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Case 1:16-cv-20315-UU Document 1 Entered on FLSD Docket 01/27/2016 Page 1 of 10

UNITED STATES DISTRICT COURT


SOUTHERN DISTRICT OF FLORIDA
CASE NO: ______________________________
THE HAND MEDIA, INC.,
Plaintiff,
vs.
THE J.M. SMUCKER COMPANY,

Defendants.
_________________________________________/
COMPLAINT FOR DECLARATORY JUDGMENT
OF NON INFRINGEMENT OF TRADEMARK RIGHTS
This action is for declaratory judgment under the Declaratory Judgment Act, 28
U.S.C. 2201 and 2202. Plaintiff, THE HAND MEDIA, INC. (HAND MEDIA or
Plaintiff), for its complaint against Defendant, THE J.M. SMUCKER COMPANY
(SMUCKER or Defendant), states and alleges as follows:

PARTIES
1. Plaintiff HAND MEDIA is a corporation organized and existing under the laws of
the State of Florida, with its principal place of business in Miami, Florida.
2. Plaintiff is informed and believes that Defendant SMUCKER is an Ohio
corporation.

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

Case 1:16-cv-20315-UU Document 1 Entered on FLSD Docket 01/27/2016 Page 2 of 10

JURISDICTION
3. This Court has subject matter jurisdiction over Plaintiffs federal action for
Declaratory Judgment of non-infringement of trademark rights under the
Declaratory Judgment Act, 28 U.S.C. 2201 and 2202 as well as pursuant to
15 U.S.C. 1121, and 28 U.S.C. 1331 and 1338 in that this Complaint raises
federal questions arising under the Lanham Act, 15 U.S.C. 1051 et seq.
4. This Court has personal jurisdiction over the Defendant, at least for the reason
that Defendant has, upon information and belief, sold products that are the
subject of this action in this district.
5. The causes of action against the Defendants arise pursuant to 48.193, Fla.
Stat. and from doing the following acts:
a. Operating, conducting, engaging in, or carrying on a business or business
venture in this state or having an office or agency in this state;
b. Committing a tortious act within this state;
c. Engaging in substantial and not isolated activity within this state, whether
such activity is wholly interstate, intrastate, or otherwise, whether or not
the claim arises from the activity.

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

Case 1:16-cv-20315-UU Document 1 Entered on FLSD Docket 01/27/2016 Page 3 of 10

VENUE
6. Venue lies in this judicial district pursuant to 28 U.S.C 1391 because:
a. The claims arise in the Southern District of Florida under 28 U.S.C.
1391(b)(2) and 1391(c), since a substantial part of the events giving rise to
Plaintiffs claim occurred in this district; and
b. Defendant is subject to personal jurisdiction in this district because it is
doing business in the Southern District of Florida by, among other things,
selling their products, which form the basis of the instant litigation, within
this district.
GENERAL ALLEGATIONS
7. HAND MEDIA is engaged in interstate and international commerce, specializing
in the marketing and sale of electronic cigarettes and related products and
accessories.
8. HAND MEDIA has become nationally-recognized within electronic cigarette
industry for its top quality products, services and innovation.
9. HAND MEDIAs inspiration for the its products sold and marketed under the
UNCRUSTABLE designation relates to the HAND MEDIAs proven technique of
coating the drip tip of its e-cigarette products with food grade PTFE (the same
material that makes a frying pan non-stick) which virtually eliminates any gunk or
crud residue which is typically associated with its competitors products.

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

Case 1:16-cv-20315-UU Document 1 Entered on FLSD Docket 01/27/2016 Page 4 of 10

10. On January 9, 2015, HAND MEDIA filed a trademark application, No. 86/500,081
for the word mark UNCRUSTABLE for Electronic cigarettes; Electronic smoking
pipes in international class 034, (HAND MEDIA Application). Exhibit A.
11. The HAND MEDIA Application was published on the Official Gazette on July 2,
2015, and on November 3, 2015, the HAND MEDIA Application matured into
United States Trademark Registration No. 4,847,852 for Electronic cigarettes;
Electronic smoking pipes in international class 034, (the HAND MEDIA
Registration or UNCRUSTABLE mark) . Exhibit B.
12. HAND MEDIA is informed and believes that SMUCKER is a marketer and
manufacturer of fruit spreads, peanut butter, sealed crustless sandwiches,
shortening and oils, ice cream toppings, baking mixes, pancake mixes and syrup,
coffee, and health and natural foods and beverages in North America.
13. HAND MEDIA is informed and believes that SMUCKER is the owner of United
States Trademark Registration No. 2,473,056 for the word mark
UNCRUSTABLES for FOOD, NAMELY, SANDWICHES in international class
030 (the UNCRUSTABLES mark). Exhibit C.
14. HAND MEDIA does not now, nor has it ever, sold or marketed any food related
products, nor are its products sold in the same channels of trade as SMUCKERs
crustless sandwich products marketed and sold under its UNCRUSTABLES
mark.

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

Case 1:16-cv-20315-UU Document 1 Entered on FLSD Docket 01/27/2016 Page 5 of 10

15. On September 1, 2015, SMUCKER sent a cease-and-desist letter to HAND


MEDIA alleging that its use of the UNCRUSTABLE mark (which it uses to sell
electronic cigarette and related accessories) putatively infringed on SMUCKERs
UNCRUSTABLES trademark, which it uses to sell crust-less peanut butter and
jelly sandwiches and the like. A copy of SMUCKERs September 1, 2015 letter is
attached hereto as Exhibit D.
16. Again, on September 1, 2015, SMUCKER sent another cease-and-desist letter
to HAND MEDIAthis time threating that unless HAND MEDIA complied its
demands SMUCKER would be forced to pursue other alternative methods to
address this matter, essentially threating litigation. Exhibit E
17. On December 3, 2015, SMUCKER filed proceeding No. 9,2062,741, with the
Trademark Trial and Appeal Board in an attempt to cancel the HAND MEDIA
Registration, (the TTAB Cancellation). Exhibit F.
18. During a telephone conversation with HAND MEDIAs counsel, SMUCKERs
counsel has threatened that it was considering filing a federal lawsuit for
trademark infringement against HAND MEDIA related to its use of the HAND
MEDIA Registration.
19. There exists no good faith basis for SMUCKER to allege or threaten that HAND
MEDIAs use of its UNCRUSTABLE mark (which it uses to sell electronic
cigarette and related accessories) infringes upon SMUCKERs trademark;
constitutes a reproduction, copy, counterfeit, or colorable imitation of Defendants

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

Case 1:16-cv-20315-UU Document 1 Entered on FLSD Docket 01/27/2016 Page 6 of 10

mark; constitutes unfair competition; dilutes or in any way creates a likelihood of


confusion with SMUCKERs UNCRUSTABLES trademark (which it uses to sell
crust-less peanut butter and jelly sandwiches and the like).
20. The allegations and/or threats contained in the SMUCKERs aforementioned
letters and telephone conversation were asserted wrongly, unreasonably, and in
bad faith.
21. SMUCKERs unfounded and bad faith allegations concerning HAND MEDIAs
UNCRUSTABLE mark causes harm to the value, reputation, and good will
associated with UNCRUSTABLE mark and related registration.
22. HAND MEDIA would sustain significant harm and/or damage if it were required to
cease use of its UNCRUSTABLE mark. Such harm and/or damage includes,
without limitation, the loss of good will associated with the HAND MEDIAs
UNCRUSTABLE mark and the expenditure of significant time, money, and
resources to develop, implement, and acquire goodwill and secondary meaning
associated with the mark.
23. Based on SMUCKERs allegations and threats contained in the aforementioned
letters and telephone conversation, HAND MEDIA has a reasonable
apprehension of litigation. Specifically, and without limitation, HAND MEDIA has
a reasonable apprehension SMUCKER will commence a suit against HAND
MEDIA for, without limitation, alleged trademark infringement, counterfeiting,
and/or unfair competition and dilution. The dispute between HAND MEDIA and

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

Case 1:16-cv-20315-UU Document 1 Entered on FLSD Docket 01/27/2016 Page 7 of 10

SMUCKER is definite and concrete, real and substantial, and touches upon the
legal relations of parties having adverse legal interests. This substantial
controversy is of sufficient immediacy and reality to warrant the issuance of a
declaratory judgment. Accordingly, a case or controversy under 28 U.S.C. 2201
exists.
COUNT I
DECLARATORY JUDGMENT THAT PLAINTIFFS MARK NEITHER VIOLATES THE
LANHAM ACT NOR CONSTITUTES TRADEMARK INFRINGEMENT
24. Plaintiff reavers paragraphs 1 through 23 and further avers:
25. HAND MEDIAs use of its UNCRUSTABLE mark (which it uses to sell electronic
cigarette and related accessories) is not likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation, connection, or association of HAND
MEDIA with SMUCKER or any other person, or as to the origin, sponsorship, or
approval of HAND MEDIAs goods by SMUCKER or any other person.
26. Accordingly, Plaintiff is entitled to a declaratory judgment that its use of the
UNCRUSTABLE mark does not violate Section 32 or Section 43(a) of the
Lanham Act, or constitute unfair competition or trademark infringement under the
common law of any state in the United States.
COUNT II
DECLARATORY JUDGMENT
OF NO TRADEMARK DILUTION OR TARNISHMENT

27. Plaintiff reavers paragraphs 1 through 23 and further avers:

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

Case 1:16-cv-20315-UU Document 1 Entered on FLSD Docket 01/27/2016 Page 8 of 10

28. SMUCKERs UNCRUSTABLES trademark is merely descriptive in that it directly


describes a characteristic, function, feature, purpose, or use of the products it
markets under its UNCRUSTABLES mark, namely crustless sandwiches.
29. SMUCKERs UNCRUSTABLES trademark is not distinctive, either inherently or
through acquired distinctiveness.
30. SMUCKERs UNCRUSTABLES trademark, which it uses to sell crust-less peanut
butter and jelly sandwiches and the like, is not famous.
31. HAND MEDIAs use of its UNCRUSTABLE mark (which it uses to sell electronic
cigarette and related accessories) is not likely dilute or tarnish the alleged
distinctive quality or harm the reputation of SMUCKERs UNCRUSTABLES
trademark (which it uses to sell crust-less peanut butter and jelly sandwiches and
the like).
32. Accordingly, Plaintiff is entitled to a declaratory judgment that its use, marketing,
sale, and/or offering for sale of electronic cigarette products under its
UNCRUSTABLE mark has not and does not dilute or tarnish SMUCKERs
UNCRUSTABLES trademark.
WHEREFORE, Plaintiff demands judgment against Defendants as follows:
A. For a declaratory judgment that:
a. HAND MEDIAs use of its UNCRUSTABLE mark does not violate
Section 32 or Section 43(a) of the Lanham Act, or constitute unfair

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

Case 1:16-cv-20315-UU Document 1 Entered on FLSD Docket 01/27/2016 Page 9 of 10

competition or trademark infringement under the common law of


any state in the United States.
b. HAND MEDIAs use, marketing, sale, and/or offering for sale of
electronic cigarette products under its UNCRUSTABLE mark has
not and does not dilute or tarnish SMUCKERs UNCRUSTABLES
trademark.
B. That the Court enter judgment enjoining SMUCKER, its agents, servants,
employees, attorneys from (1) interfering with, or threatening to interfere
with, use of the HAND MEDIAs UNCRUSTABLE mark by HAND MEDIA
or its agents, employees, representatives, licensees, vendors, customers,
successors, or assigns, and/or (2) threatening to institute or instituting any
action, including, without limitation, any administrative, USPTO, or
Trademark Trial and Appeal Board proceeding, or other district court
proceeding placing at issue the validity of UNCRUSTABLE mark or HAND
MEDIAs right to use UNCRUSTABLE mark.
C. That this Court grant to Plaintiff any further relief deemed just and proper.

DEMAND FOR JURY TRIAL


Plaintiff demands a trial by jury on all issues so triable.

Dated: January 27, 2016

Respectfully submitted,

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

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CHRISTOPHER J. VAN DAM, P.A.


Counsel for the Plaintiff.
300 Sevilla Avenue, Suite 309
Coral Gables, Florida 33134
Telephone No. (305) 921-9326
Facsimile No. (888) 506-2833
By:__/s/ Rick Ruz, Esq.__________
Rick Ruz, Esq.
Florida Bar No. 42090

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CHRISTOPHER J. VAN DAM, P.A.
300 Sevilla Avenue, Suite 309, Coral Gables, FL 33134 Telephone (305) 921-9326 Facsimile (888) 506-2833

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