Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1069582 Filing date: 07/21/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding No. 91249003 Filing Party Defendant Société des Produits Nestlé S.A. Other Party Plaintiff The a2 Milk Company Limited Pending Motion Yes, there is a motion currently pending or another motion is being filed concur- rent with this consent motion. Attachments Joint Motion to Suspend.pdf(161080 bytes ) Complaint Braum A2MC USA.pdf(420099 bytes ) Braums v A2MC - Answer.pdf(1883776 bytes )
Consent Motion for Suspension in View of Civil Proceeding
The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Société des Produits Nestlé S.A. hereby requests suspension of this proceeding pending a final determ- ination of the civil action. Trademark Rule 2.117. Société des Produits Nestlé S.A. has secured the express consent of all other parties to this proceeding for the suspension requested herein. Certificate of Service
The undersigned hereby certifies that a copy of this filing has been served upon all parties, at their address of record by Email on this date. Respectfully submitted, /Amy J. Tindell/ Amy J. Tindell [email protected], [email protected], [email protected] 07/21/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
The a2 Milk Company Limited, Opposition No.: 91249003
Opposer-Counterclaim Defendant, Applicant-Counterclaim Plaintiff Mark: v.
Société des Produits Nestlé S.A, Applicant-Counterclaim Plaintiff Serial No.: 88176317 Applicant-Counterclaim Plaintiff. Opposer-Counterclaim Defendant Marks: A2 MILK TRUE A2
Opposer-Counterclaim Defendant Reg. Nos.: 3464046, 5311685, 5388849
Société des Produits Nestlé S.A, Opposition No.: 91251140
Opposer, Mark: ATWO v. Serial No: 88127337 The a2 Milk Company Limited,
Applicant.
Société des Produits Nestlé S.A., Opposition No.: 91254891
Opposer, Mark: A2 TRUE v. Serial No: 87799301 The a2 Milk Company Limited,
Applicant.
JOINT MOTION TO SUSPEND PENDING CIVIL LITIGATION
Pursuant to C.F.R. § 2.117(a) and TMBP § 510.02, Société des Produits Nestlé S.A.,
Applicant and Counterclaim Plaintiff in Opp. No. 91249003 and Opposer in Opp. Nos.
91251140 and 91254891 (“Nestlé”), and The a2 Milk Company Limited, Opposer and
Counterclaim Defendant in Opp. No. 91249003 and Applicant in Opp. Nos. 91251140 and
91254891 (“a2MC”), move to first consolidate (see 15 TTABVUE in Proceeding No. 91249003) and then to suspend Opposition Proceeding Nos. 91249003, 91251140, and 91254891 (the
“Proceedings”) pending the final determination of civil litigation which may have a bearing on the issues before the Board in the Proceedings.
I. Consolidation
The parties filed a joint motion to consolidate the Proceedings on May 27, 2020, in which
the parties reviewed the relevant procedural history in the Proceedings to date. 15 TTABVUE.
The parties hereby incorporate their joint motion by reference and renew their request for
consolidation.
II. Suspension
The parties additionally request that the consolidated Proceedings be suspended pending
the outcome of a civil litigation, namely, Braum’s, Inc. v. The A2 Milk Company Limited, Case
No. 5:20-cv-00466-HE, filed in the United States District Court in the Western District of
Oklahoma (the “Litigation”). The relevant pleadings are attached with this Motion.
A. Background of Civil Litigation
The plaintiff and counterclaim defendant in the Litigation, third party Braum’s Inc.
(“Braum’s”), is headquartered in Oklahoma City and offers retail and restaurant services, selling
2
a variety of cooked food in addition to pre-packaged dairy products, including “numerous
varieties of A2 milk,” according to allegations in its complaint (Complaint at ¶¶ 8, 28).
The Complaint filed by Braum’s in the Litigation requests the following relief:
• a declaratory judgment of genericness and/or descriptiveness of the “A2” and “A2
Milk” designations (Complaint at ¶¶ 37-46);
• a declaratory judgment that Braum’s use of the designation of “A2” and/or “A2
Milk” does not infringe any rights a2MC may hold in the “A2” and “A2 Milk”
designations (Complaint at ¶¶ 47-57);
• a declaratory judgment that Braum’s use of the designation of “A2” and/or “A2
Milk” constitutes fair use (Complaint at ¶¶ 58-66); and
• cancellation of a2MC’s Reg. No. 3464046 for A2 MILK (Complaint at ¶¶ 67-77).
a2MC filed an answer denying Braum’s allegations and asserting that “A2” and “A2
MILK” are not descriptive or generic, but instead serve as source identifiers for a2MC and its
dairy products, and further alleging that a2MC has established secondary meaning in connection
with its marks and that its “a2” and “a2 Milk” trademarks are valid and enforceable. a2MC
additionally filed counterclaims for trademark infringement (15 U.S.C. § 1114), false designation
of origin (15 U.S.C. § 1125(a)), and common law unfair competition based on Braum’s use of
the “A2” and “A2 Milk” designations, in addition to copyright infringement (17 U.S.C. § 101, et
seq.) based on Braum’s use of an infographic.
B. Impact on Proceedings
The parties respectfully submit that suspension of the Proceedings will promote consistency and economy because there are some common claims in the Litigation and the
Proceedings. See TBMP 510.02(a); see also Other Telephone Co. v. Connecticut National
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Telephone Co., 181 U.S.P.Q. 125, 126-27 (TTAB 1974) (decision in civil action for infringement and unfair competition would have bearing on outcome proceeding). Final determination of the relief requested by Braum’s in the Litigation may have a bearing on certain issues before the
Board in the Proceedings. See Softbelly’s Inc. v. Ty, Inc., Opp. No. 71, 2002, WL 1844210, at *3
(TTAB 2002) (“Because we determine that the civil action … will directly affect the resolution of the issue of genericness in this case, it would be appropriate to suspend the Board proceedings in this case.”). Although the outcome of the Litigation may not be dispositive of all issues disputed in the Proceedings, this is not required to warrant suspension. See New Orleans
Louisiana Saints LLC v. Who Dat? Inc., 99 U.S.P.Q.2d 1550, 1552 (TTAB 2011) (suspending
TTAB proceedings and stating “the civil action does not have to be dispositive of the Board proceeding to warrant suspension, it need only have a bearing on the issues before the Board”).
The Proceedings are in early stages and the Parties are in agreement to suspend the
Proceedings; therefore, neither party will be prejudiced or inconvenienced. To the contrary, suspension would result in savings of time, effort and expense, as well as judicial economy, and will benefit both Parties. As a result, suspension is appropriate.
IV. Conclusion
Accordingly, the Parties respectfully request that the Board consolidate the Proceedings
and then suspend the Proceedings pending the outcome of the Litigation.
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Dated: July 21, 2020
Respectfully submitted,
/s/ Amy C. Ziegler /s/ Amy J. Tindell Amy C. Ziegler Nadya C. Davis Greer Burns & Crain Ltd. Amy J. Tindell 300 South Wacker Drive, Suite 2500 Catherine C. Miller Chicago, Il 60606 Holland & Hart, LLP [email protected], 1800 Broadway, Suite 300 [email protected] Boulder, Colorado 80302-5234 [email protected] [email protected] Phone: 312-360-0080 [email protected] [email protected] Attorneys for [email protected] The a2 Milk Company Ltd. Phone: (303) 473-2715 Fax: (303) 557-6173
Attorneys for Société des Produits Nestlé S.A.
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CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing Joint Motion to Suspend has been served on July 21, 2020 via electronic mail, as agreed between the parties, to the following: [email protected] [email protected] [email protected]
/s/ Amy Tindell Amy Tindell
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Case 5:20-cv-00466-HE Document 1 Filed 05/19/20 Pag e 1 of 17
UNITED STATES DISTRICT COURT WESTERN DISTRICT OF OKLAHOMA
BRAUM’S, INC.,
Plaintiff,
vs. Case No. The A2 MILK COMPANY LIMITED,
Defendant.
COMPLAINT
Plaintiff Braum’s, Inc. (“Braum’s”), for its Complaint against Defendant The a2
Milk Corporation Limited (“a2MC”), alleges and states as follows:
NATURE OF THE ACTION
1. This is an action for certain declaratory judgment and other relief brought
under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202.
PARTIES
2. Braum’s is a corporation organized and existing under the laws of
Oklahoma, and has its headquarters and principal place of business in Oklahoma City,
Oklahoma.
3. On information and belief, a2MC is a limited liability company organized
and existing under the laws of New Zealand, and has its headquarters and principal place
of business in Auckland, New Zealand. On information and belief, a2MC’s North
America operations are based in Boulder, Colorado.
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JURISDICTION AND VENUE
4. This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201
et seq., and under the trademark laws of the United States, Title 15 of the United States
Code. This Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121 as well
as 28 U.S.C. §§ 1331, 1338, and 2201-2202.
5. As set forth below, this Court has personal jurisdiction over a2MC by
virtue of the business activities it conducts within the State of Oklahoma and within this
District, as well as by a2MC’s threats of litigation against Braum’s, resulting in sufficient
minimum contacts with this forum.
6. Venue is proper in this District under 28 U.S.C. §§ 1391 because a
substantial part of the events giving rise to the claims at issue occurred in this District
and/or because a2MC is subject to personal jurisdiction in this action.
PERTINENT FACTUAL BACKGROUND
The History of Braum’s
7. For over fifty (50) years, Braum’s and its predecessors-in-interest have
offered retail store and restaurant services in association with the name and mark
BRAUM’S (the “BRAUM’S Mark”).
8. Since 1968, the Braum’s organization has operated a chain of combination
quick serve restaurants, old fashion ice cream parlors and retail stores (“BRAUM’S Ice
Cream and Dairy Stores”) that serve a variety of cooked food (e.g., breakfast items,
hamburgers, french fries, ice cream and other food items) as well as pre-packaged dairy
products and other groceries (including ice cream and milk) (the “BRAUM’S Goods”).
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9. In 1968, William “Bill” Braum and his wife Mary opened the first
BRAUM’S Ice Cream and Dairy Store in Oklahoma City, Oklahoma.
10. Currently, there are over 280 BRAUM’S Ice Cream and Dairy Stores in
operation across the states of Oklahoma, Texas, Kansas, Arkansas and Missouri. The
Braum’s organization plans to open additional BRAUM ’S Ice Cream and Dairy Stores
and expand its market territory in the future.
11. BRAUM’S Goods are only sold through BRAUM’S Ice Cream and Dairy
Stores.
12. In order to assure that the quality of the milk and other dairy products
served and sold at BRAUM’S Ice Cream and Dairy Stores in association with the
BRAUM’S Mark remains very high, the Braum’s organization established the practice of
“vertical integration” in association with its operation.
13. The Braum’s organization manufactures its own ice cream, milk and other
dairy products and raises the cattle that serve as the source of the dairy products.
14. Braum’s has two dairy herds, one located at Follett, Texas and another in
Tuttle, Oklahoma, and is one of the largest private milking operations in the world.
15. For decades, Braum’s (either itself or through its predecessors-in-interest or
affiliates) has used the distinctive trademark BRAU M’S as a brand name for, inter alia, a
wide-array of dairy products, including milk, ice cream, yogurt, and cottage cheese.
16. The BRAUM’S Mark is used on point of purchase signs and displays at all
BRAUM’S Ice Cream and Dairy Stores and on the packaging for dairy products and
other goods sold through BRAUM’S Ice Cream and Dairy Stores.
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17. Images representing such aforementioned use are depicted below:
18. The Braum’s organization has gone to great lengths to make sure that the
high quality associated with the BRAUM’S Services and the BRAUM’S Goods is always
maintained. As a result, and because of the extensive and widespread use and advertising
of the BRAUM’S Mark for five decades, a very high level of goodwill and an excellent
reputation is associated with the BRAUM’S Mark. Multiple federal trademark
registrations are directed to the BRAUM’S Mark, including U.S. Reg. No. 1,428,618 and
U.S. Reg. No. 2,337,490.
A2 Milk
19. Casein and whey are two major protein groups that are present in cow’s
milk. There are two forms of casein groups in cow’s milk: A1 and A2 casein protein
(hereinafter respectively referred to as “A1” and “A2”).
20. Cattle produce milk with A1 and/or A2 depending on their genetic
makeup.
21. Milk from many common breeds of dairy cattle is a mixture of A1 and A2.
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22. Cows with only A2 genes produce milk with only A2 protein (“A2 milk”).
23. Milk from animals other than cows (such as sheep and goats) may also
contain only A2 protein which may also be referred to as “A2 milk.”
24. Upon information and belief, A2 milk and other dairy products comprised
of A2 milk are manufactured, sold and/or offered for sale by numerous companies
throughout the world, including but not limited to, the following: Alexandre Family
Farm, Snowville Creamery, Millhorn Farmstead, Buckeye Country Creamery,
Richardson Farms, Miller’s Biodiversity Farm, Ratnawali Dairy Products, Gerber
Products Company, Nestle, Wyeth Nutrition, Meade Johnson, Nutricia, mMilk, Kin
Dairy, Vinamilk, Provilac, The Organic Carbon, Brantwood Farms, Veedaz Organics,
Reva Milk, Sheldon Creek Dairy, Freedom Foods, Aamro Dairies, and Moolrasa.
A2 Milk and Braum’s
25. In approximately 2008, Braum’s began to develop a herd of cows that
produces A2 milk.
26. Today, the Braum’s Family Farm is proud to be home to the largest A2
dairy herd in the United States.
27. With an established A2 herd of cattle, Braum’s is now producing its own
exclusive line of A2 milk sold only at Braum’s stores.
28. Braum’s offers numerous varieties of A2 milk, including chocolate, fat
free and whole A2 milk, all of which are offered and sold under the BRAUM’S Mark and
only at BRAUM’S Ice Cream and Dairy Stores.
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29. Images of A2 milk sold under the BRAUM’S Mark are depicted below:
a2MC and its Assertions of Infringement
30. a2MC is the successor of A2 Corporation Limited, a New Zealand
company founded in 2000.
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31. a2MC and/or its licensees manufacture, market or sell dairy products under
the name “The a2 Milk Company” and the logo show below:
32. According to a2MC, its milk products consist of A2 milk.
33. On or about May 7, 2020, the Chief Executive Officer of a2MC’s domestic
operations, Blake T. Waltrip, sent correspondence on behalf of a2MC to Drew Braum,
the Chief Executive Officer of Braum’s. A true and correct copy of that letter, which is
incorporated herein by reference, is attached as Exhibit 1 (the “a2MC Demand Letter”).
34. In the a2MC Demand Letter, Mr. Waltrip asserted the following:
a. a2MC has exclusive trademark rights in and to the designations “a2”
and “a2 Milk,” and Braum’s use of the designations “A2” and “A2
Milk” violates the same;
b. Braum’s use of the tagline “The A2 Difference” violates a2MC’s
purported rights in and to the tagline “Feel the a2 Milk difference”;
and
c. Braum’s use of a circle design in connection with the designation
“A2 Milk,” as depicted in paragraph 29, violates a2MC’s purported
rights in the designation depicted in paragraph 31.
7 26278250_1.doc Case 5:20-cv-00466-HE Document 1 Filed 05/19/20 Pag e 8 of 17
35. In the a2MC Demand, Mr. Waltrip demands that Braum’s perform the
following actions:
a. “Immediately remove all trademark references to ‘A2 Milk’.....or
any similar marks[] from [Braum’s] websites (including
www.Braum’s.com), social media pages, advertising and marketing
materials, including replacing or deleting images or photographs of
products bearing the ‘A2 milk’ mark”;
b. “Immediately change all labels for products manufactured after
receipt of this letter to remove all use of the trademarks ‘A2
Milk’...”;
c. “Complete the sell through of all products bearing the previous
product labels within 4 weeks or, if sell through is not completed
within this period, over-sticker the non-compliant labels”; and
d. “Not to use, or allow any of Braum’s agents, distributors or partners
to use or seek to register as a trademark, ‘A2 milk’. or any similar
mark in the future in relation to its products, website, social media or
advertising.”
36. Braum’s disputes a2MC’s allegations. The designations “A2” and “A2
Milk” are generic terms, or at best highly descriptive and non-distinctive with respect to
A2 Milk. As a result, Braum’s use of the designations “A2” and “A2 Milk” cannot, has
not and does not infringe any legitimate trademarks owned by a2MC under the Lanham
Act, state statutes or at common law.
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COUNT I
(Declaratory Judgment of Genericness and/or Descriptiveness)
37. Braum’s re-alleges and incorporates by reference each and every allegation
set forth in the preceding paragraphs as though alleged in full herein.
38. Upon information and belief, the primary significance to the relevant public
of the designations “A2” and “A2 Milk” with respect to milk and other dairy products is
as a specific class or category of milk or other dairy products. The designations “A2”
and “A2 Milk” cannot and do not serve to indicate source are therefore not trademarks.
39. a2MC has demanded that Braum’s cease and desist use of “A2” and “A2
Milk” in connection with Braum’s dairy products.
40. a2MC has claimed that “a2” and “a2 Milk” are protectable trademarks
owned by a2MC, and that Braum’s use of “A2” and “A2 Milk” infringe the same as well
as other marks purportedly owned by a2MC that include the “a2” designation.
41. Braum’s disputes a2MC’s allegations.
42. Braum’s contends that the designations “A2” and “A2 Milk” are generic
when used in connection with milk and other dairy products and/or are so highly
descriptive that they cannot and do not indicate a source of goods or services. a2MC has
not established a secondary meaning in connection w ith the “A2” and “A2 Milk”
designations.
43. a2MC’s allegations of trademark infringement place a cloud over Braum’s
ongoing investment in its A2 milk products and marketing thereof to consumers and may
cause uncertainty among others in the marketplace, leading Braum’s to lose revenues
9 26278250_1.doc Case 5:20-cv-00466-HE Document 1 Filed 05/19/20 Pag e 10 of 17
and/or business opportunities.
44. Braum’s is entitled to promote and sell its A2 milk products using the
designations “A2” and “A2 Milk” in order to describe the nature of the milk to
consumers without the ongoing threat of litigation by a2MC.
45. As a result of the acts and contentions described in the foregoing
paragraphs, an actual and justiciable controversy exists between Braum’s and a2MC and
a judicial declaration is necessary and appropriate so that Braum’s may ascertain its
rights.
46. Wherefore, Braum’s prays for the following relief:
a. an Order by the Court declaring that the designations “A2” and “A2
Milk” are generic when used in connection with milk and other dairy
products, or, alternatively, are so highly descriptive that they are not
protectable as trademarks when used to describe A2 milk and other
dairy products;
b. an Order by the Court declaring that, because of the generic and/or
highly descriptive nature of “A2” and “A2 Milk,” use of “A2” or
“A2 Milk” by Braum’s cannot, has not and does not infringe any
legitimate trademarks or service marks owned, licensed or used by
a2MC, whether under the Lanham Act, state statutes or at common
law; and
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c. an Order by the Court declaring that Braum’s may continue to use
the designations “A2” and “A2 Milk” as set forth herein without
infringing any legitimate trademarks or service marks owned,
licensed or used by a2MC, whether under the Lanham Act, state
statutes or at common law.
COUNT II (Declaratory Judgment of Non-infringement)
47. Braum’s re-alleges and incorporates by reference each and every allegation
set forth in the preceding paragraphs as though alleged in full herein.
48. a2MC has demanded that Braum’s cease and desist use of the designations
“A2” and “A2 Milk” in connection with Braum’s dairy products.
49. a2MC has claimed “a2” and “a2 Milk” are protectable trademarks owned
by a2MC, and that Braum’s use of designations described in the a2MC Demand Letter,
including the designations “A2” and “A2 Milk,” infringe the same as well as other marks
purportedly owned by a2MC that include the “a2” designation.
50. Braum’s disputes a2MC’s allegations.
51. Braum’s contends that the designations “A2” and “A2 Milk” are not
protectable trademarks and Braum’s has not and does not infringe, either directly or
indirectly, any legitimate trademark rights of a2MC.
52. Braum’s contends that the use of designations complained of by a2MC, and
the manner by which Braum’s uses “A2” and “A2 Milk,” is not likely to cause confusion
among the parties or their respective goods or services or otherwise violate any legitimate
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trademarks or service marks purportedly owned by a2MC.
53. For example, use of the designations “A2” and “A2 Milk” by Braum’s is in
close association with the BRAUM’S Mark and on goods sold in BRAUM’S Dairy and
Ice Cream Stores. As a result, upon information and belief, consumers that encounter
Braum’s use of the designations “A2” and “A2 Milk” are not likely to be confused as to
whether they emanate from, or are otherwise affiliated with, or sponsored by, or are
somehow associated with a2MC, its licensees or its products.
54. a2MC’s allegations of trademark infringement place a cloud over Braum’s
ongoing investment in its A2 milk products and marketing thereof to consumers and may
cause uncertainty among others in the marketplace, leading Braum’s to lose revenues
and/or business opportunities.
55. Braum’s is entitled to promote and sell its A2 milk products using the
designations “A2” and “A2 Milk” in order to describe the nature of the milk to
consumers without the ongoing threat of litigation by a2MC.
56. As a result of the acts and contentions described in the foregoing
paragraphs, an actual and justiciable controversy exists between Braum’s and a2MC and
a judicial declaration is necessary and appropriate so that Braum’s may ascertain its
rights.
57. Wherefore, Braum’s prays for the following relief:
a. an Order by the Court declaring that use by Braum’s of the
designation “A2” and/or “A2 Milk” has not and does not infringe
any legitimate trademarks or service marks owned, licensed or used
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by a2MC, whether under the Lanham Act, state statutes or at
common law;
b. an Order by the Court declaring that use of the designation “The A2
Difference” by Braum’s has not and does not infringe any legitimate
trademarks or service marks owned, licensed or used by a2MC,
whether under the Lanham Act, state statutes or at common law;
c. an Order by the Court declaring that Braum’s use of a circle design
in connection with the designation “A2 Milk,” as depicted in
paragraph 29, has not and does not infringe any legitimate
trademarks or service marks owned, licensed or used by a2MC,
whether under the Lanham Act, state statutes or at common law; and
d. an Order by the Court declaring that Braum’s may continue to use
the designations complained of in the a2MC Demand, including but
not limited to the designations “A2” and “A2 Milk,” without
infringing any legitimate trademarks or service marks owned,
licensed or used by a2MC, whether under the Lanham Act, state
statutes or at common law.
COUNT III (Declaratory Judgment of Fair Use)
58. Braum’s re-alleges and incorporates by reference each and every allegation
set forth in the preceding paragraphs as though alleged in full herein.
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59. Braum’s has used the designations “A2” and “A2 Milk,” and other
designations that employ “A2” and “A2 Milk,” to describe its A2 milk products in good
faith and not as a trademark or service mark.
60. a2MC has claimed “a2” and “a2 Milk” are protectable trademarks owned
by a2MC, and that Braum’s use of designations described in the a2MC Demand,
including the designations “A2” and “A2 Milk,” infringe the same as well as other marks
purportedly owned by a2MC that include the “a2” designation.
61. Braum’s disputes a2MC’s allegations.
62. Braum’s contends that the use of designations complained of by a2MC, and
the manner by which Braum’s uses “A2” and “A2 Milk,” constitutes fair use. For
example, there is no other practical way to describe the nature of the milk on a milk
container.
63. a2MC’s allegations of trademark infringement place a cloud over Braum’s
ongoing investment in its A2 milk products and marketing thereof to consumers and may
cause uncertainty among others in the marketplace, leading Braum’s to lose revenues
and/or business opportunities.
64. Braum’s is entitled to promote and sell its A2 milk products using the
designations “A2” and “A2 Milk” in order to describe the nature of the milk to
consumers without the ongoing threat of litigation by a2MC.
65. As a result of the acts and contentions described in the foregoing
paragraphs, an actual and justiciable controversy exists between the parties and a judicial
declaration is necessary and appropriate so that Braum’s may ascertain its rights.
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66. Wherefore, Braum’s prays for the following relief:
a. an Order by the Court declaring that use of the designations “A2”
and “A2 Milk” by Braum’s as described herein constitutes fair use
and has not and does not infringe any legitimate trademarks or
service marks owned, licensed or used by a2MC, whether under the
Lanham Act, state statutes or at common law; and
b. an Order by the Court declaring that Braum’s may continue to use
the designations “A2” and “A2 Milk” as described herein without
infringing any legitimate trademarks or service marks owned,
licensed or used by a2MC, whether under the Lanham Act, state
statutes or at common law.
COUNT IV (Cancellation of U.S. Trademark Reg. No. 3,464,046)
67. Braum’s re-alleges and incorporates by reference each and every allegation
set forth in the preceding paragraphs as though alleged in full herein.
68. a2MC has demanded that Braum’s cease and desist use of “A2” and “A2
Milk” in connection with Braum’s dairy products.
69. a2MC has claimed that “a2” and “a2 Milk” are protectable trademarks
owned by a2MC, and that Braum’s use of “A2” and “A2 Milk” infringe the same as well
as other marks purportedly owned by a2MC that include the “a2” designation.
70. a2MC is the purported owner of U.S. Trademark Reg. No. 3,464,046,
which is directed to “A2 MILK” in connection with “milk.”
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71. Braum’s disputes a2MC’s allegations and the validity of U.S. Trademark
Reg. No. 3,464,046.
72. Braum’s contends that the designations “A2” and “A2 Milk” are generic
when used in connection with milk and other dairy products and/or are so highly
descriptive that they cannot and do not indicate a source of goods or services. a2MC has
not established a secondary meaning in connection w ith the “A2” and “A2 Milk”
designations.
73. Braum’s contends that U.S. Trademark Reg. No. 3,464,046 is invalid and
unenforceable in view of the fact that the designation “A2 MILK” is generic and/or non
distinctive with respect to milk.
74. a2MC’s allegations of trademark infringement place a cloud over Braum’s
ongoing investment in its A2 milk products and marketing thereof to consumers and may
cause uncertainty among others in the marketplace, leading Braum’s to lose revenues
and/or business opportunities.
75. Braum’s is entitled to promote and sell its A2 milk products using the
designations “A2” and “A2 Milk” in order to describe the nature of the milk to
consumers without the ongoing threat of litigation by a2MC.
76. As a result of the acts and contentions described in the foregoing
paragraphs, an actual and justiciable controversy exists between Braum’s and a2MC and
a judicial declaration is necessary and appropriate so that Braum’s may ascertain its
rights.
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77. Wherefore, Braum’s prays for an Order by the Court declaring that a2MC’s
U.S. Trademark Reg. No. 3,464,046 is invalid and unenforceable, and directing the U.S.
Patent and Trademark Office to cancel the same.
PRAYER FOR RELIEF
WHEREFORE, Braum’s respectfully requests that judgm ent be entered in
its favor and prays that the court grant the relief requested above as well as such other and
further relief as this Court may deem just and proper.
DEMAND FOR JURY TRIAL
Pursuant to Federal Rule of Civil Procedure 38(b), Braum’s respectfully
requests a jury trial on all issues triable thereby.
Respectfully submitted,
/s/ Clifford C. Dougherty, III______Clifford C. Dougherty, III, OBA # 11290 Zachary A.P. Oubre, OBA # 30666 McAfee & Taft A Professional Corporation Tenth Floor, Two Leadership Square 211 North Robinson Oklahoma City, Oklahoma 73102 - 7103 Telephone: (405) 235-9621 Facsimile: (405) 235-0439 Email: [email protected] Email: [email protected]
ATTORNEYS FOR BRAUM’S, INC.
17 26278250_1.doc Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 1 of 48
UNITED STATES DISTRICT COURT WESTERN DISTRICT OF OKLAHOMA
BRAUM’S, INC.,
Plaintiff,
vs. Case No. 5:20-cv-00466-HE THE A2 MILK COMPANY LIMITED,
Defendant.
THE A2 MILK COMPANY LIMITED, THE A2 MILK COMPANY,
Counterclaim Plaintiffs,
vs.
BRAUM’S, INC.,
Counterclaim Defendant.
ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS
Defendant The a2 Milk Company Limited (“a2MC”) submits its Answer to
Plaintiff Braum’s Inc.’s (“Plaintiff” or “Braum’s”) Complaint filed on May 19, 2020. a2MC’s reproduction herein of any material set forth in Braum’s Complaint is solely for the purpose of convenience and is not, and should not, be construed as an admission by a2MC that any allegations or other statements in the Complaint, whether explicit or implied, are true, correct, or admitted by a2MC. All allegations in Braum’s Complaint that a2MC does not expressly admit or deny, below, are hereby denied. Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 2 of 48
NATURE OF THE ACTION
1. This is an action for certain declaratory judgment and other relief brought under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202.
ANSWER:
a2MC admits that Braum’s purports to bring an action for declaratory judgment
and other relief brought “under the Federal Declaratory Judgment Act, 28 U.S.C. §§
2201-2202.” a2MC denies any remaining allegations in Paragraph 1.
PARTIES
2. Braum’s is a corporation organized and existing under the laws of Oklahoma, and has its headquarters and principal place of business in Oklahoma City, Oklahoma.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 2 and on that basis denies them.
3. On information and belief, a2MC is a limited liability company organized and existing under the laws of New Zealand, and has its headquarters and principal place of business in Auckland, New Zealand. On information and belief, a2MC’s North America operations are based in Boulder, Colorado.
ANSWER:
a2MC admits that it is a limited company organized and existing under the laws of
New Zealand, and has principal places of business in Auckland, New Zealand and
Sydney, Australia, and a2MC’s North America operations are located at 2995 Wilderness
Place, Suite 110, Boulder, Colorado 80301.
JURISDICTION AND VENUE
4. This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., and under the trademark laws of the United States, Title 15 of the United States
2 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 3 of 48
Code. This Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121 as well as 28 U.S.C. §§ 1331, 1338, and 2201-2202.
ANSWER:
a2MC admits that Braum’s purports to bring an action for declaratory judgment
“under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., and under the trademark
laws of the United States, Title 15 of the United States Code.” a2MC further admits that
this Court “has jurisdiction over this action” for purposes of this case only, and a2MC
denies the merit and validity of any of Braum’s claims for which subject matter
jurisdiction may be had. a2MC denies any remaining allegations in Paragraph 4.
5. As set forth below, this Court has personal jurisdiction over a2MC by virtue of the business activities it conducts within the State of Oklahoma and within this District, as well as by a2MC’s threats of litigation against Braum’s, resulting in sufficient minimum contacts with this forum.
ANSWER:
The statements in Paragraph 5 are conclusions of law, rather than statements of
fact, to which no response is required. To the extent that a response is required, a2MC
does not contest that, for purposes of this case only, that this Court has personal
jurisdiction over it, but a2MC denies the merit and validity of any of Braum’s claims for
which personal jurisdiction may be had or on which personal jurisdiction may be based.
a2MC denies any remaining allegations in Paragraph 5.
6. Venue is proper in this District under 28 U.S.C. §§ 1391 because a substantial part of the events giving rise to the claims at issue occurred in this District and/or because a2MC is subject to personal jurisdiction in this action.
3 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 4 of 48
ANSWER:
a2MC admits that venue is proper in this District for purposes of this case only.
a2MC denies any remaining allegations in Paragraph 6.
PERTINENT FACTUAL BACKGROUND
THE HISTORY OF BRAUM’S
7. For over fifty (50) years, Braum’s and its predecessors-in-interest have offered retail store and restaurant services in association with the name and mark BRAUM’S (the “BRAUM’S Mark”).
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 7 and on that basis denies them.
8. Since 1968, the Braum’s organization has operated a chain of combination quick serve restaurants, old fashion ice cream parlors and retail stores (“BRAUM’S Ice Cream and Dairy Stores”) that serve a variety of cooked food (e.g., breakfast items, hamburgers, french fries, ice cream and other food items) as well as pre-packaged dairy products and other groceries (including ice cream and milk) (the “BRAUM’S Goods”).
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 8 and on that basis denies them.
9. In 1968, William “Bill” Braum and his wife Mary opened the first BRAUM’S Ice Cream and Dairy Store in Oklahoma City, Oklahoma.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 9 and on that basis denies them.
10. Currently, there are over 280 BRAUM’S Ice Cream and Dairy Stores in operation across the states of Oklahoma, Texas, Kansas, Arkansas and Missouri. The Braum’s organization plans to open additional BRAUM’S Ice Cream and Dairy Stores and expand its market territory in the future.
4 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 5 of 48
ANSWER:
a2MC is without knowledge or information sufficient to form a belief as to the
truth of the allegations in Paragraph 10 and, therefore, denies them.
11. BRAUM’S Goods are only sold through BRAUM’S Ice Cream and Dairy Stores.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 11 and on that basis denies them.
12. In order to assure that the quality of the milk and other dairy products served and sold at BRAUM’S Ice Cream and Dairy Stores in association with the BRAUM’S Mark remains very high, the Braum’s organization established the practice of “vertical integration” in association with its operation.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 12 and on that basis denies them.
13. The Braum’s organization manufactures its own ice cream, milk and other dairy products and raises the cattle that serve as the source of the dairy products.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 13 and on that basis denies them.
14. Braum’s has two dairy herds, one located at Follett, Texas and another in Tuttle, Oklahoma, and is one of the largest private milking operations in the world.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 14 and on that basis denies them.
5 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 6 of 48
15. For decades, Braum’s (either itself or through its predecessors-in-interest or affiliates) has used the distinctive trademark BRAUM’S as a brand name for, inter alia, a wide-array of dairy products, including milk, ice cream, yogurt, and cottage cheese.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 15 and on that basis denies them.
16. The BRAUM’S Mark is used on point of purchase signs and displays at all BRAUM’S Ice Cream and Dairy Stores and on the packaging for dairy products and other goods sold through BRAUM’S Ice Cream and Dairy Stores.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 16 and on that basis denies them.
17. Images representing such aforementioned use are depicted below:
ANSWER:
a2MC admits that the images shown in Paragraph 17 appear to be images of products sold by Braum’s and a Braum’s sign. a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 17 and on that basis denies them.
18. The Braum’s organization has gone to great lengths to make sure that the high quality associated with the BRAUM’S Services and the BRAUM’S Goods is always
6 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 7 of 48
maintained. As a result, and because of the extensive and widespread use and advertising of the BRAUM’S Mark for five decades, a very high level of goodwill and an excellent reputation is associated with the BRAUM’S Mark. Multiple federal trademark registrations are directed to the BRAUM’S Mark, including U.S. Reg. No. 1,428,618 and U.S. Reg. No. 2,337,490.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 18 and on that basis denies them.
A2 MILK
19. Casein and whey are two major protein groups that are present in cow’s milk. There are two forms of casein groups in cow’s milk: A1 and A2 casein protein (hereinafter respectively referred to as “A1” and “A2”).
ANSWER:
a2MC admits that casein and whey are two types of protein present in cow’s milk.
a2MC further admits that there are multiple types of beta-casein proteins that may be
present in milk, including but not limited to A1 beta-casein and A2 beta-casein. a2MC denies any remaining allegations in Paragraph 19.
20. Cattle produce milk with A1 and/or A2 depending on their genetic makeup.
ANSWER:
a2MC admits that cattle produce milk that contains the A1 beta-casein protein and/or the A2 beta-casein protein. a2MC denies any remaining allegations in Paragraph
20.
21. Milk from many common breeds of dairy cattle is a mixture of A1 and A2.
7 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 8 of 48
ANSWER:
a2MC admits that milk from some dairy cattle contains a mixture of A1 type beta- casein proteins and A2 type beta-casein proteins. a2MC denies any remaining allegations in Paragraph 21.
22. Cows with only A2 genes produce milk with only A2 protein (“A2 milk”).
ANSWER:
a2MC denies the allegations in Paragraph 22.
23. Milk from animals other than cows (such as sheep and goats) may also contain only A2 protein which may also be referred to as “A2 milk.”
ANSWER:
a2MC denies the allegations in Paragraph 23.
24. Upon information and belief, A2 milk and other dairy products comprised of A2 milk are manufactured, sold and/or offered for sale by numerous companies throughout the world, including but not limited to, the following: Alexandre Family Farm, Snowville Creamery, Millhorn Farmstead, Buckeye Country Creamery, Richardson Farms, Miller’s Biodiversity Farm, Ratnawali Dairy Products, Gerber Products Company, Nestlé, Wyeth Nutrition, Meade Johnson, Nutricia, mMilk, Kin Dairy, Vinamilk, Provilac, The Organic Carbon, Brantwood Farms, Veedaz Organics, Reva Milk, Sheldon Creek Dairy, Freedom Foods, Aamro Dairies, and Moolrasa.
ANSWER:
a2MC admits that dairy products comprising milk claiming to contain A2 type beta-casein proteins and not A1 type beta-casein proteins are manufactured, sold, and/or offered for sale by companies other than a2MC and Braum’s. a2MC lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations in
Paragraph 24 and on that basis denies them.
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A2 MILK AND BRAUM’S
25. In approximately 2008, Braum’s began to develop a herd of cows that produces A2 milk.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 25 and on that basis denies them.
26. Today, the Braum’s Family Farm is proud to be home to the largest A2 dairy herd in the United States.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 26 and on that basis denies them.
27. With an established A2 herd of cattle, Braum’s is now producing its own exclusive line of A2 milk sold only at Braum’s stores.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 27 and on that basis denies them.
28. Braum’s offers numerous varieties of A2 milk, including chocolate, fat free and whole A2 milk, all of which are offered and sold under the BRAUM’S Mark and only at BRAUM’S Ice Cream and Dairy Stores.
ANSWER:
a2MC lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 28 and on that basis denies them.
29. Images of A2 milk sold under the BRAUM’S Mark are depicted below:
9 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 10 of 48
ANSWER:
a2MC admits that the images in Paragraph 29 appear to be images of milk products sold by Braum’s using the source identifier “A2 Milk.” a2MC lacks knowledge
or information sufficient to form a belief as to the truth of the allegations in Paragraph 29 and on that basis denies them.
A2MC AND ITS ASSERTIONS OF INFRINGEMENT
30. a2MC is the successor of A2 Corporation Limited, a New Zealand company founded in 2000.
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ANSWER:
a2MC denies the allegations in Paragraph 30, and states that A2 Corporation
Limited was the previous name of a2MC, and that there was no change in corporate
identity.
31. a2MC and/or its licensees manufacture, market or sell dairy products under the name “The a2 Milk Company” and the logo show below:
ANSWER:
a2MC admits that it manufactures, markets, offers to sell and sells products under
multiple federally-registered trademarks, including but not limited to the mark shown in
Paragraph 31. a2MC denies any remaining allegations in Paragraph 31.
32. According to a2MC, its milk products consist of A2 milk.
ANSWER:
a2MC denies the allegations in Paragraph 32, and states that it uses its trademark a2 Milk as a source identifier of its products.
33. On or about May 7, 2020, the Chief Executive Officer of a2MC’s domestic operations, Blake T. Waltrip, sent correspondence on behalf of a2MC to Drew Braum, the Chief Executive Officer of Braum’s. A true and correct copy of that letter, which is incorporated herein by reference, is attached as Exhibit 1 (the “a2MC Demand Letter”).
ANSWER:
a2MC admits that it sent a letter from Blake Waltrip to Drew Braum on May 7,
2020 and that a copy of the letter is attached to the Complaint as Exhibit 1. a2MC denies
11 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 12 of 48
Braum’s characterization of the letter and denies any remaining allegations in Paragraph
33.
34. In the a2MC Demand Letter, Mr. Waltrip asserted the following:
a. a2MC has exclusive trademark rights in and to the designations “a2” and “a2 Milk,” and Braum’s use of the designations “A2” and “A2 Milk” violates the same;
b. Braum’s use of the tagline “The A2 Difference” violates a2MC’s purported rights in and to the tagline “Feel the a2 Milk difference”; and
c. Braum’s use of a circle design in connection with the designation “A2 Milk,” as depicted in paragraph 29, violates a2MC’s purported rights in the designation depicted in paragraph 31.
ANSWER:
a2MC admits that it sent a letter from Blake Waltrip to Drew Braum on May 7,
2020 and that a copy of the letter is attached to the Complaint as Exhibit 1. a2MC denies
Braum’s characterization of the letter and denies any remaining allegations in Paragraph
34.
35. In the a2MC Demand, Mr. Waltrip demands that Braum’s perform the following actions:
a. “Immediately remove all trademark references to ‘A2 Milk’…..or any similar marks[] from [Braum’s] websites (including www.Braum’s.com), social media pages, advertising and marketing materials, including replacing or deleting images or photographs of products bearing the ‘A2 milk’ mark”;
b. “Immediately change all labels for products manufactured after receipt of this letter to remove all use of the trademarks ‘A2 Milk’…”;
c. “Complete the sell through of all products bearing the previous product labels within 4 weeks or, if sell through is not completed within this period, over-sticker the non-compliant labels”; and
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d. “Not to use, or allow any of Braum’s agents, distributors or partners to use or seek to register as a trademark, ‘A2 milk’… or any similar mark in the future in relation to its products, website, social media or advertising.”
ANSWER:
a2MC admits that it sent a letter from Blake Waltrip to Drew Braum on May 7,
2020 and that a copy of the letter is attached to the Complaint as Exhibit 1. a2MC denies
Braum’s characterization of the letter and denies any remaining allegations in Paragraph
35.
36. Braum’s disputes a2MC’s allegations. The designations “A2” and “A2 Milk” are generic terms, or at best highly descriptive and non-distinctive with respect to A2 Milk. As a result, Braum’s use of the designations “A2” and “A2 Milk” cannot, has not and does not infringe any legitimate trademarks owned by a2MC under the Lanham Act, state statutes or at common law.
ANSWER:
a2MC denies the allegations in Paragraph 36 and affirmatively states that the a2MC trademarks identified in Paragraph 36 are valid, enforceable, and infringed by
Braum’s, as set forth more fully in a2MC’s counterclaims against Braum’s.
COUNT I (Declaratory Judgment of Genericness and/or Descriptiveness)
37. Braum’s re-alleges and incorporates by reference each and every allegation set forth in the preceding paragraphs as though alleged in full herein.
ANSWER:
In response to Paragraph 37, a2MC realleges and incorporates by reference, as if fully set forth herein, its responses set forth in its answers to Paragraphs 1-36, above.
38. Upon information and belief, the primary significance to the relevant public of the designations “A2” and “A2 Milk” with respect to milk and other dairy products is
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as a specific class or category of milk or other dairy products. The designations “A2” and “A2 Milk” cannot and do not serve to indicate source are therefore not trademarks.
ANSWER:
a2MC denies the allegations in Paragraph 38 and affirmatively states that “a2” and
“a2 Milk” serve as source identifiers of a2MC and its dairy products, as set forth more
fully in a2MC’s counterclaims against Braum’s.
39. a2MC has demanded that Braum’s cease and desist use of “A2” and “A2 Milk” in connection with Braum’s dairy products.
ANSWER:
a2MC admits that it has requested that Braum’s cease any further use and
infringement of a2MC’s trademarks, as set forth more fully in a2MC’s counterclaims
against Braum’s. a2MC denies any remaining allegations in Paragraph 39.
40. a2MC has claimed that “a2” and “a2 Milk” are protectable trademarks owned by a2MC, and that Braum’s use of “A2” and “A2 Milk” infringe the same as well as other marks purportedly owned by a2MC that include the “a2” designation.
ANSWER:
a2MC states that it owns valid and protectable trademarks in “a2” and “a2 Milk”,
and that Braum’s use of “A2 Milk” is likely to cause confusion and as such constitutes
trademark infringement in violation of the Lanham Act and common law. a2MC denies
any remaining allegations in Paragraph 40.
41. Braum’s disputes a2MC’s allegations.
ANSWER:
a2MC admits the allegation in Paragraph 41 that a present and justiciable dispute
exists between a2MC and Braum’s based on Braum’s unauthorized use of a2MC’s
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trademarks in a manner that is likely to cause confusion in violation of the Lanham Act and common law.
42. Braum’s contends that the designations “A2” and “A2 Milk” are generic when used in connection with milk and other dairy products and/or are so highly descriptive that they cannot and do not indicate a source of goods or services. a2MC has not established a secondary meaning in connection with the “A2” and “A2 Milk” designations.
ANSWER:
a2MC states that Braum’s contentions speak for themselves and are not allegations of fact that require a response. a2MC denies any remaining allegations in Paragraph 42 and states that it has established secondary meaning in connection with its trademarks, as
set forth more fully in its counterclaims against Braum’s.
43. a2MC’s allegations of trademark infringement place a cloud over Braum’s ongoing investment in its A2 milk products and marketing thereof to consumers and may cause uncertainty among others in the marketplace, leading Braum’s to lose revenues and/or business opportunities.
ANSWER:
a2MC denies the allegations in Paragraph 43.
44. Braum’s is entitled to promote and sell its A2 milk products using the designations “A2” and “A2 Milk” in order to describe the nature of the milk to consumers without the ongoing threat of litigation by a2MC.
ANSWER:
a2MC denies the allegations in Paragraph 44.
45. As a result of the acts and contentions described in the foregoing paragraphs, an actual and justiciable controversy exists between Braum’s and a2MC and a judicial determination is necessary and appropriate so that Braum’s may ascertain its rights.
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ANSWER:
a2MC admits that an actual and justiciable controversy exists between Braum’s and a2MC. a2MC denies any remaining allegations in Paragraph 45.
46. Wherefore, Braum’s prays for the following relief:
a. an Order by the Court declaring that the designations “A2” and “A2 Milk” are generic when used in connection with milk and other dairy products, or, alternatively, are so highly descriptive that they are not protectable as trademarks when used to describe A2 milk and other dairy products;
b. an Order by the Court declaring that, because of the generic and/or highly descriptive nature of “A2” and “A2 Milk,” use of “A2” or “A2 Milk” by Braum’s cannot, has not and does not infringe any legitimate trademarks or service marks owned, licensed or used by a2MC, whether under the Lanham Act, state statutes or at common law; and
c. an Order by the Court declaring that Braum’s may continue to use the designations “A2” and “A2 Milk” as set forth herein without infringing any legitimate trademarks or service marks owned, licensed or used by a2MC, whether under the Lanham Act, state statutes or at common law.
ANSWER:
In response to Paragraph 46 and Braum’s prayer for relief, a2MC respectfully
requests that this Court deny in all respects the requests for relief contained in Paragraph
46, that Braum’s takes nothing by way of its claim and the requests for relief contained in
Paragraph 46, that Braum’s claim be dismissed with prejudice, and that the Court enter a
judgment in favor of a2MC on Braum’s claim.
COUNT II (Declaratory Judgment of Non-infringement)
47. Braum’s re-alleges and incorporates by reference each and every allegation set forth in the preceding paragraphs as though alleged in full herein.
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ANSWER:
In response to Paragraph 47, a2MC realleges and incorporates by reference, as if fully set forth herein, its responses set forth in its answers to Paragraphs 1-46, above.
48. a2MC has demanded that Braum’s cease and desist use of the designations “A2” and “A2 Milk” in connection with Braum’s dairy products.
ANSWER:
a2MC admits that it has requested that Braum’s cease any further use and
infringement of a2MC’s trademarks, as set forth more fully in a2MC’s counterclaims
against Braum’s. a2MC denies any remaining allegations in Paragraph 48.
49. a2MC has claimed “a2” and “a2 Milk” are protectable trademarks owned by a2MC, and that Braum’s use of designations described in the a2MC Demand Letter, including the designations “A2” and “A2 Milk,” infringe the same as well as other marks purportedly owned by a2MC that include the “a2” designation.
ANSWER:
a2MC states that it owns valid and protectable trademarks in “a2” and “a2 Milk,”
and that Braum’s use of “A2 Milk” as alleged in a2MC’s counterclaims is likely to cause confusion and as such constitutes trademark infringement in violation of the Lanham Act
and common law. a2MC denies any remaining allegations in Paragraph 49.
50. Braum’s disputes a2MC’s allegations.
ANSWER:
a2MC admits the allegations in Paragraph 50 that a present and justiciable dispute
exists between a2MC and Braum’s based on Braum’s unauthorized use of a2MC’s
trademarks in a manner that is likely to cause confusion in violation of the Lanham Act
and common law.
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51. Braum’s contends that the designations “A2” and “A2 Milk” are not protectable trademarks and Braum’s has not and does not infringe, either directly or indirectly, any legitimate trademark rights of a2MC.
ANSWER:
a2MC denies the allegations in Paragraph 51 and affirmatively states that its trademarks which include “a2” and “a2 Milk” are valid, enforceable, and infringed by
Braum’s, as set forth herein.
52. Braum’s contends that the use of designations complained of by a2MC, and the manner by which Braum’s uses “A2” and “A2 Milk,” is not likely to cause confusion among the parties or their respective goods or services or otherwise violate any legitimate trademarks or service marks purportedly owned by a2MC.
ANSWER:
a2MC states that Braum’s contentions speak for themselves and are not allegations of fact that require a response. a2MC denies any remaining allegations in Paragraph 52 and affirmatively states that Braum’s has engaged in unauthorized use of a2MC’s trademarks in a manner that is likely to cause confusion in violation of the Lanham Act and common law.
53. For example, use of the designations “A2” and “A2 Milk” by Braum’s is in close association with the BRAUM’S Mark and on goods sold in BRAUM’S Dairy and Ice Cream Stores. As a result, upon information and belief, consumers that encounter Braum’s use of the designations “A2” and “A2 Milk” are not likely to be confused as to whether they emanate from, or are otherwise affiliated with, or sponsored by, or are somehow associated with a2MC, its licensees or its products.
ANSWER:
a2MC denies the allegations in Paragraph 53.
54. a2MC’s allegations of trademark infringement place a cloud over Braum’s ongoing investment in its A2 milk products and marketing thereof to consumers and may cause uncertainty among others in the marketplace, leading Braum’s to lose revenues and/or business opportunities.
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ANSWER:
a2MC denies the allegations in Paragraph 54.
55. Braum’s is entitled to promote and sell its A2 milk products using the designations “A2” and “A2 Milk” in order to describe the nature of the milk to consumers without the ongoing threat of litigation by a2MC.
ANSWER:
a2MC denies the allegations in Paragraph 55.
56. As a result of the acts and contentions described in the foregoing paragraphs, an actual and justiciable controversy exists between Braum’s and a2MC and a judicial declaration is necessary and appropriate so that Braum’s may ascertain its rights.
ANSWER:
a2MC admits that “an actual and justiciable controversy exists between Braum’s and a2MC.” a2MC denies any remaining allegations in Paragraph 56.
57. Wherefore, Braum’s prays for the following relief:
a. an Order by the Court declaring that use by Braum’s of the designation “A2” and/or “A2 Milk” has not and does not infringe any legitimate trademarks or service marks owned, licensed or used by a2MC, whether under the Lanham Act, state statutes or at common law;
b. an Order by the Court declaring that use of the designation “The A2 Difference” by Braum’s has not and does not infringe any legitimate trademarks or service marks owned, licensed or used by a2MC, whether under the Lanham Act, state statutes or at common law;
c. an Order by the Court declaring that Braum’s use of a circle design in connection with the designation “A2 Milk,” as depicted in paragraph 29, has not and does not infringe any legitimate trademarks or service marks owned, licensed or used by a2MC, whether under the Lanham Act, state statutes or at common law; and
d. an Order by the Court declaring that Braum’s may continue to use the designations complained of in the a2MC Demand, including but not limited to the designations “A2” and “A2 Milk,” without
19 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 20 of 48
infringing any legitimate trademarks or service marks owned, licensed or used by a2MC, whether under the Lanham Act, state statutes or at common law.
ANSWER:
In response to Paragraph 57 and Braum’s prayer for relief, a2MC respectfully requests that this Court deny in all respects the requests for relief contained in Paragraph
57, that Braum’s takes nothing by way of its claim and the requests for relief contained in
Paragraph 57, and that Braum’s claim be dismissed with prejudice; and that the Court enter a judgment in favor of a2MC on Braum’s claim.
COUNT III (Declaratory Judgment of Fair Use)
58. Braum’s re-alleges and incorporates by reference each and every allegation set forth in the preceding paragraphs as though alleged in full herein.
ANSWER:
In response to Paragraph 58, a2MC realleges and incorporates by reference, as if fully set forth herein, its responses set forth in its answers to Paragraphs 1-57, above.
59. Braum’s has used the designations “A2” and “A2 Milk,” and other designations that employ “A2” and “A2 Milk,” to describe its A2 milk products in good faith and not as a trademark or service mark.
ANSWER:
a2MC denies the allegations in Paragraph 59.
60. a2MC has claimed “a2” and “a2 Milk” are protectable trademarks owned by a2MC, and that Braum’s use of designations described in the a2MC Demand, including the designations “A2” and “A2 Milk,” infringe the same as well as other marks purportedly owned by a2MC that include the “a2” designation.
20 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 21 of 48
ANSWER:
a2MC states that its “a2” and “a2 Milk” trademarks are valid and enforceable, are owned by a2MC, and that Braum’s unauthorized use of certain designations, including
“A2 Milk,” infringe the same as well as other marks owned by a2MC which include
“a2.” a2MC denies any remaining allegations in Paragraph 60.
61. Braum’s disputes a2MC’s allegations.
ANSWER:
a2MC admits the allegations in Paragraph 61 that a present and justiciable dispute
exists between a2MC and Braum’s based on Braum’s unauthorized use of a2MC’s
trademarks in a manner that is likely to cause confusion in violation of the Lanham Act
and common law.
62. Braum’s contends that the use of designations complained of by a2MC, and the manner by which Braum’s uses “A2” and “A2 Milk,” constitutes fair use. For example, there is no other practical way to describe the nature of the milk on a milk container.
ANSWER:
a2MC denies the allegations in Paragraph 62 and affirmatively states that Braum’s
unauthorized use of “A2 Milk” is likely to cause confusion, infringes a2MC’s rights in its
valid and enforceable trademarks, and constitutes trademark infringement in violation of
the Lanham Act and common law. a2MC further states that there are numerous practical
ways to describe the nature of milk which comes from cows that produce only the A2
beta-casein protein type and no A1 beta-casein type proteins on a milk container, as set
forth more fully in a2MC’s counterclaims against Braum’s.
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63. a2MC’s allegations of trademark infringement place a cloud over Braum’s ongoing investment in its A2 milk products and marketing thereof to consumers and may cause uncertainty among others in the marketplace, leading Braum’s to lose revenues and/or business opportunities.
ANSWER:
a2MC denies the allegations in Paragraph 63.
64. Braum’s is entitled to promote and sell its A2 milk products using the designations “A2” and “A2 Milk” in order to describe the nature of the milk to consumers without the ongoing threat of litigation by a2MC.
ANSWER:
a2MC denies the allegations in Paragraph 64.
65. As a result of the acts and contentions described in the foregoing paragraphs, an actual and justiciable controversy exists between the parties and a judicial declaration is necessary and appropriate so that Braum’s may ascertain its rights.
ANSWER:
a2MC admits that “an actual and justiciable controversy exists between the
parties.” a2MC denies any remaining allegations in Paragraph 65.
66. Wherefore, Braum’s prays for the following relief:
a. an Order by the Court declaring that use of the designations “A2” and “A2 Milk” by Braum’s as described herein constitutes fair use and has not and does not infringe any legitimate trademarks or service marks owned, licensed or used by a2MC, whether under the Lanham Act, state statutes or at common law; and
b. an Order by the Court declaring that Braum’s may continue to use the designations “A2” and “A2 Milk” as described herein without infringing any legitimate trademarks or service marks owned, licensed or used by a2MC, whether under the Lanham Act, state statutes or at common law.
22 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 23 of 48
ANSWER:
In response to Paragraph 66 and Braum’s prayer for relief, a2MC respectfully
requests that this Court deny in all respects the requests for relief contained in Paragraph
66, that Braum’s takes nothing by way of its claim and the requests for relief contained in
Paragraph 66, and that Braum’s claim be dismissed with prejudice; and that the Court
enter a judgment in favor of a2MC on Braum’s claim.
COUNT IV (Cancellation of U.S. Trademark Reg. No. 3,464,046)
67. Braum’s re-alleges and incorporates by reference each and every allegation set forth in the preceding paragraphs as though alleged in full herein.
ANSWER:
In response to Paragraph 67, a2MC realleges and incorporates by reference, as if
fully set forth herein, its responses set forth in its answers to Paragraphs 1-66, above.
68. a2MC has demanded that Braum’s cease and desist use of “A2” and “A2 Milk” in connection with Braum’s dairy products.
ANSWER:
a2MC admits that it has requested that Braum’s cease any further use and
infringement of a2MC’s trademarks, as set forth more fully in a2MC’s counterclaims
against Braum’s. a2MC denies any remaining allegations in Paragraph 68.
69. a2MC has claimed that “a2” and “a2 Milk” are protectable trademarks owned by a2MC, and that Braum’s use of “A2” and “A2 Milk” infringe the same as well as other marks purportedly owned by a2MC that include the “a2” designation.
ANSWER:
a2MC states that its “a2” and “a2 Milk” trademarks are valid, enforceable, and owned by a2MC. a2MC further admits that Braum’s unauthorized use of “A2 Milk” is
23 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 24 of 48
likely to cause confusion and infringes a2MC’s valid and enforceable trademarks in violation of the Lanham Act and common law. a2MC denies any remaining allegations in Paragraph 69.
70. a2MC is the purported owner of U.S. Trademark Reg. No. 3,464,046, which is directed to “A2 MILK” in connection with “milk.”
ANSWER:
a2MC admits that it is the owner of U.S. Trademark Reg. No. 3,464,046 for “A2
MILK” in connection with “milk.” a2MC denies any remaining allegations in Paragraph
70.
71. Braum’s disputes a2MC’s allegations and the validity of U.S. Trademark Reg. No. 3,464,046.
ANSWER:
a2MC admits that a present and justiciable controversy exists between a2MC and
Braum’s regarding the validity of U.S. Trademark Reg. No. 3,464,046 and a2MC’s
enforcement of its rights therein. a2MC denies any remaining allegations in Paragraph
71.
72. Braum’s contends that the designations “A2” and “A2 Milk” are generic when used in connection with milk and other dairy products and/or are so highly descriptive that they cannot and do not indicate a source of goods or services. a2MC has not established a secondary meaning in connection with the “A2” and “A2 Milk” designations.
ANSWER:
a2MC states that Braum’s contentions speak for themselves and are not allegations of fact that require a response. a2MC denies any remaining allegations in Paragraph 72
24 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 25 of 48
and affirmatively states that it has established secondary meaning in connection with its
“a2 Milk” marks, as set forth more fully in its counterclaims against Braum’s.
73. Braum’s contends that U.S. Trademark Reg. No. 3,464,046 is invalid and unenforceable in view of the fact that the designation “A2 MILK” is generic and/or nondistinctive with respect to milk.
ANSWER:
a2MC denies the allegations in Paragraph 73 and affirmatively states that U.S.
Trademark Reg. No. 3,464,046 is valid and enforceable.
74. a2MC’s allegations of trademark infringement place a cloud over Braum’s ongoing investment in its A2 milk products and marketing thereof to consumers and may cause uncertainty among others in the marketplace, leading Braum’s to lose revenues and/or business opportunities.
ANSWER:
a2MC denies the allegations in Paragraph 74.
75. Braum’s is entitled to promote and sell its A2 milk products using the designations “A2” and “A2 Milk” in order to describe the nature of the milk to consumers without the ongoing threat of litigation by a2MC.
ANSWER:
a2MC denies the allegations in Paragraph 75.
76. As a result of the acts and contentions described in the foregoing paragraphs, an actual and justiciable controversy exists between Braum’s and a2MC and a judicial declaration is necessary and appropriate so that Braum’s may ascertain its rights.
ANSWER:
a2MC admits that “an actual and justiciable controversy exists between Braum’s and a2MC.” a2MC denies any remaining allegations in Paragraph 76.
25 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 26 of 48
77. Wherefore, Braum’s prays for an Order by the Court declaring that a2MC’s U.S. Trademark Reg. No. 3,464,046 is invalid and unenforceable, and directing the U.S. Patent and Trademark Office to cancel the same.
ANSWER:
In response to Paragraph 77 and Braum’s prayer for relief, a2MC respectfully requests that this Court deny in all respects the requests for relief contained in Paragraph
77, that Braum’s takes nothing by way of its claim and the requests for relief contained in
Paragraph 77, and that Braum’s claim be dismissed with prejudice; and that the Court enter a judgment in favor of a2MC on Braum’s claim.
GENERAL DENIAL
a2MC denies each and every allegation, matter, or thing contained in Braum’s
claims, express or implied, not expressly admitted herein.
PRAYER FOR RELIEF
In response to Braum’s Prayer for Relief, a2MC respectfully requests that this
Court deny in all respects Braum’s claims and other requests for relief, that Braum’s take nothing by way of its claims and other requests for relief, and that Braum’s claims be dismissed with prejudice, and that the Court enter a judgment in favor of a2MC on all
claims asserted by Braum’s.
AFFIRMATIVE DEFENSES
1. Braum’s has failed to state a claim upon which relief can be granted, and therefore Braum’s claims and Complaint must be dismissed.
2. The “A2 MILK” trademark is valid, enforceable and infringed by Braum’s.
26 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 27 of 48
3. Braum’s claims are barred, in whole or in part, by the equitable defense of laches.
4. Braum’s claims are barred, in whole or in part, by Braum’s own unclean hands.
5. Braum’s claims are barred, in whole or in part, by the doctrine of estoppel.
6. Braum’s claims are barred, in whole or in part, by the doctrine of waiver.
7. a2MC reserves all other affirmative defenses under Fed. R. Civ. P. 8(c), the
Patent Act, and any other defenses at law or in equity, that may exist now or in the future
based on discovery and further factual investigation in this case.
COUNTERCLAIMS
The a2 Milk Company Limited (“a2MC”) and The a2 Milk Company (“a2MC-
US”) assert the following counterclaims against Braum’s, Inc. (“Braum’s”) as follows:
PARTIES, JURISDICTION AND VENUE
1. a2MC is a limited company organized and existing under the laws of New
Zealand with principal places of business in Auckland, New Zealand and Sydney,
Australia. a2MC was founded in New Zealand as A2 Corporation Limited in 2000, with
an initial focus on dairy farm breeding programs to develop cow herds that would
naturally produce A1 protein-free milk. Since its founding, a2MC has always maintained
its core brand and goodwill in the names “a2” and “a2 Milk.” a2MC is the owner of
a2MC intellectual property, including trademarks, copyrights, and patents.
2. a2MC-US is a corporation organized and existing under the laws of the
state of Delaware with a principal place of business at 2995 Wilderness Place, Boulder,
27 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 28 of 48
CO 80301. a2MC-US is a wholly-owned subsidiary of a2MC and the exclusive licensee with respect to a2MC’s trademarks within the United States.
3. Braum’s is a company organized under the laws of the state of Oklahoma maintaining its corporate headquarters and principal place of business at P.O. Box 25429,
Oklahoma City, Oklahoma 73125.
4. This Court has subject matter jurisdiction over a2MC’s and a2MC-US’ counterclaims for federal trademark infringement, federal unfair competition, and copyright infringement under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a).
5. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(1) and (c). Venue is also proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(2).
Braum’s resides in this district, and the trademark infringement at issue in this litigation
occurred in this district and targeted consumers in this District.
6. This Court has personal jurisdiction over Braum’s because Braum’s
conducts business in this district and has availed itself of this Court’s jurisdiction by
filing the above-captioned lawsuit in this judicial district, as set forth in its Complaint.
a2MC’S PERVASIVE AND WELL-RECOGNIZED BRAND AND TRADEMARKS
7. In 2000, Dr. Corran McLachlan, the founder of a2MC, learned that
ordinary cows produce milk with different types of beta-casein proteins—grouped as A1
type beta-casein proteins (“A1 type proteins”) and A2 type beta-casein proteins (“A2 type
proteins”). A1 type proteins have the characteristics of A1 beta-casein protein in that
they produce the peptide beta casomorphin 7 (“BCM-7”) on digestion, while A2 type
28 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 29 of 48
proteins have the characteristics of A2 beta-casein protein and do not produce BCM-7 on digestion.
8. Dr. McLachlan also discovered that cows can be genetically tested to identify those cows that produce only the A2 beta-casein protein type and no A1 beta- casein type proteins. Further, he learned that proteins in milk affect people differently.
Indeed, research has shown that A1 type proteins are digested differently than A2 type proteins, and growing scientific evidence supports that dairy products made with milk which comes from cows that produce only the A2 beta-casein protein type and no A1 beta-casein type proteins provide unique benefits.
9. Dr. McLachlan’s research and innovation resulted in numerous inventions, protected by U.S. patents owned by a2MC, including but not limited to U.S. Patent Nos.
6,570,060 for “Milk lacking β-casein A1”; 7,094,949 for “Breeding and milking cows for milk free of β-casein A1”; 7,563,575 for “Breeding and milking cows for milk free of β- casein A1”; and 7,863,002 for “Breeding and milking cows for milk free of β-casein A1.”
Based on this research, a2MC was created as a pioneer in bringing dairy products made with milk which comes from cows that produce only the A2 beta-casein protein type and no A1 beta-casein type proteins.
10. Since that time, and over the past twenty years, a2MC has successfully expanded from its initial market in New Zealand to markets in multiple countries throughout the world, including the United States.
11. a2MC now sells its well-known dairy products which include milk, chocolate milk and coffee creamer in multiple countries, including Australia, China,
29 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 30 of 48
Hong Kong, New Zealand, Singapore, and the United States. These well-known dairy products (examples of which are shown below) have been sold throughout the United
States, including in Kroger, Costco, Vons, Safeway and Walmart stores, for many years:
12. Since 2003, a2MC has registered and used various trademarks incorporating the use of “a2” in connection with its well-known dairy products in
Australia, Bangladesh, Brazil, Brunei, Canada, China, the European Union, Fiji, Hong
Kong, India, Japan, Korea, Macau, Malaysia, Mexico, New Zealand, Norway, Pakistan,
Papua New Guinea, Philippines, Singapore, Sri Lanka, Taiwan, Uruguay, and Vietnam.
13. Since 2005, a2MC has registered, used and owns a vast portfolio of federally-registered trademarks incorporating the use of “a2” in connection with its well- known dairy products in the United States, including Reg. No. 3,464,046 for “A2 MILK” filed June 21, 2005 and registered July 8, 2008 (the “a2 MILK Mark”) for class 29 – milk. a2MC has also applied for registration for the following additional trademarks incorporating the use of “a2” in the United States:
30 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 31 of 48
Registration/Application Trademark Application Date Number
4,720,459 July 5, 2011
4,693,969 October 21, 2011
TRUE A2 4,531,584 June 14, 2012
4,758,183 November 21, 2012
TRUE A2 5,311,685 August 29, 2014 a2 PLATINUM 5,211,249 December 3, 2015
5,237,836 October 13, 2015
a2tonishing 5,331,917 July 15, 2016
July 22, 2016 5,388,849
THANK YOU a2 79/205,493 December 22, 2016
79/215,112 June 1, 2017
79/214,813 June 1, 2017
October 26, 2017 a2 Store 87/661,483
a2 True 87/799,301 February 15, 2018 THE a2 MILK 87/820,213 March 5, 2018 COMPANY
31 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 32 of 48
September 21, 2018 ATWO 88/127,337
a2 active 88/417,268 May 6, 2019
88/735,997 December 20, 2019
88/735,965 December 20, 2019
88/735,992 December 20, 2019
14. The a2 MILK Mark has exclusively and consistently been used to identify and distinguish the source of a2MC’s dairy products—which are made with milk from cows that naturally only produce milk which is free of A1 type proteins—from the dairy products of other suppliers, all while developing the consumer goodwill in a2MC’s identifiable brand.
15. The a2 MILK Mark is entitled to legal protection as a trademark. a2MC has expended substantial sums of money advertising and promoting dairy products under the a2 MILK Mark, and millions of dollars’ worth of dairy products have been sold worldwide under the a2 MILK Mark. The worldwide success and popularity of products sold under the a2 MILK Mark over many years has fostered wide renown and fame with the consuming public, as dairy products sold under the a2 MILK Mark have a reputation for being high quality.
32 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 33 of 48
16. As a result of this success, and a2MC’s long and continuous use of the a2
MILK Mark in connection with dairy products, infant formula, and the like, dairy products bearing the a2 MILK Mark have come to be identified by the consuming public as emanating from a single source.
17. a2MC and a2MC-US actively protect the a2 MILK Mark by monitoring the
marketplace for uses of the a2 MILK Mark or similar marks that are likely to cause
confusion among the consuming public, including by notifying the public and
competitors of a2MC’s rights in the a2 MILK Mark.
18. a2MC’s dairy products appeal to consumers who cannot easily digest
ordinary milk which contains A1 beta-casein protein. Indeed, the vast majority of milk
commonly available at supermarkets in the United States contains a mixture of proteins,
including A1 type proteins and A2 type proteins. In its marketing, a2MC emphasizes the
potential health and wellness benefits of a2MC’s dairy products in order to reach
consumers who would otherwise limit their consumption of dairy products or avoid dairy
products altogether. a2MC also appeals to consumers who are generally more
progressive, health conscious and therefore drawn to a2MC’s dairy products.
19. a2MC-US is the exclusive licensee of the a2MC trademarks in the United
States, including the a2 MILK Mark, and extensively uses the a2MC a2 MILK Mark in
the United States on product packaging, print advertising, online and on social media
channels. For example, a2MC maintains a US-based Facebook page at
https://www.facebook.com/a2MilkUSA/ on which it regularly posts about its dairy
33 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 34 of 48
products. a2MC-US regularly uses the a2 MILK Mark and other of its trademarks incorporating “a2” in these Facebook posts.
20. a2MC-US also maintains a robust Twitter handle at www.twitter.com/a2milkusa, where consumers can learn additional information about
a2MC’s dairy products:
21. a2MC-US likewise has a significant presence on Instagram, and can be
found at www.instagram.com/a2milkusa, with nearly 5,000 followers. A screenshot of
a2MC-US’s Instagram page is below:
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22. a2MC-US also maintains a US-based website located at https://www.a2milk.com/ through which it shares information about its dairy products and provides consumers with a tool to locate a2MC’s dairy products throughout the United
States.
23. Both a2MC and a2MC-US extensively advertise their dairy products under the a2 MILK Mark on Facebook, Instagram, Twitter, and online though its website.
Through this extensive, widespread and pervasive use of the a2 MILK Mark as described herein, the consuming public has come to recognize the a2 MILK Mark as a source indicator of a2MC and a2MC’s dairy products.
a2MC’S TWO COWS COPYRIGHTED WORK
24. Both a2MC and a2MC-US educate consumers about dairy products made
with milk which comes from cows that produce only the A2 beta-casein protein type and
no A1 beta-casein type proteins. Indeed, because the vast majority of dairy products
available to consumers contain a mixture of A1 type proteins and A2 type proteins,
a2MC and a2MC-US have undertaken significant efforts to explain the different types of
beta-casein proteins, the evolution of cows and the types of beta-casein proteins
contained in cow’s milk, and the benefits of a2MC’s dairy products to consumers. See,
e.g. https://www.a2milk.com/our-story.
25. Featured prominently in a2MC’s education efforts is its original two cows artwork created to convey the differences between milk used in a2MC’s and a2MC-US’ dairy products and ordinary milk (the “Two Cows Artwork”):
35 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 36 of 48
26. a2MC and a2MC-US have widely used the Two Cows Artwork, including on packaging, in print media, on social media, and online.
27. The Two Cows Artwork is a2MC’s original work of authorship and constitutes copyrightable subject matter under the copyright laws of the United States.
The Two Cows Artwork has been published in the United States and has been accessible to be viewed and/or downloaded by any person from a2MC-US’ website and other sources.
28. a2MC is the owner by assignment of all right, title, and interest in the Two
Cows Artwork. The copyright in the Two Cows Artwork is registered with the United
States Copyright Office as Registration No. VA 2-208-777.
BRAUM’S INFRINGING ACTIVITIES
29. Over the past twenty years, and as the result of a2MC’s nearly two decades of hard work and investment, the a2 MILK Mark has become well-known among the consuming public in a number of countries. And as part of that investment, a2MC has successfully expanded to markets throughout the world, and more recently, throughout
the United States. This success has attracted third-party entrants into the field of products
36 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 37 of 48
made with milk which comes from cows that produce only the A2 beta-casein protein type and no A1 beta-casein type proteins.
30. Braum’s is one of those third parties, which has been in business for many years, yet, in an effort to capitalize on the success of a2MC’s brand, has recently released a new line of milk products using the “A2 Milk” brand. Like a2MC, Braum’s offers
products it promotes as being made with milk which comes from cows that produce only
the A2 beta-casein protein type and no A1 beta-casein type proteins in the United States,
and advertises these products to consumers on its website, for example at
https://www.braums.com/a2-milk/. Examples of Braum’s “A2 MILK” branded milk
products are below:
31. In advertising its milk products, Braum’s uses labels prominently
displaying “A2 MILK.” This use of “A2 MILK” is more prominent than Braum’s own
name on the label, and indeed is the most prominent feature of Braum’s labels, as shown
below.
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32. As evident from Braum’s labels on its milk products, Braum’s does not use
“A2 MILK” to describe the beta-casein protein composition of its milk products but rather uses it as a brand for its products. In addition, and in an effort to trade off of the goodwill developed by a2MC and a2MC-US, Braum’s prominently displays on its website the designation “The A2 Difference,” which is confusingly similar to a2MC’s registered trademark FEEL THE DIFFERENCE (Reg. No. 4,252,459) for, among other things, milk and milk products.
33. Braum’s also advertises its products through its website using the following
infographic (available at https://www.braums.com/a2-milk/):
38 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 39 of 48
34. Braum’s prominent use of “A2 MILK” on its labels for its milk products and on its website is not authorized by a2MC, nor is Braum’s use of a substantially similar graphic used to illustrate the differences between “regular” or ordinary cows and cows that produce only the A2 beta-casein protein type and no A1 beta-casein type proteins. a2MC has not licensed use of its a2 MILK Mark or any of its related trademarks incorporating the use of “a2” to Braum’s. And a2MC has not authorized
Braum’s to copy or reproduce its Two Cows Artwork.
35. a2MC requested that Braum’s cease its unauthorized use of “A2 MILK,” including in a letter sent to Braum’s on May 7, 2020. However, instead of discontinuing its infringing use of “A2 MILK” on its labels and website, Braum’s responded by filing this lawsuit against a2MC.
36. Braum’s use of “A2 MILK,” which is the same mark as a2MC’s a2 MILK
Mark, used on the same dairy products, to the same set of purchasing consumers within the United States, is likely to cause confusion. Braum’s unauthorized use of “A2 MILK” is identical to a2MC’s federally registered a2 MILK Mark, as shown below:
a2MC’s Federally Registered Braum’s Unauthorized Use of A2 Trademark (Reg. No. 3,464,046) MILK
39 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 40 of 48
37. Because a2MC is widely known by its a2 MILK Mark, as described above,
Braum’s identical use of a2MC’s a2 MILK Mark on its milk products—the identical goods a2MC uses its a2 MILK Mark to advertise—is likely to cause confusion whereby consumers mistakenly believe they are purchasing dairy products from a2MC-US but instead purchase Braum’s milk, causing monetary loss to a2MC and a2MC-US.
38. This confusion is compounded by Braum’s unauthorized reproduction of a visually similar “two cows” graphic to a2MC’s Copyrighted Two Cows Artwork on
Braum’s website. And this confusion damages a2MC’s reputation built over the past 20 years as a2MC has no control over the quality of Braum’s dairy products. Accordingly,
Braum’s unauthorized and prominent use of “A2 MILK” on its website and labels has caused and continues to cause a2MC and a2MC-US irreparable harm.
FIRST COUNTERCLAIM Federal Trademark Infringement, 15 U.S.C. § 1114 Asserted by a2MC and a2MC-US against Braum’s
39. a2MC and a2MC-US hereby incorporate each of the preceding paragraphs
as if fully set forth herein.
40. Braum’s is not authorized to use the a2 MILK Mark (Reg. No. 3,464,046),
or any mark confusingly similar thereto or that in any way represents or implies Braum’s
goods are in any way associated with a2MC.
41. Braum’s unauthorized use of a2MC’s federally registered a2 MILK Mark
as alleged herein, including without limitation on Braum’s website and labels for
Braum’s milk products, constitutes trademark infringement in violation of 15 U.S.C. §
1114. Braum’s unauthorized use of a2MC’s a2 MILK Mark is likely to cause confusion
40 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 41 of 48
and has actually caused confusion, mistake, or deception in the market as to the source or
origin of Braum’s goods, and has falsely suggested that Braum’s and its goods are
sponsored by, connected to, or associated with a2MC and/or a2MC-US.
42. Braum’s wrongful use of the a2 MILK Mark is knowing, deliberate, and
willful.
43. As a direct and proximate result of Braum’s infringement of a2MC’s a2
MILK Mark, a2MC and a2MC-US have suffered, and will continue to suffer, irreparable
injury to its business, reputation, and goodwill, unless and until the Court enjoins
Braum’s actions. a2MC and a2MC-US have no adequate remedy at law.
44. As a direct and proximate result of Braum’s actions, a2MC and a2MC-US
have suffered, and will continue to suffer, monetary damages in an amount to be proven
at trial.
45. As a direct and proximate result of Braum’s infringing actions, a2MC and
a2MC-US are entitled to receive a disgorgement of all of Braum’s profits flowing from
its infringing activities.
46. Because of the willful nature of Braum’s infringing actions, this is an
exceptional case, entitling a2MC and a2MC-US to an award of treble damages,
prejudgment interest, and their reasonable attorneys’ fees.
SECOND COUNTERCLAIM False Designation of Origin, 15 U.S.C. § 1125(a) Asserted by a2MC and a2MC-US against Braum’s
47. a2MC and a2MC-US hereby incorporate each of the preceding paragraphs
as if fully set forth herein.
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48. a2MC was the first to use the a2 MILK Mark or any marks similar thereto in association with milk. As a result of the continued sale by a2MC and a2MC-US of products under the a2 MILK Mark, the a2 MILK Mark has become widely known and a2MC has become identified in the public mind as the manufacturer and/or licensor of the products to which the a2 MILK Mark is applied.
49. As a result of the experience, care, and service of a2MC in producing and providing a2MC’s products, a2MC’s products have become widely known to have acquired a worldwide and nationwide reputation for excellence. Moreover, the a2 MILK
Mark has become associated with a2MC’s products and has come to symbolize the reputation for quality and excellence of a2MC’s products. As such, the a2 MILK Mark has acquired distinctiveness.
50. Braum’s is not authorized to use the a2 MILK Mark, or any mark confusingly similar thereto or that in any way represents or implies Braum’s goods are in
any way associated with a2MC.
51. Braum’s unauthorized use of the a2 MILK Mark in association with a
competing product classified in the same milk category is likely to cause confusion, and
on information and belief, has actually caused, confusion, mistake, or deception as to the
source, origin, sponsorship, or affiliation of Braum’s products. Such conduct as alleged
herein constitutes false designation of origin in violation of the Lanham Act, 15 U.S.C. §
1125(a).
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52. Braum’s infringing actions have been with knowledge of a2MC’s prior and exclusive rights in the a2 MILK Mark, and with an intent to trade on and take advantage of a2MC’s goodwill in the a2 MILK Mark.
53. As a direct and proximate result of Braum’s knowing, deliberate, and willful infringement of the a2 MILK Mark, a2MC and a2MC-US have suffered damages in an amount that will be shown at trial.
54. As a direct and proximate result of Braum’s infringing conduct, a2MC and a2MC-US are entitled to disgorgement of Braum’s profits flowing from its infringement.
55. As a direct and proximate result of Braum’s knowing, deliberate, and willful actions and unfair competition of the a2 MILK Mark, a2MC and a2MC-US have
suffered, and will continue to suffer, irreparable injury to its business, reputation, and
goodwill, unless and until Braum’s actions as alleged herein are permanently enjoined.
THIRD COUNTERCLAIM Common Law Unfair Competition Asserted by a2MC and a2MC-US against Braum’s
56. a2MC and a2MC-US hereby incorporate each of the preceding paragraphs as if fully set forth herein.
57. Braum’s has displayed, distributed, sold, and used merchandise that infringes a2MC’s and a2MC-US’ rights as an exclusive licensee in the a2 MILK Mark,
thereby usurping Counterclaim Plaintiffs’ goodwill and business reputation through
unfair methods. Thus, Braum’s conduct as alleged herein constitutes unfair competition,
in violation of common law.
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58. Braum’s has willfully engaged in unfair competition with a bad faith intent to injure a2MC and a2MC-US. Braum’s unauthorized use of the a2 MILK Mark in
association with products in the milk category is likely to cause, and on information and
belief has actually caused, confusion, mistake, or deception as to the source, origin,
sponsorship, or affiliation of Braum’s products.
59. a2MC and a2MC-US have suffered, and will continue to suffer, substantial
injuries, loss, and damage to its business as a direct and proximate result of Braum’s
unfair competition.
60. As a direct and proximate result of Braum’s knowing, deliberate, and
willful conduct associated with respect to the a2 MILK Mark, a2MC and a2MC-US have
suffered damages in an amount that will be shown at trial.
61. As a direct and proximate result of Braum’s unfair competition, a2MC and
a2MC-US are entitled to disgorgement of Braum’s profits flowing from its infringement.
62. As a direct and proximate result of Braum’s knowing, deliberate, and
willful action and unfair competition, a2MC and a2MC-US have suffered, and will
continue to suffer, irreparable injury to its business, reputation, and goodwill, unless and
until Braum’s actions as alleged herein are permanently enjoined.
FOURTH COUNTERCLAIM Federal Copyright Infringement, 17 U.S.C. § 101 et seq. Asserted by a2MC against Braum’s
54. a2MC and a2MC-US hereby incorporate each of the preceding paragraphs
as if fully set forth herein.
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55. The Two Cows Artwork is an original work of authorship and constitutes copyrightable subject matter under the copyright laws of the United States.
56. a2MC is the owner by assignment of the copyright in the Two Cows
Artwork and complied with all statutory requirements in registering the copyright in the copyrighted Two Cows Artwork with the United States Copyright Office.
57. Braum’s had access to the Two Cows Artwork, via it being publicly available on the Internet, or otherwise.
58. Braum’s has infringed a2MC’s exclusive rights in the Two Cows Artwork by reproducing, distributing, displaying, and creating derivative works based on the Two
Cows Artwork and substantially similar thereto, without authorization, in violation of 17
U.S.C. § 101 et seq.
59. Braum’s infringement of the Two Cows Artwork has been knowing, deliberate, and willful.
60. As a direct and proximate result of Braum’s actions described herein, a2MC has suffered, and will continue to suffer, irreparable injury unless and until the
Court enjoins Braum’s actions. a2MC has no adequate remedy at law.
61. As a direct and proximate result of Braum’s infringement, a2MC and a2MC-US have suffered monetary damages in an amount to be proven at trial.
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PRAYER FOR RELIEF
WHEREFORE, Counterclaim Plaintiffs a2MC and a2MC-US pray for entry of
judgment as follows:
A. A permanent injunction restraining Braum’s, its officers, agents, servants, employees, and attorneys, and those persons acting in concert with Braum’s from infringing Counterclaim Plaintiffs’ Lanham Act and common law rights in the a2 MILK
Mark, from infringing a2MC’s rights in the Two Cows Artwork, and from otherwise engaging in unfair competition;
B. A declaration that Braum’s has infringed the a2 MILK Mark by the acts
complained of herein in violation of 15 U.S.C. § 1114;
C. A declaration that Braum’s infringement was deliberate, willful, and in
conscious disregard of a2MC’s and a2MC-US’ rights pursuant to 15 U.S.C. § 1117 and
1125(a), and at common law;
D. An award to Counterclaim Plaintiffs of their actual damages based on their counterclaims in an amount according to proof, together with Braum’s profits attributable to the infringement but not taken into account in computing actual damages, pursuant to
17 U.S.C. § 504(b);
C. A requirement that Braum’s account to Counterclaim Plaintiffs for any and all gross and net sales, revenues, and profits received or derived by Braum’s from the
manufacture, marketing, sale, offering for sale, and/or distribution of products or services
bearing or using any copy or colorable imitation of the a2 MILK Mark and an award to
46 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 47 of 48
Counterclaim Plaintiffs of Braum’s profits not taken into account in calculating actual
damages;
D. A declaration that this case is exceptional, pursuant to 15 U.S.C. § 1117;
E. An award of treble all profits and damages owing to Counterclaim
Plaintiffs due to Braum’s willful trademark infringement and unfair competition,
pursuant to 15 U.S.C. § 1117(a);
F. An award to Counterclaim Plaintiffs of their costs, including reasonable
attorney’s fees pursuant to 15 U.S.C. § 1117; and
G. An award to Counterclaim Plaintiffs of any such other and further relief as
this Court deems just and equitable.
DEMAND FOR JURY TRIAL
Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Counterclaim
Plaintiffs demand a trial by jury on all issues triable by jury.
Dated: July 6, 2020 Respectfully submitted,
By: /s/ Jared B. Briant Jared B. Briant Faegre Drinker Biddle & Reath LLP 1144 15th Street, Suite 3400 Denver, Colorado 80202 Telephone: (303) 607-3500 Facsimile: (303) 607-3600 [email protected]
ATTORNEYS FOR THE A2 MILK COMPANY LIMITED AND THE A2 MILK COMPANY
47 Case 5:20-cv-00466-HE Document 9 Filed 07/06/20 Page 48 of 48
CERTIFICATE OF SERVICE
I hereby certify that on July 6, 2020, I electronically filed the foregoing ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following persons at the given email addresses:
Clifford C. Dougherty, III, OBA # 11290 Zachary A.P. Oubre, OBA # 30666 MCAFEE & TAFT A Professional Corporation Tenth Floor, Two Leadership Square 211 North Robinson Oklahoma City, OK 73102-7103 Telephone: (405) 235-9621 Facsimile: (405) 235-0439 [email protected] [email protected]
/s/ Jared B. Briant Jared B. Briant
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