Law. 360-l.
87.
Plaintiff has been damaged by Defendants acts complained of in an amount to be
determined at trial, and if Defendants conduct is allowed to continue and is not enjoined,
Plaintiff and his goodwill and reputation will continue to suffer immediate, substantial, ongoing
and irreparable injury that cannot be adequately calculated and compensated in monetary
damages.
88.
COUNT VI
COMMON LAW TRADEMARK INFRINGMENT AND UNFAIR COMPETITION
89.
90.
In addition to the federal registrations owned by Plaintiff for Plaintiffs Marks, Plaintiff
owns and uses Plaintiffs Marks and enjoys common law rights in the State of New York and
throughout the United States. Defendants activities as stated herein constitute unfair competition
and trademark infringement of Plaintiffs common law trademark rights in Plaintiffs Marks
within the State of New York and in violation of New York law.
91.
Defendants conduct alleged herein is causing immediate and irreparable harm and injury
to Plaintiff, and to its goodwill and reputation, and will continue to both damage Plaintiff and
confuse the public unless enjoined by this Court. Plaintiff has no adequate remedy at law.
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92.
damages, Defendants profits, enhanced damages and profits, if applicable, reasonable attorneys
fees, if applicable, and costs of the action together with prejudgment and post-judgment interest.
DEMAND FOR RELIEF

WHEREFORE, Plaintiff respectfully prays that this Court:
1. Order a permanent and preliminary injunction enjoining Defendants, their agents,
employees, representatives, attorneys, successors, assigns and contractors, and all persons,
firms or entities acting under their direction, authority and/or control, and all persons
acting directly or indirectly in concert or participation with any of them from:
a. Using, in commerce, the trademark MAC & MELTS, MACS N MELTS, or any
other designation confusingly or deceptively similar thereto, in connection with the

distribution, display, sale, promotion, copying, license, or other use of any goods or
services;
b. Engaging in unfair competition with regard to Plaintiffs Marks and Plaintiffs MAC
& MELTS trademark.
2. Order an award in an amount to be determined at trial of any actual damages and all profits
and damages to Plaintiff pursuant to Defendants infringement of Plaintiffs Marks and
Plaintiffs MAC & MELTS trademarks.
3. Order an award of attorneys fees and costs as provided by Section 35 of the Lanham Act,
15 U.S.C. 1117.
21
4. Order an award of treble damages, pursuant to Section 35 of the Lanham Act, 15 U.S.C.
1117 and N.Y. Gen. Bus. Law 360m;
5. Order an award of attorney's fees and costs as provided by Section 35 of the Lanham Act,
15 U.S.C. 1117 and N.Y. Gen. Bus. Law 360m.
6. Grant such other or further relief as the Court deems just and proper.
DEMAND FOR JURY TRIAL
Plaintiff, requests a trial by jury in the above captioned matter, as provided by Rule 38 of
the Federal Rules of Civil Procedure.
Respectfully submitted,
W.R. SAMUELS LAW PLLC
Dated:New York, NY
March 17, 2016
By:;/a
William R. Samuels (WS8284)
280 Madison Avenue, Suite 600
New York, New York 10016
Telephone:212.206.9399
Facsimile: 917.522.9615
bill@wrsamuelslaw.com
Attorney for Plaintiff
Cheddar Bob's, Inc.
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Case 2:16-cv-01331-LDW-AYS Document 1 Filed 03/17/16 Page 1 of 22 PageID #: 1

UNITED STATES DISTRICT COURT

CIVIL ACTION NO. 2:16-cv-1331

Case 2:16-cv-01331-LDW-AYS Document 1 Filed 03/17/16 Page 2 of 22 PageID #: 2

In so doing, Plaintiffs have been grievously injured by Defendants infringements, as they

Case 2:16-cv-01331-LDW-AYS Document 1 Filed 03/17/16 Page 3 of 22 PageID #: 3

Upon information and belief, Defendant Macsnmelts Management Company LLC.

Upon information and belief, Defendant Macsnmelts 1, LLC (Macsnmelts 1) is an

Upon information and belief, Defendant Macsnmelts 2, LLC (Macsnmelts 2) is an

Upon information and belief, Defendant Robert Croak (Croak) is an individual

Case 2:16-cv-01331-LDW-AYS Document 1 Filed 03/17/16 Page 4 of 22 PageID #: 4

Defendants Macsnmelts, Macsnmelts 1, Macsnmelts 2, and Croak are collectively

referred to as MMC or Defendants.

Case 2:16-cv-01331-LDW-AYS Document 1 Filed 03/17/16 Page 5 of 22 PageID #: 5

under Article III of the United States Constitution.

Case 2:16-cv-01331-LDW-AYS Document 1 Filed 03/17/16 Page 6 of 22 PageID #: 6

least as early as October 2012, in connection with restaurant services.

MELTS Mark in the ordinary course of trade.

Case 2:16-cv-01331-LDW-AYS Document 1 Filed 03/17/16 Page 7 of 22 PageID #: 7

subsisting, uncancelled, and unrevoked.

As a result of Plaintiffs widespread, continuous and exclusive use of Plaintiffs Marks to

Defendants Infringement of Plaintiffs Marks

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a sophisticated individual understanding the importance of branding, trademark usage, and

services provided under the MACS N MELTS Marks.

focusing on fast comfort casual food.

permission, express or implied, to use any of Plaintiffs Marks.

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used in tandem with restaurant services.

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MELTS Marks in conjunction with its restaurant services.

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without any substantive response from MMC.

are still in use by Defendants.

Plaintiff repeats and realleges all prior allegations.

MELTS Mark and the 669 Mark.

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restaurant services since at least as early as October 2012.

public recognition in New York and elsewhere.

Based on Plaintiffs use, publishing, advertising, marketing, and popularity of Plaintiffs

Marks in appearance, sound, and evoke similar or identical connotations.

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Defendants intentional misuse of the statutory notice of federal registration further

including MACS N MELTS, is similar to or identical in appearance to Plaintiffs Marks as

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Plaintiff repeats and realleges all prior allegations.

MELTS Mark and the 669 Mark.

services since at least as early as October 2012.

public recognition in New York and elsewhere.

Based on Plaintiffs use, publishing, advertising, marketing and popularity of Plaintiffs

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Plaintiff repeats and realleges all prior allegations.

Plaintiff repeats and realleges all prior allegations.

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the source, sponsorship, affiliation, connection, association or approval of Defendants by or with

Plaintiff has been damaged by Defendants acts complained of in an amount to be

Defendants materially misleading practice of using the MACS N MELTS Marks to

Plaintiff is entitled to monetary damages in an amount to be proven at trial and injunctive

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Plaintiff repeats and realleges all prior allegations.