Beruflich Dokumente
Kultur Dokumente
Plaintiff,
v. Case No.:
Defendants,
COMPLAINT
Plaintiffs Rainbow Cone, LLC and Five Flavors, LLC (collectively “Rainbow Cone”)
bring this Complaint against Defendants SK Creameries Homer Glen LLC, SK Creameries
Manhattan, LLC, and SK Creameries New Lenox LLC, (collectively “SK Creameries” or
“Defendants”) as follows:
Introduction
1. Since 1926, and from its location in Chicago’s Beverly neighborhood, Rainbow
Cone has delighted generations on the South Side and other visitors from across Chicago, Illinois
and around the world with its signature treat: THE ORIGINAL RAINBOW CONE ice cream
cone. This ice cream cone is a delicious 5-layer stack of ice cream starting with a base of
chocolate ice cream, topped by strawberry, then Palmer House (New York Vanilla with cherries
and walnuts), then pistachio, and capped with orange sherbet. The layers of ice cream are
carefully placed, one after the other, on a diagonal plane, by a special “tool” (not a scoop) onto a
cone. The finished ORIGINAL RAINBOW CONE ice cream cone has five adjacent, curved
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 2 of 21 PageID #:2
bands of color, evocative of a rainbow in its curved shape and visual appearance.
Configuration”) that has become distinctive in the minds of the public as indicating the source
and origin of Rainbow Cone’s ice cream store services and of its ice cream products. This
product line later expanded to include RAINBOW CONE Cakes, RAINBOW CONE Cake Rolls,
ORIGINAL RAINBOW CONE ice cream cone at their ice cream shops. However, after the
termination of these agreements, Defendants continued to sell and promote what they have
referred to as THE ORIGINAL RAINBOW CONE ice cream cone, use Rainbow Cone’s
trademarks and service marks, and used other confusingly similar marks to market similar
Parties
4. Plaintiff Rainbow Cone, LLC and Five Flavors, LLC are each limited liability
5. Defendants are each limited liability companies formed under the laws of Illinois.
6. Jurisdiction over the parties and subject matter of this action is proper pursuant to
15 U.S.C. § 1121 (actions arising under the Lanham Act), 28 U.S.C. § 1331 (actions arising
under the laws of the United States), and §1338(a) (actions arising under an Act of Congress
relating to trademarks). Supplemental jurisdiction over the related state and common law causes
2
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 3 of 21 PageID #:3
7. This Court has personal jurisdiction over Defendants because they do business
8. Venue is proper in this judicial district pursuant to 28 U.S.C. §§1391(b) and (c)
and 1400(a) because Defendants reside in this district, and a substantial part of the events
9. In 1926 Joseph Sapp founded THE ORIGINAL RAINBOW CONE ice cream
store on Chicago’s South Side. The business was passed down to Joseph’s son and was
incorporated into Original Rainbow Cone, Inc. Later, Joseph’s granddaughter, Lynn Sapp,
purchased the business. Lynn Sapp would form Sunshine & Rainbows, LLC, in part, to assist in
the distribution of THE ORIGINAL RAINBOW CONE branded products. Then, in 2018,
Rainbow Cone, LLC acquired the assets of Original Rainbow Cone, Inc. and Five Flavors, LLC
10. The Rainbow Cone business continues to render retail ice cream store services
and ice cream catering services from its original location at 9233 S. Western Ave. Chicago,
Illinois 60643 and it most recently expanded to its newest location at Navy Pier. Besides the
iconic cone, Rainbow Cone also sells other ice cream flavors, as well as RAINBOW CONE
11. Rainbow Cone, and specifically THE ORIGINAL RAINBOW CONE ice cream
cone, consistently appear on lists of the best ice cream in Chicago.1 It has also appeared at the
1
https://www.zagat.com/b/8-best-ice-cream-shops-in-chicago (published June 29, 2015) last visited April
10, 2019.
https://www.timeout.com/chicago/restaurants/best-ice-cream-in-chicago (published April 25, 2018) last
visited April 10, 2019.
https://www.thrillist.com/eat/chicago/best-ice-cream-in-chicago (published July 6, 2015) last visited April
10, 2019.
3
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 4 of 21 PageID #:4
12. THE ORIGINAL RAINBOW CONE ice cream cone, the RAINBOW CONE
Cake Roll and the RAINBOW CONE Cakes each include a particular five-layer design, color
combination and shape. The public has come to associate the design, color combination, and
shape of these products, including but not limited to the Rainbow Cone Product Configuration,
as having a distinctive and secondary meaning as indicia of the source, origin or sponsorship by
Rainbow Cone of its ice cream products and the ice cream store services.
13. From time to time, Rainbow Cone has also entered into distribution agreements
with other ice cream shops to render retail ice cream store services, to render ice cream services
14. Rainbow Cone has used a variety of trademarks and service marks for many years
in connection with the advertisement and sale of its products and services, including but not
15. These marks are widely recognized and exclusively associated by consumers, the
public, and the trade as denoting high-quality retail ice cream store services, ice cream catering
services and ice cream products sourced from Rainbow Cone and have acquired a strong
secondary meaning.
4
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 5 of 21 PageID #:5
16. In 2018, Rainbow Cone, LLC acquired the assets of Original Rainbow Cone, Inc.,
including the THE ORIGINAL RAINBOW CONE (Reg. No. 4,954,002) trademark and service
5
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 6 of 21 PageID #:6
each of Reg. No. 3,863,081, Reg. No. 3,863,082, Reg. No. 3,863,083 and Reg. No. 4,954,003.
18. Reg. Nos. 4,954,002, 3,863,081, 3,863,082, 3,863,083 and 4,954,003 are
registrations on the Principal Register of the US Patent and Trademark Office, and are valid,
19. Reg. Nos. 3,863,081, 3,863,082 and 3,863,083 have become incontestable
20. The federal registration of the marks is prima facie evidence of their validity, of
Rainbow Cone’s ownership of them, and of Rainbow Cone’s exclusive right to use the
trademarks in commerce in connection with their products and services. Relative to Reg. Nos.
21. The registration of the marks also provides sufficient notice to Defendants of
Rainbow Cone’s ownership and exclusive rights to the marks as of the dates of their registration,
22. The above registered marks (together with the mark RAINBOW CONE and the
Rainbow Cone Product Configuration, collectively referred to herein as the “Rainbow Cone
Marks”) have been used continuously and exclusively and have never been abandoned.
6
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 7 of 21 PageID #:7
23. In 2015, Sunshine & Rainbows, LLC entered into distribution agreements with
Defendants to market and sell THE ORIGINAL RAINBOW CONE products and to render retail
ice cream store services at their retail ice cream shop locations. In those agreements, Defendants
were provided with training and specifications to prepare THE ORIGINAL RAINBOW CONE
ice cream cone, and the specialized tools known as “Rainbow Cone shovels”, as well as
marketing materials to market, promote, and sell THE ORIGINAL RAINBOW CONE ice cream
cone, the other ice cream products and the retail ice cream store services and ice cream catering
services.
terminated automatically by virtue of Defendants’ failure to pay the Monthly Fee required by
each distribution agreement. To avoid filing a lawsuit, Plaintiffs repeatedly asked the
Defendants to, among other things, stop using the marks at issue in this litigation. Plaintiffs have
also requested that the Defendants meet with Plaintiffs to discuss and resolve their differences or,
if that is not successful, to mediate their differences. Defendants have ignored such requests.
25. Despite their distribution agreements terminating, Defendants continued to use the
marketing materials and the Rainbow Cone Marks to promote, market, and sell THE ORIGINAL
RAINBOW CONE ice cream cone, other ice cream products, retail ice cream store services and
ice cream catering services without authorization and/or used confusingly and deceptively
26. For example, even after being directed to stop using the Rainbow Cone Marks,
and for more than a year after the Defendants’ authorization had ceased, the Defendants’ Internet
site continued to claim that Defendants offered THE ORIGINAL RAINBOW CONE ice cream
7
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 8 of 21 PageID #:8
cone, continued to use Rainbow Cone’s popular trademark and continued to claim a connection
27. In addition, the menu that the Defendants continued to use through early 2019
displayed the following, including the Plaintiffs’ trademark, in its desserts section:
8
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 9 of 21 PageID #:9
28. After being instructed by Plaintiffs to stop using them, through early 2019, the
A. The Homer Glen location marketed and sold: “RAINBOW CONE Ice Cream
Cake Rolls” and RAINBOW CONE ice cream sold on cones or hand-packed
pints. It also has on the wall a painting of the Plaintiffs’ store (with a
RAINBOW CONE on the roof) that has operated and provided RAINBOW
CONE ice cream since the 1920’s in the Chicago’s Beverly neighborhood,
B. The Manhattan location sold “RAINBOW CONE Cake Rolls” and sold a
9
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 10 of 21 PageID #:10
cream cone, but which did not have the Rainbow Cone Product Configuration
and manifestly was not an ORIGINAL RAINBOW CONE ice cream cone:
trademark on its outdoor sign (as shown below) and, similarly, marketed
Rolls”. While the New Lenox location falsely described these ice cream
cones as RAINBOW CONE ice cream cones, they did not have the Rainbow
29. Moreover, Defendants’ online presence uses Plaintiffs’ marks, and/or marks
deceptively similar to the Rainbow Cone Marks, in connection with products, retail ice cream
store services and ice cream catering services that are directly competitive with Plaintiffs’
10
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 11 of 21 PageID #:11
Roll”
posts on Defendants’ Facebook page and google reviews show customers believe they are
several reviewers in 2018 comment: “Love the Rainbow Cones!!” and “Love they
31. Rainbow Cone’s reputation and goodwill have been damaged because
Defendants have sold inferior products which they have passed off as RAINBOW CONE
products.
32. For instance, Defendants’ Facebook page has a negative review where
Defendant’s location was “out of pistachio ice cream for rainbow cones” and “have
changed the rainbow cone to not even include Palmer house.” As the reviewer explains
https://www.google.com/search?q=the+creamery+new+lenox&rlz=1C1CHBF_enUS832US832&oq=The
+creamery+new+lenox&aqs=chrome.0.35i39j0l3.48367j0j7&sourceid=chrome&ie=UTF-
8#lrd=0x880e6f17e7a1f8a3:0x3a4d2bdc079c9f43,1,,, last visited April 12, 2019.
3
https://www.google.com/search?q=the+creamery+homer+glen&rlz=1C1CHBF_enUS832US832&oq=Th
e+creamery+homer+glen&aqs=chrome.0.35i39j69i60l3j0l2.3342j0j9&sourceid=chrome&ie=UTF-
8#lrd=0x880e4187b33d4179:0x14d96606f05a9381,1,,, last visited April 2, 2019.
11
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 12 of 21 PageID #:12
33. Plaintiffs’ reputation and goodwill have also been damaged because
Defendants have rendered retail ice cream store services and have sold these infringing
and confusingly similar products from Defendants’ locations which are unclean and/or
describing the New Lenox staff as “Extremely rude” and serving “sloppy” products. On
the Manhattan location’s unofficial Facebook page4, one reviewer remarked “I’m very
“Absolutely disgusting.”
35. Plaintiffs incorporate the foregoing allegations as if fully set forth herein.
36. Defendants, without authorization, have used and are continuing to use Rainbow
Cone’s federally registered marks or spurious designations that are confusingly similar to
37. Defendants’ acts are intended to cause, have caused, and are likely to continue to
cause confusion, mistake, and deception among customers and the public as to whether
Defendants’ products originate from, or are affiliated with, sponsored by or endorsed by,
Rainbow Cone.
38. Defendants have used one or more spurious marks which are identical with, or
substantially indistinguishable from, one or more of Plaintiffs’ registered marks. These spurious
4
https://www.facebook.com/pages/The-Creamery/201934336518152 last visited April 10, 2019. This
page erroneously lists the incorrect website for SK Creameries Manhattan, LLC.
12
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 13 of 21 PageID #:13
39. Defendants have acted with knowledge of Rainbow Cone’s ownership of the
federally registered marks and with deliberate intention or willful blindness to unfairly benefit
41. Upon information and belief, Defendants have made and will continue to make
substantial profits and/or gains to which they are not in law or equity entitled.
42. Upon information and belief, Defendants intend to continue their infringing acts,
43. Defendants’ acts have damaged and will continue to damage Rainbow Cone.
Rainbow Cone has suffered and continues to suffer irreparable harm, and has no adequate
remedy at law.
44. Plaintiffs incorporate the foregoing allegations as if fully set forth herein.
45. Defendants’ promotion, advertising, distribution, sale, and/or offering for sale of
competing products and services, using one or more of the Rainbow Cone Marks, is intended to
and is likely to confuse, mislead, or deceive consumers, the public, and the trade as to the origin,
source, sponsorship, or affiliation of the Defendants’ products and services, and is intended to
and is likely to cause such parties to believe in error that the Defendants’ products and services
have been authorized, sponsored, approved, endorsed or licensed by Rainbow Cone, or that
46. Defendants market and sell an ice cream cone having multiple flavors of ice
13
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 14 of 21 PageID #:14
cream that are confusingly similar to the Rainbow Cone Product Configuration that Plaintiffs’
employees painstakingly create for each cone they sell. Defendants call their multiflavor cones
RAINBOW CONES. Defendants’ use of the marks THE ORIGINAL RAINBOW CONE or of
RAINBOW CONE to identify their cones is a false and misleading representation of fact in
47. The cake roll product promoted, advertised, distributed, offered for sale and sold
by Defendants replicates and imitates the trade dress and product configuration of Rainbow
Cone’s THE ORIGINAL RAINBOW CONE cake roll, as it is precisely the same size, shape,
design, and uses the same particular order of ice creams, and replicates and imitates the
48. Defendants’ acts constitute a false designation of origin, and false and misleading
descriptions and representations of fact, all in violation of Section 43(a) of the Lanham Act (15
U.S.C. § 1125(a)).
49. Upon information and belief, Defendants have made and will continue to make
substantial profits and/or gains to which they are not in law or equity entitled.
50. Upon information and belief, Defendants intend to continue their infringing acts,
51. Defendants’ acts have damaged and will continue to damage Rainbow Cone.
Rainbow Cone has suffered and continues to suffer irreparable harm and has no adequate remedy
at law.
52. Plaintiffs incorporate the foregoing allegations as if fully set forth herein.
53. The Rainbow Cone Marks are strong and distinctive marks that have been in use
14
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 15 of 21 PageID #:15
54. The Rainbow Cone Marks are famous within the meaning of Section 43(c) of the
Lanham Act.
55. Defendants’ continued use of the Rainbow Cone Marks on ice cream products and
in connection with ice cream store services and ice cream catering services, without
authorization from Rainbow Cone, is diluting the distinctive quality of the Rainbow Cone Marks
and is decreasing the capacity of such marks to identify and distinguish Rainbow Cone products
and services.
56. Defendants have intentionally and willfully diluted the distinctive quality of the
famous Rainbow Cone Marks in violation of Section 43(c) of the Lanham Act (15 U.S.C. §
1125(c)).
57. Upon information and belief, Defendants have made and will continue to make
substantial profits and/or gains to which they are not in law or equity entitled.
58. Upon information and belief, Defendants intend to continue their infringing acts,
59. Defendants’ acts have damaged and will continue to damage Rainbow Cone.
Rainbow Cone has suffered and will continue to suffer irreparable harm and has no adequate
remedy at law.
60. Plaintiffs incorporate the foregoing allegations as if fully set forth herein.
61. Rainbow Cone owns all right, title, and interest in and to the Rainbow Cone
62. Defendants, without authorization from Rainbow Cone, have used and are
15
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 16 of 21 PageID #:16
continuing to use spurious designations that are identical to, substantially indistinguishable from,
63. Defendants’ acts are intended to cause, have caused, and are likely to cause
confusion, mistake, and deception among consumers and the public as to whether Defendants’
products and services originate from, or are affiliated with, sponsored by, or endorsed by
Rainbow Cone.
64. Defendants have acted with knowledge of Rainbow Cone’s ownership of the
marks and with deliberate intention or willful blindness to unfairly benefit from the incalculable
65. Defendants’ acts constitute trademark and service mark infringement in violation
66. Upon information and belief, Defendants have made and will continue to make
substantial profits and/or gains to which they are not in law or equity entitled.
67. Upon information and belief, Defendants intend to continue their infringing acts,
68. Defendants’ acts have damaged and will continue to damage Rainbow Cone.
Rainbow Cone has suffered and continues to suffer irreparable harm and has no adequate remedy
at law.
69. Plaintiffs incorporate the foregoing allegations as if fully set forth herein.
70. Defendant’s acts constitute trademark dilution in violation of Illinois common law
and the Illinois Trademark Registration and Protection Act (765 ILCS 1036/65).
71. The Rainbow Cone Marks are strong and distinctive marks that have been used
16
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 17 of 21 PageID #:17
for almost a century (93 years) and have achieved widespread public recognition.
72. Through prominent, long, and continuous use in commerce, including commerce
within the State of Illinois, the Rainbow Cone Marks have become and continue to be famous
and distinctive.
73. Defendant’s use of the Rainbow Cone Marks, on ice cream products and in
connection with retail ice cream store services and ice cream catering services, without
authorization, is diluting the distinctive quality of the Rainbow Cone Marks and is decreasing the
capacity of such marks to identify and distinguish Rainbow Cone’s products and services and has
74. Defendants have diluted the distinctive quality of the famous Rainbow Cone
Marks.
75. Upon information and belief, Defendants have made and will continue to make
substantial profits and/or gains to which they are not in law or equity entitled.
76. Upon information and belief, Defendants intend to continue their infringing acts,
77. Defendants’ acts have damaged and will continue to damage Rainbow Cone.
Rainbow Cone has suffered and continues to suffer irreparable harm and has no adequate remedy
at law.
78. Plaintiffs incorporate the foregoing allegations as if fully set forth herein.
79. Defendants’ labelling and/or description of their multiflavor ice cream cones as
RAINBOW CONES, even where such cones have not been painstakingly assembled to have the
17
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 18 of 21 PageID #:18
consumers.
80. These and others of the Defendants’ acts constitute unfair competition in violation
of the Illinois Consumer Fraud and Deceptive Business Practices Act (815 ILCS 505 et seq.).
81. Upon information and belief, Defendants have made and will continue to make
substantial profits and/or gains to which t hey are not in law or equity entitled.
82. Upon information and belief, Defendants intend to continue their infringing acts,
83. Defendants’ acts have damaged and will continue to damage Rainbow Cone.
Rainbow Cone is suffering and continues to suffer irreparable harm and Rainbow Cone has no
84. Plaintiffs incorporate the foregoing allegations as if fully set forth herein.
law.
86. Upon information and belief, Defendants have made and will continue to make
substantial profits and/or gains to which they are not in law or equity entitled.
87. Upon information and belief, Defendants intend to continue their infringing acts,
88. Defendants’ acts have damaged and will continue to damage Rainbow Cone.
Rainbow Cone has suffered and continues to suffer irreparable harm and has no adequate remedy
at law.
89. Plaintiffs incorporate the foregoing allegations as if fully set forth herein.
18
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 19 of 21 PageID #:19
90. The foregoing acts constitute unjust enrichment of Defendants at Rainbow Cone’s
WHEREFORE, Plaintiffs, pray for entry of judgment in their favor and against
Defendants as follows:
A. Enter a permanent injunction restraining and enjoining Defendants and all of their
Rainbow Cone Marks or any other mark confusingly similar to any of the
Cake Rolls”;
cones, hand packed, or in a cake roll, that are in imitation of the Rainbow
configuration and trade dress of Rainbow Cone’s Cake Roll or Rainbow Cone
Cake;
19
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 20 of 21 PageID #:20
for the injuries it has sustained by reason of Defendants’ unlawful acts, including
loss of goodwill, loss of past and/or future sales, and other damages caused by
Defendants’ acts.
C. That Rainbow Cone, LLC be awarded increased damages based upon the
herein.
D. That the Court issue an order requiring Defendants to pay such damages as
of Rainbow Cone, LLC’s marks and unfair competition and to account for all
rendering services under the infringing marks and that the award to Rainbow
Cone, LLC be trebled as provided for under 15 U.S.C. § 1117; alternatively, that
1117(c) of the full amount allowed by law per mark and per type of goods or
registered marks.
E. That the Court rule that this is an exceptional case, and order that Rainbow Cone,
LLC recover the costs of this action together with reasonable attorneys’ and
F. That Rainbow Cone, LLC be awarded punitive damages for Defendants’ willful
competition.
20
Case: 1:19-cv-03153 Document #: 1 Filed: 05/09/19 Page 21 of 21 PageID #:21
marketing materials, and any other item it its possession, custody, or control
H. Grant Rainbow Cone, LLC and Five Flavors, LLC such other and further relief as
the Court may deem just, proper and equitable under the circumstances.
JURY TRIAL
Respectfully submitted,
Rainbow Cone, LLC and Five Flavors, LLC
David Fish
dfish@fishlawfirm.com
Kimberly Hilton
khilton@fishlawfirm.com
John Kunze
jkunze@fishlawfirm.com
THE FISH LAW FIRM, P.C.
200 East Fifth Avenue, Suite 123
Naperville, Illinois 60563
Tel: 630.355.7590
Fax: 630.778.0400
admin@fishlawfirm.com
Jefferson Perkins
Perkins IP Law Group LLC
4200 Commerce Court, Suite 310
Lisle, IL 60532
jperkins@perkinsip.com
21