IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF VIRGINIA CHARLOTTESVILLE DIVISION INSOMNIA COOKIES LLC, Plaintiff, v.

CIVIL ACTION NO: ________________

RED-EYE COOKIE COMPANY LLC,

JURY TRIAL DEMANDED

Defendant.

COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES Plaintiff Insomnia Cookies LLC (“Insomnia” or “Plaintiff”) files this Complaint for Injunctive Relief and Damages against Defendant Red-Eye Cookie Company LLC (“Red-Eye” or “Defendant”), and in support alleges as follows: NATURE AND BASIS OF ACTION 1.

This is an action for trademark and service mark infringement in violation of the

Federal Lanham Act, 15 U.S.C. § 1114(1), trademark and service mark infringement under the common law of the State of Virginia; unfair competition in violation of the Federal Lanham Act, 15 U.S.C. § 1125(a)(1)(A); unfair competition under the common law of the State of Virginia, and trademark dilution in violation of the Federal Lanham Act, 15 U.S.C. § 1125(c). Plaintiff seeks injunctive relief, damages, and recovery of its reasonable costs and attorneys’ fees. THE PARTIES 2.

Plaintiff Insomnia Cookies LLC is a limited liability corporation organized and

existing under the laws of the State of Delaware, having its principal place of business at 440 Park Avenue South, 14th Floor, New York, NY 10016. Insomnia is the owner of all right, title,

1 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 1 of 21 Pageid#: 1

and interest in and to the Insomnia Design Mark (defined below) and the Crescent Moon Design Mark (defined below). 3.

On information and belief, Defendant Red-Eye Cookie Company LLC is a limited

liability corporation organized and existing under the law of the State of Virginia, having its principal place of business at 2306 Parkwood Avenue, Richmond, VA 23220. On further information and belief, Red-Eye may be served by serving its Registered Agent, Brayden Pleasants, at 2306 Parkwood Avenue, Richmond, VA 23220. JURISDICTION AND VENUE 4.

This Court has original jurisdiction over the subject matter of this action pursuant

to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1337, and 1338, because this case arises under the Trademark Act of 1946, 15 U.S.C. §§ 1051, et seq. 5.

This Court has supplemental jurisdiction over Insomnia’s state law and common

law claims pursuant to 28 U.S.C. § 1367, because they are substantially related to Insomnia Cookies’ federal claims and arise out of the same case or controversy. 6.

This Court has personal jurisdiction over Defendant because Defendant has had

continuous and systematic contacts with the State of Virginia, including operating a retail store in Richmond, Virginia and, on information and belief, a second retail store that is scheduled to open in Charlottesville at 104 14th Street later this month or in early February. Defendant has also transacted business within this District, derived substantial revenue from goods used or consumed or services rendered in this District, and/or committed tortious acts within this District. The Charlottesville store will be in direct competition with a Charlottesville store owned by Insomnia, located at 1409 University Avenue, Charlottesville, VA 22903, and irreparable harm will occur in this District should the relief sought herein not be granted.

2 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 2 of 21 Pageid#: 2

7.

Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and (c) and

§ 1404(b) because a substantial part of the events giving rise to Insomnia’s claims have occurred and are continuing to occur in this District, including a new retail store at 104 14th Street that will irreparably harm Insomnia’s business. FACTUAL BACKGROUND Insomnia Cookies and its Marks 8.

Insomnia is well-known in the industry as successfully launching the concept of

selling and delivering warm, freshly-baked cookies and other baked goods to students on college campuses, especially late at night. 9.

Insomnia was founded by Seth Berkowitz in 2003 from his college house while

attending the University of Pennsylvania. Mr. Berkowitz started baking and delivering warm, freshly-baked cookies to students on or around the University of Pennsylvania campus, and Insomnia was born. 10.

Over the past 13 years, Insomnia has experienced tremendous success and has

expanded its business to over 100 locations and 30 states, and currently has plans to open at least 30 additional locations in 2017 alone. 11.

Insomnia offers many varieties of freshly-baked cookies and other baked goods

delivered to individuals as late as 3 AM. While Insomnia started years ago by primarily serving college students and other consumers that enjoy late night deliveries of freshly-baked cookies, baked goods, milk, and ice cream, Insomnia now sells its cookies and other baked goods to individuals and businesses from its retail bakeries, which are open late into the night, via its website located at the URL , and offers catering services for

3 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 3 of 21 Pageid#: 3

parties and other events in select locations. Insomnia also offers nationwide shipping of its cookies and other baked goods via its website. 12.

Insomnia currently operates five retail bakeries in Virginia, including stores

located in Richmond, Norfolk, Blacksburg, Harrisonburg, and Charlottesville. Specifically, Insomnia’s Richmond store is located at 918 W. Grace Street, Richmond, VA 23220, and Insomnia’s Charlottesville store is located at 1409 University Avenue, Charlottesville, VA 22903. 13.

Since at least as early as 2003, Insomnia has continuously used the word and

design mark shown below (“the Insomnia Design Mark”) in interstate commerce to identify its sale and delivery of bakery goods and related goods and services:

14.

As shown above, the Insomnia Design Mark predominantly features a crescent

moon design. To the best of Insomnia’s knowledge, the use of a trademark and service mark containing a crescent moon design is unique to Insomnia with respect to the sale and delivery of bakery goods. 15.

Since at least as early as 2006, Insomnia has also used solely the crescent moon

design shown above as a stand-alone design mark in interstate commerce to identify its sale and 4 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 4 of 21 Pageid#: 4

delivery of bakery goods and services. Examples of the stand-alone use of the crescent moon design (“the Crescent Moon Design Mark”) are shown below:

\

16.

Insomnia has made extensive use of both the Insomnia Design Mark and Crescent

Moon Design Mark in the advertising, promotion, and sale of its goods and services. Insomnia 5 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 5 of 21 Pageid#: 5

has used the marks on: product packaging; signage for its retail bakeries; printed materials; print and online advertisements; and delivery vehicles. Insomnia has also made extensive use of the marks on various social media outlets, such as Facebook, Twitter, and Instagram. 17.

As a result of its long-term and widespread use of the marks, and the popularity of

its bakery goods and delivery services, Insomnia has received a substantial amount of favorable publicity. By way of example, Insomnia has been featured on the Today show, ABC News, CNBC, the New York Times, the Chicago Tribune, Food Network, Huffington Post, Forbes, INC, Business Insider, as well as numerous local and regional based publications. 18.

Insomnia spends substantial sums annually to promote the goods and services it

sells under its Insomnia Design Mark and Crescent Moon Design Mark, and Insomnia generates substantial revenue from the sale of such goods and services. 19.

As a result of the long-term and widespread use of its marks in connection with

the sale and delivery of bakery goods, and the substantial amount of favorable publicity surrounding Insomnia’s goods and services, Insomnia has built up considerable goodwill in both the Insomnia Design Mark and the Crescent Moon Design Mark, and consumers have come to associate both marks with the sale and delivery of cookies and other bakery goods by Insomnia. As a result, Insomnia’s marks have been closely identified with the goods and services of Insomnia, have gained substantial widespread public recognition, and have achieved a level of recognition such that the marks are famous marks throughout the United States. The Insomnia Design Mark and Crescent Moon Design Mark acquired such fame well prior to the date on which Defendants commenced the acts complained of herein. 20.

In recognition of Insomnia’s rights in and to the Insomnia Design Mark, the

United States Patent and Trademark Office (“USPTO”) has granted Insomnia a federal

6 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 6 of 21 Pageid#: 6

registration for its mark.

Specifically, Insomnia owns U.S. Trademark Registration No.

3,475,344 (“the ’344 Registration”) for the Insomnia Design Mark (for use in connection with: bakery goods, cookies, and brownies; food delivery; and the delivery of goods by messenger). A copy of the ’344 Registration is attached hereto as Exhibit A. 21.

In accordance with Sections 7, 22, and 33(a) of the Trademark Act of 1946, 15

U.S. C. §§ 1057, 1072, and 1115(a), the Insomnia’s federal trademark registration is valid and subsisting in law, was duly and legally issued, and is prima facie evidence of the validity of the mark registered, and constitutes constructive notice of the ownership of the mark by Insomnia. In addition, Insomnia’s federal trademark registration has become incontestable pursuant to Section 15 of the Trademark Act of 1946, 15 U.S.C. § 1065, and, pursuant to Section 33(b) of the Act, 15 U.S.C. § 1115(b), this registration is therefore conclusive evidence of Insomnia’s exclusive right to use the Insomnia Design Mark. 22.

Insomnia Cookies has also filed an application, Application Serial No. 87/057,460

(“the ‘460 Application”) for federal registration of the Crescent Moon Design Mark (for use in connection with: bakery goods, cookies, and brownies; food delivery; and the delivery of goods by messenger). A copy of the ‘460 Application is attached hereto as Exhibit B. DEFENDANT’S WRONGFUL CONDUCT 23.

Upon information and belief, Red-Eye owns and operates a retail bakery and

delivery service located at 935 W. Grace Street, Richmond, VA 23220. Red-Eye’s Grace Street location in Richmond is located on the same block as Insomnia’s Richmond location, which, as noted above, is located at 918 W. Grace Street, Richmond, VA 23220. 24.

Upon information and belief, Red-Eye plans to open a retail bakery and delivery

service located at 104 14th Street, Charlottesville, VA 22902. Red-Eye’s 14th Street location

7 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 7 of 21 Pageid#: 7

will be located around the corner from Insomnia’s Charlottesville location, which, as noted above, is located at 1409 University Avenue, Charlottesville, VA 22903. 25.

Like Insomnia’s retail bakeries, Red Eye operates retail bakeries open late into the

night that specialize in warm, freshly-baked cookies, baked goods, milk, coffee, and ice cream. Like Insomnia, Red-Eye also offers the late night delivery of freshly-baked cookies, baked goods, milk, coffee, and ice cream, with a focus on serving college students and other consumers that enjoy late night deliveries. 26.

Upon information and belief, Red Eye adopted and is using a crescent moon

design in connection with its retail bakeries and its goods and services with full knowledge of Insomnia and its exclusive rights to the Insomnia Design Mark and the Crescent Moon Design Mark, and with full knowledge that Red Eye has no legal right to use a crescent moon design to promote or sell their own goods or services. 27.

For example, a side-by-side comparison of Insomnia’s and Red-Eye’s respective

crescent moon design marks are shown below:

28.

Red-Eye also uses a crescent moon design mark throughout its retail bakeries,

throughout its website, and on its packaging for its cookies and other baked goods. Representative examples are shown below:

8 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 8 of 21 Pageid#: 8

9 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 9 of 21 Pageid#: 9

10 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 10 of 21 Pageid#: 10

29.

In addition to adopting a nearly identical design mark, Red-Eye has also adopted

and is using a name that has the same commercial impression as Insomnia’s name. The name INSOMNIA COOKIES gives the commercial impression that Insomnia provides cookies to consumers who are up late at night or who are unable to sleep at night. The name RED-EYE COOKIE CO. similarly gives the commercial impression that Red Eye provides cookies to consumers who are up late at night or who are unable to sleep at night. 30.

Upon information and belief, Red-Eye has also adopted and mimics Insomnia’s

business plan, opening retail bakeries on the same block or within a block of Insomnia’s existing stores, and using a look and presentation that mimics Insomnia’s look and presentation, as shown in the representative examples below:

INJURY TO INSOMNIA AND THE PUBLIC 31.

Upon information and belief, Red-Eye is using their marks with the purpose and

intent of trading on the goodwill that Insomnia has developed in the Insomnia Design Mark and the Crescent Moon Design Mark, and in a manner designed to mislead consumers into believing

11 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 11 of 21 Pageid#: 11

that Red-Eye and/or their goods and services are affiliated or associated with, or endorsed or sponsored by, Insomnia. 32.

Red-Eye’s adoption and use of a mark that predominantly features a crescent

moon design and a stand-alone crescent moon design is likely to cause consumers to believe, mistakenly, that Red-Eye’s goods and services originate from, are associated or affiliated with, or sponsored or endorsed by Insomnia. Specifically, the companies’ goods and services are very similar, it not identical, the companies’ operate in the same markets, the companies target the same customers, the companies advertise and promote their goods and services in the same or similar media, and Red Eye is using one or more marks that feature a crescent moon design as the dominant design element of those marks. 33.

Red-Eye’s adoption and use of a mark that predominantly features a crescent

moon design and a stand-alone crescent moon design is likely to cause consumer confusion that has and will continue to damage Insomnia. 34.

Moreover, any defect with, objection to, of fault found with the goods and

services offered for sale and sold under Red-Eye’s marks would necessarily reflect upon and seriously injure the reputation and goodwill that Insomnia has established in its marks for the goods and services offered for sale and sold in connection with Insomnia’s marks. 35.

Red-Eye’s infringing actions have damaged and irreparably injured Insomnia’s

reputation and goodwill, in addition to the public’s interest in being free from confusion. 36.

Upon information and belief, Red-Eye has acted knowingly, willfully, in reckless

disregard of Insomnia’s rights, and in bad faith, as evidenced in part by its copying and/or mimicking of Insomnia’s crescent moon design, the commercial impression of Insomnia’s marks, and look and presentation of Insomnia’s business plan.

12 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 12 of 21 Pageid#: 12

37.

Insomnia has repeatedly attempted to resolve this dispute without the need for

judicial intervention. Specifically, Insomnia contacted Red-Eye via a letter dated July 31, 2015 in an effort to discuss an amicable solution that would avoid any potential for confusion between Insomnia’s and Red-Eye’s marks and their related goods and services. A copy of the July 31, 2015 letter is attached hereto as Exhibit C. 38.

Rather than contact Insomnia, Red-Eye ignored Insomnia’s efforts, and proceeded

with filing a trademark application on September 10, 2015 with full knowledge of Insomnia’s rights in its marks. 39.

Insomnia once again contacted Red-Eye via letter dated November 4, 2015 in an

effort to discuss an amicable solution that would avoid any potential for confusion between Insomnia’s and Red-Eye’s marks and their related goods and services. A copy of the November 4, 2015 letter is attached hereto as Exhibit D. 40.

Red-Eye, once again, ignored Insomnia’s efforts and proceeded with prosecuting

its trademark application. As a result, Insomnia was forced to file an Opposition proceeding before the USPTO to challenge Red Eye’s trademark application. 41.

Upon learning of Red-Eye’s recent plans to open a second retail bakery in

Charlottesville, and in light of Red-Eye’s unwillingness to discuss an amicable solution to this dispute, Insomnia was left with no option but to file this lawsuit to enforce its exclusive rights in the Insomnia Design Mark and the Crescent Moon Design Mark. COUNT I Federal Trademark and Service Mark Infringement 42.

Insomnia incorporates by reference the allegations contained in paragraphs 1 – 41

of this Complaint, as if fully set forth herein.

13 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 13 of 21 Pageid#: 13

43.

Insomnia’s federally registered Insomnia Design Mark and the Crescent Moon

Design Mark serve to identify to the public certain goods and services that are offered by Insomnia alone, and the goods and services offered in connection with those marks are regarded by the public as being offered by, sponsored by, approved by, authorized by, associated with, or affiliated with Insomnia. 44.

Red-Eye has adopted and is using a colorable imitation Insomnia’s federally

registered Insomnia Design Mark and the Crescent Moon Design Mark, without authorization, in commerce in connection with the sale, offering for sale, distribution, and advertising of bakery goods and delivery services related thereto, and such use is likely to cause confusion, mistake, or deception as to the true source or sponsorship of such goods and services. 45.

Red-Eye’s conduct will enable Red-Eye to earn profits to which Red-Eye is not in

law, equity, or good conscience entitled, and has unjustly enriched Red-Eye, all to Red-Eye’s profit and Insomnia’s damage and detriment. 46.

Red-Eye’s conduct constitutes trademark and service mark infringement in

violation of Section 32(1) of the Trademark Act of 1946, 15 U.S.C. § 1114(1). 47.

As a direct and proximate result of Red-Eye’s unlawful conduct in violation of 15

U.S.C. § 1114(1), Insomnia has suffered actual and irreparably injury for which no adequate remedy exists at law. Red-Eye’s wrongful conduct will continue to cause such injury unless enjoined by the Court. COUNT II Common Law Trademark and Service Mark Infringement 48.

Insomnia incorporates by reference the allegations contained in paragraphs 1 – 41

of this Complaint, as if fully set forth herein.

14 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 14 of 21 Pageid#: 14

49.

Insomnia, by virtue of its prior adoption and use of the Insomnia Design Mark

and the Crescent Moon Design Mark in interstate commerce, has acquired, established, and owns valuable common law rights in the Insomnia Design Mark and the Crescent Moon Design Mark, which serve to identify goods and services offered by Insomnia alone, and the goods and services offered in connection with those marks are regarded by the public as being offered by, sponsored by, approved by, authorized by, associated with, or affiliated with Insomnia. 50.

Red-Eye has adopted and is using a colorable imitation Insomnia’s Design Mark

and the Crescent Moon Design Mark, without authorization, in commerce in connection with the sale, offering for sale, distribution, and advertising of bakery goods and delivery services related thereto, and such use is likely to cause confusion, mistake, or deception as to the true source or sponsorship of such goods and services. 51.

Red-Eye’s conduct will enable Red-Eye to earn profits to which Red-Eye is not in

law, equity, or good conscience entitled, and has unjustly enriched Red-Eye, all to Red-Eye’s profit and Insomnia’s damage and detriment. 52.

Red-Eye’s conduct constitutes trademark and service mark infringement in

violation of the common law of the State of Virginia. 53.

As a direct and proximate result of Red-Eye’s trademark and service mark

infringement, Insomnia has suffered actual and irreparable injury for which no adequate remedy at law exists. Red-Eye’s wrongful conduct will continue to cause such injury unless enjoined by the Court.

15 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 15 of 21 Pageid#: 15

COUNT III Federal Unfair Competition 54.

Insomnia incorporates by reference the allegations contained in paragraphs 1 – 41

of this Complaint, as if fully set forth herein. 55.

Red-Eye has adopted and is using a colorable imitation Insomnia’s Design Mark

and the Crescent Moon Design Mark, without authorization, in commerce in connection with the sale, offering for sale, distribution, and advertising of bakery goods and delivery services related thereto, and such use is likely to cause confusion, mistake, or deception as to the true source or sponsorship of such goods and services. 56.

Red-Eye’s conduct will enable Red-Eye to earn profits to which Red-Eye is not in

law, equity, or good conscience entitled, and has unjustly enriched Red-Eye, all to Red-Eye’s profit and Insomnia’s damage and detriment. 57.

Red-Eye’s conduct constitutes unfair competition in violation of the Federal

Lanham Act, 15 U.S.C. § 1125(a)(1)(A). 58.

As a direct and proximate result of Red-Eye’s conduct in violation of 15 U.S.C. §

1125(a)(1)(A), Insomnia has suffered actual and irreparable injury for which no adequate remedy exists at law. Red-Eye’s wrongful conduct will continue to cause such injury unless enjoined by this Court. COUNT IV Common Law Unfair Competition 59.

Insomnia incorporates by reference the allegations contained in paragraphs 1 –

41 of this Complaint, as if fully set forth herein.

16 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 16 of 21 Pageid#: 16

60.

Red-Eye has adopted and is using a colorable imitation Insomnia’s Design Mark

and the Crescent Moon Design Mark, without authorization, in commerce in connection with the sale, offering for sale, distribution, and advertising of bakery goods and delivery services related thereto, and such use is likely to cause confusion, mistake, or deception as to the true source or sponsorship of such goods and services. 61.

Red-Eye’s conduct will enable Red-Eye to earn profits to which Red-Eye is not in

law, equity, or good conscience entitled, and has unjustly enriched Red-Eye, all to Red-Eye’s profit and Insomnia’s damage and detriment. 62.

Red-Eye’s conduct constitutes unfair competition in violation of the common law

of the State of Virginia. 63.

As a direct and proximate result of Red-Eye’s conduct, Insomnia has suffered

actual and irreparable injury for which no adequate remedy exists at law. Red-Eye’s wrongful conduct will continue to cause such injury unless enjoined by this Court. COUNT V Federal Trademark Dilution 64.

Insomnia incorporates by reference the allegations contained in paragraphs 1 – 41

of this Complaint, as if fully set forth herein. 65.

By virtue of years of the long-term and widespread use of its marks in connection

with the sale and delivery of bakery goods, and the substantial amount of favorable publicity surrounding Insomnia’s goods and services, Insomnia has built up considerable goodwill in both the Insomnia Design Mark and the Crescent Moon Design Mark, and consumers have come to associate both marks with the sale and delivery of cookies and other bakery goods by Insomnia.

17 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 17 of 21 Pageid#: 17

66.

As a result, Insomnia’s marks have been closely identified with the goods and

services of Insomnia, have gained substantial widespread public recognition, and have achieved a level of recognition such that the marks are famous marks throughout the United States. The Insomnia Design Mark and Crescent Moon Design Mark acquired such fame well prior to the date on which Defendants commenced the acts complained of herein. 67.

Red-Eye has adopted and is using a colorable imitation of the Insomnia Design

Mark and Crescent Moon Design Mark, without authorization, in commerce in connection with the sale, offering for sale, and delivery of bakery goods. 68.

Red-Eye’s use has occurred after Insomnia’s marks became famous, and Red-

Eye’s use dilutes the distinctive quality of Insomnia’s marks, including by blurring and tarnishment. 69.

Red-Eye’s conduct constitutes trademark dilution in violation of the Federal

Lanham Act, 15 U.S.C. § 1125(c). 70.

As a direct and proximate result of Red-Eye’s conduct in violation of 15 U.S.C. §

1125(c), Insomnia has suffered actual and irreparable injury for which no adequate remedy exists at law. Red-Eye’s wrongful conduct will continue to cause such injury unless enjoined by this Court. JURY DEMAND Insomnia hereby requests a trial by jury of all issues raised in this Complaint. PRAYER FOR RELIEF WHEREFORE, by virtue of Defendant Red-Eye’s unlawful conduct as alleged in Counts I through V of this Complaint, Plaintiff Insomnia respectfully prays that:

18 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 18 of 21 Pageid#: 18

1.

The Court enter judgment that the Insomnia Design Mark and Crescent Moon

Design Mark are valid and enforceable, and that Defendant, as a result of its unauthorized use of a colorable imitation of Insomnia’s mark, has: a. infringed, either directly or contributorily, Insomnia’s rights in its marks in violation of 15 U.S.C. § 1114(1) and the common law of the State of Virginia; b. engaged in unfair competition with Insomnia in violation of 15 U.S.C. § 1125(a)(1)(A) and the common law of the State of Virginia; and, c. diluted the distinctive quality of Insomnia’s rights in its marks in violation of 1125(c). 2.

The Court issue a preliminary and permanent injunction enjoining Defendant and

their related companies, officers, agents, employees, attorneys, and/or representatives, and all those persons in active concert or participation with them, from: a. using the Insomnia Design Mark, the Crescent Moon Design Mark, or any other confusingly similar mark, design, or designation thereto, such as the marks shown on Pages 9 and 10 of this Complaint, and any other representation that falsely describes or represents any association, approval, or sponsorship of Defendant’s goods or services by Insomnia; b. otherwise competing unfairly with Insomnia; and, c. otherwise diluting the distinctive quality of the Insomnia Design Mark and the Crescent Moon Design Mark. 3.

Pursuant to Section 36 of the Trademark Act of 1946, 15 U.S.C. § 1118, Defendant

be directed to deliver up to Insomnia for destruction all advertising and promotional materials, signs, business cards, product packaging, and all other materials which bear a colorable imitation

19 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 19 of 21 Pageid#: 19

of the Insomnia Design Mark or the Crescent Moon Design Mark, or any confusingly similar variation thereof, such as the marks shown on Pages 9 and 10 of this Complaint. 4.

Pursuant to Section 35 of the Trademark Act of 1946, 15 U.S.C. § 1117, an

accounting be had and judgment be entered against Defendant for profits, gains, and advantage derived from their wrongful actions and the damages sustained by Insomnia as a result of Defendant’s actions, with such amounts to be trebled as provided by law because of the willful and deliberate nature of Defendant’s actions; 5.

Defendant be required to pay Insomnia actual damages and enhanced damages in

light of the willful and deliberate nature of their actions; 6.

Pursuant to Section 35 of the Trademark Act of 1946, 15 U.S.C. § 1117(a),

Defendant be required to pay Insomnia the cost of this action and the reasonable attorneys’ fees Insomnia has incurred in connection with this action; and, 7.

Insomnia be granted such other and further relief as the Court deems just and

proper. Respectfully submitted this 26th day of January, 2017, INSOMNIA COOKIES LLC by Counsel

/s/ Richard Armstrong Richard Armstrong, Esq. (VSB #: 46053) LENHART PETTIT PC 530 East Main Street PO Box 2057 Charlottesville, Virginia 22902 Tel: (434) 220-6110 Fax: (434) 977-5109 Email: [email protected]

20 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 20 of 21 Pageid#: 20

THOMAS HORSTEMEYER Scott P. Amy, Esq. Wesley Roberts, Esq. (pro hac vice to be submitted) 400 Interstate North Parkway SE Suite 1500 Atlanta, Georgia 30339-5029 Tel: (770) 933-9500 Fax: (770) 996-2552 Email: [email protected] Counsel for Plaintiff Insomnia Cookies LLC

21 Case 3:17-cv-00005-GEC Document 1 Filed 01/26/17 Page 21 of 21 Pageid#: 21

Case 3:17-cv-00005-GEC Document 1-1 Filed 01/26/17 Page 1 of 1 Pageid#: 22

Exhibit A

Case 3:17-cv-00005-GEC Document 1-2 Filed 01/26/17 Page 1 of 2 Pageid#: 23

Case 3:17-cv-00005-GEC Document 1-2 Filed 01/26/17 Page 2 of 2 Pageid#: 24

Exhibit B

Case 3:17-cv-00005-GEC Document 1-3 Filed 01/26/17 Page 1 of 6 Pageid#: 25

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006) OMB No. 0651-0009 (Exp 02/28/2018)

Trademark/Service Mark Application, Principal Register Serial Number: 87057460 Filing Date: 06/02/2016

To the Commissioner for Trademarks: MARK: (Stylized and/or Design, see mark) The applicant is not claiming color as a feature of the mark. The mark consists of a circular shape with a concave section to resemble a cookie that has been partially eaten into the shape of a crescent moon. The applicant, Insomnia Cookies, LLC, a limited liability company legally organized under the laws of Pennsylvania, having an address of 440 Park Avenue South, 14th Floor New York, New York 10016 United States 770-933-9500(phone) 770-951-0933(fax) [email protected] (not authorized) requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following: International Class 030: bakery goods, cookies and brownies In International Class 030, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at least as early as 01/18/2007, and first used in commerce at least as early as 01/18/2007, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) Marketing material showing the mark as used in commerce. Specimen File1 International Class 039: food delivery; delivery of goods by messenger In International Class 039, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at least as early as 01/18/2007, and first used in commerce at least as early as 01/18/2007, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) Marketing material showing the mark as used in commerce. Specimen File1

The applicant's current Attorney Information: Scott P. Amy and George M. Thomas, Scott A. Horstemeyer, Scott Amy, Marlena F. Burt, N. Andrew Crain, Michael J. D'Aurelio, Todd Deveau, Jason Fletcher, Heather Gorman, Robert Gravois, Daniel R. Gresham, Charles Griggers, Karen Hazzah, David Hayzer, Thomas Hildebrandt, Kenneth A. Knox, Cynthia J. Lee, Christopher B. Linder, John Lyon, Mark Magaro, Eric Maurer, Carin Miller, Daniel Osborne, Jason Perilla, R. David Pointer, Arvind Reddy, Melissa Rhoden, David R. Risley, Wesley Roberts, Randy Schoen, and Adam Thompson of Thomas | Horstemeyer, LLP 400 Interstate North Parkway, SE #1500 Atlanta, Georgia 30339 United States 770-933-9500(phone) 770-951-0933(fax) [email protected] (authorized) The attorney docket/reference number is 850901-3010. The applicant's current Correspondence Information: Scott P. Amy Thomas | Horstemeyer, LLP

Case 3:17-cv-00005-GEC Document 1-3 Filed 01/26/17 Page 2 of 6 Pageid#: 26

400 Interstate North Parkway, SE #1500 Atlanta, Georgia 30339 770-933-9500(phone) 770-951-0933(fax) [email protected];[email protected]; [email protected]; [email protected] (authorized) E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant or applicant's attorney at the e-mail address provided above. I understand that a valid e-mail address must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the Trademark Electronic Application System (TEAS). Failure to do so will result in an additional processing fee of $50 per international class of goods/services. A fee payment in the amount of $550 has been submitted with the application, representing payment for 2 class(es). Declaration The signatory believes that: if the applicant is filing the application under 15 U.S.C. § 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant is using the mark in commerce on or in connection with the goods/services in the application; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed an application under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the goods/services in the application. The signatory believes that to the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true. Declaration Signature Signature: /Scott P. Amy/ Date: 06/02/2016 Signatory's Name: Scott P. Amy Signatory's Position: Attorney of Record, GA Bar Member RAM Sale Number: 87057460 RAM Accounting Date: 06/02/2016 Serial Number: 87057460 Internet Transmission Date: Thu Jun 02 10:49:30 EDT 2016 TEAS Stamp: USPTO/BAS-XX.XX.XXX.XXX-2016060210493048 2415-87057460-550eadef7f53919a7a557bd353 4bd8d7fa5695745a78824e970f4bba6696c26-DA -11055-20160602095047073920

Case 3:17-cv-00005-GEC Document 1-3 Filed 01/26/17 Page 3 of 6 Pageid#: 27

Case 3:17-cv-00005-GEC Document 1-3 Filed 01/26/17 Page 4 of 6 Pageid#: 28

Case 3:17-cv-00005-GEC Document 1-3 Filed 01/26/17 Page 5 of 6 Pageid#: 29

Case 3:17-cv-00005-GEC Document 1-3 Filed 01/26/17 Page 6 of 6 Pageid#: 30

Exhibit C

Case 3:17-cv-00005-GEC Document 1-4 Filed 01/26/17 Page 1 of 4 Pageid#: 31



Scott P. Amy Direct Dial: 678-996-2552 [email protected]

July 31, 2015

VIA FEDEX OVERNIGHT and EMAIL ([email protected]) Brayden Pleasants Red Eye Cookie Co. 2306 Parkwood Avenue Richmond, VA 23220 Re:

INSOMNIA COOKIES Trademark

Dear Mr. Pleasants: This law firm represents Insomnia Cookies, LLC (“Insomnia Cookies”) in connection with intellectual property matters. As you may be aware, Insomnia Cookies is an industry leading company that offers many varieties of fresh-baked cookies and other baked goods delivered as late as 3 AM. While primarily serving consumers that enjoy late night deliveries of cookies and other baked goods, Insomnia Cookies also sells its cookies and baked goods from its retail bakeries, offers nationwide delivery of cookies via common carrier, and offers a catering menu for businesses, parties, and other events at select locations. Over the past 12 years, Insomnia Cookies has expanded its business to more than 50 locations, and plans to open additional locations next year. Since 2003, Insomnia Cookies has used the distinctive Insomnia Cookies trademark and service mark depicted below (“the Insomnia Cookies Design Mark”) in interstate commerce to identify its sale and delivery of bakery goods. Insomnia Cookies

spends substantial sums annually to promote the sale and delivery of bakery goods under this mark, and has made extensive use of this mark in the advertising, promotion, and sale Case 3:17-cv-00005-GEC Document 1-4 Filed 01/26/17 Page 2 of 4 Pageid#: 32

Mr. Brayden Pleasants July 31, 2015 Page 2 of 3

of its goods and services. As a result of its long-term and widespread use of the Insomnia Cookies Design Mark, Insomnia Cookies has received a substantial amount of favorable publicity surrounding its goods and services. By way of example, Insomnia Cookies has been featured on the Today show, ABC News, and in the Chicago Tribune. As a result of its long-term and widespread use of the Insomnia Cookies Design Mark, and the substantial amount of favorable publicity surrounding Insomnia Cookies’ goods and services, Insomnia has built up considerable goodwill in the Insomnia Cookies Design Mark, and consumers have come to associate the design mark with the sale and delivery of cookies and other baked goods by Insomnia Cookies. In recognition of Insomnia Cookies’ exclusive rights in this mark, the U.S. Patent and Trademark Office has issued our client U.S. Trademark Reg. No. 3,475,344 (“the ’344 Registration”) on the principal register. The ’344 Registration grants Insomnia Cookies nationwide priority and rights to use the Insomnia Cookies Design Mark in connection with the sale and delivery of bakery goods in the United States. It has recently come to Insomnia Cookies attention that Red Eye Cookie Co. has adopted and is using the logo depicted below to market and promote the sale and delivery of fresh baked cookies in Richmond, Virginia. Insomnia Cookies is concerned that your adoption and use of the logo below may cause consumers to believe, mistakenly, that

your products and services originate from, are associated or affiliated with, or sponsored or endorsed by Insomnia Cookies. Specifically, the companies’ goods and services are very similar, if not identical, the companies operate in the same market, the companies advertise and promote their goods and services in the same or similar media, and Red Eye Cookie Co. is using the image of a partially eaten cookie as the dominant design element of its logo. As a result, we believe that one or more of these similarities may lead consumers into believing that your business and goods and services are associated or affiliated with Insomnia Cookies. Insomnia Cookies believes that it is in both companies’ interests to discuss an amicable solution that will avoid any potential for confusion between the two companies





Case 3:17-cv-00005-GEC Document 1-4 Filed 01/26/17 Page 3 of 4 Pageid#: 33

Mr. Brayden Pleasants July 31, 2015 Page 3 of 3

and their respective goods and services. We look forward to hearing from you to discuss this issue further.













Sincerely,

Scott P. Amy cc:

Insomnia Cookies, LLC











Case 3:17-cv-00005-GEC Document 1-4 Filed 01/26/17 Page 4 of 4 Pageid#: 34

Exhibit D

Case 3:17-cv-00005-GEC Document 1-5 Filed 01/26/17 Page 1 of 4 Pageid#: 35



Scott P. Amy Direct Dial: 678-996-2552 [email protected]

November 4, 2015

VIA FEDEX OVERNIGHT and EMAIL ([email protected]) Brayden Pleasants Red Eye Cookie Co. 935 W. Grace Street Richmond, VA 23220 Re:

INSOMNIA COOKIES Trademark

Dear Mr. Pleasants: I write to follow up our prior correspondence dated July 31, 2015 regarding Red Eye Cookie Co.’s adoption and ongoing use of the logo referenced below. As set forth in our prior correspondence, this law firm represents Insomnia Cookies in connection with intellectual property matters. As you are now well aware, Insomnia Cookies is an industry leading company that offers many varieties of fresh-baked cookies and other baked goods delivered as late as 3 AM. While primarily serving consumers that enjoy late night deliveries of cookies and other baked goods, Insomnia Cookies also sells its cookies and baked goods from its retail bakeries, offers nationwide delivery of cookies via common carrier, and offers a catering menu for businesses, parties, and other events at select locations. Over the past 12 years, Insomnia Cookies has expanded its business to more than 50 locations, and plans to open additional locations next year. Since 2003, Insomnia Cookies has used the distinctive Insomnia Cookies trademark and service mark depicted below (“the Insomnia Cookies Design Mark”) in interstate commerce to identify its sale and delivery of bakery goods. Insomnia Cookies

Case 3:17-cv-00005-GEC Document 1-5 Filed 01/26/17 Page 2 of 4 Pageid#: 36

Mr. Brayden Pleasants November 4, 2015 Page 2 of 3

spends substantial sums annually to promote the sale and delivery of bakery goods under this mark, and has made extensive use of this mark in the advertising, promotion, and sale of its goods and services. As a result of its long-term and widespread use of the Insomnia Cookies Design Mark, Insomnia Cookies has received a substantial amount of favorable publicity surrounding its goods and services. By way of example, Insomnia Cookies has been featured on the Today show, ABC News, and in the Chicago Tribune. As a result of its long-term and widespread use of the Insomnia Cookies Design Mark, and the substantial amount of favorable publicity surrounding Insomnia Cookies’ goods and services, Insomnia has built up considerable goodwill in the Insomnia Cookies Design Mark, and consumers have come to associate the design mark with the sale and delivery of cookies and other baked goods by Insomnia Cookies. In recognition of Insomnia Cookies’ exclusive rights in this mark, the U.S. Patent and Trademark Office has issued our client U.S. Trademark Reg. No. 3,475,344 (“the ’344 Registration”) on the principal register. The ’344 Registration grants Insomnia Cookies nationwide priority and rights to use the Insomnia Cookies Design Mark in connection with the sale and delivery of bakery goods in the United States. It has recently come to Insomnia Cookies attention that Red Eye Cookie Co. has adopted and continues to use the logo depicted below to market and promote the sale and delivery of fresh baked cookies in Richmond, Virginia. We further understand that, since our prior correspondence, Red Eye Cookie Co. has moved to a new location that is less than two blocks from Insomnia Cookies’ existing location in Richmond, and has filed U.S. Trademark Application No. 86/752,582 for a word and design mark containing the logo depicted below.

Insomnia Cookies is significantly concerned that your adoption and use of the above logo may cause consumers to believe, mistakenly, that your products and services originate from, are associated or affiliated with, or sponsored or endorsed by Insomnia Cookies. Specifically, the companies’ goods and services are very similar, if not identical, the companies operate in the same market (now only steps away from each other), the companies advertise and promote their goods and services in the same or similar media,



Case 3:17-cv-00005-GEC Document 1-5 Filed 01/26/17 Page 3 of 4 Pageid#: 37

Mr. Brayden Pleasants November 4, 2015 Page 3 of 3

and Red Eye Cookie Co. is using the image of a partially eaten cookie in the shape of a crescent as the dominant design element of its logo. As a result, we believe that one or more of these similarities may lead consumers into believing that your business and goods and services are associated or affiliated with Insomnia Cookies. Insomnia Cookies believes that it is in both companies’ interests to discuss an amicable solution that will avoid any potential for confusion between the two companies and their respective goods and services. However, we must hear from you in order to discuss such a solution. Please contact us at your earliest convenience to that we may discuss this issue further.













Sincerely,

Scott P. Amy cc:

Insomnia Cookies, LLC











Case 3:17-cv-00005-GEC Document 1-5 Filed 01/26/17 Page 4 of 4 Pageid#: 38