1
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
KING’S HAWAIIAN HOLDING
COMPANY, INC., a California
corporation; KING’S HAWAIIAN
BAKERY WEST, INC., a California
corporation; and KING’S HAWAIIAN
BAKERY SOUTHEAST, INC., a Georgia
corporation,
Plaintiffs,
vs.
SOUTHERN BAKERIES, LLC, an
Indiana limited liability company;
HARLAN BAKERIES, LLC, an Indiana
limited liability company; and DOES 1-10,
inclusive,
Defendants.
Case No. 4:20-cv-4283
COMPLAINT FOR DAMAGES AND
INJUNCTIVE RELIEF
JURY TRIAL DEMANDED
COMPLAINT AND DEMAND FOR JURY TRIAL
Plaintiffs King’s Hawaiian Holding Company, Inc.; King’s Hawaiian Bakery West, Inc.;
and King’s Hawaiian Bakery Southeast, Inc. (collectively, “King’s Hawaiian” or “Plaintiffs”)
complain and allege as follows against Defendants Southern Bakeries, LLC (“Southern
Bakeries”) and Harlan Bakeries, LLC (“Harlan Bakeries”) (collectively, “Defendants”).
NATURE OF THE ACTION
1.
In this action, King’s Hawaiian seeks injunctive relief and damages for acts of
trade dress infringement, unfair competition, and misappropriation engaged in by Defendants in
violation of the laws of the United States and the State of Texas.
2.
Defendants are manufacturing, distributing, and selling in the United States,
including in this District, sweet rolls that intentionally and willfully employ product packaging
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 1 of 18
2
that is confusingly similar to the distinctive packaging trade dress that King’s Hawaiian uses in
connection with its KING’S HAWAIIAN Original Hawaiian Sweet Rolls. Defendants’ conduct
is likely to cause consumers to be confused, deceived, or mistaken into believing that there is an
affiliation, connection, or association between Defendants and King’s Hawaiian, or that
Defendants’ products originate from or are sponsored by or approved by King’s Hawaiian.
3.
Upon information and belief, Defendants’ infringement was and is willful and has
caused and continues to cause King’s Hawaiian substantial irreparable injury, warranting
injunctive relief, as well as an award of monetary damages, costs, and attorneys’ fees.
THE PARTIES
4.
Plaintiff King’s Hawaiian Holding Company, Inc. is a corporation organized and
existing under the laws of the State of California, with its principal place of business in Torrance,
California.
5.
Plaintiff King’s Hawaiian Bakery West, Inc. is a corporation organized and
existing under the laws of the State of California, with its principal place of business in Torrance,
California. King’s Hawaiian Bakery West, Inc. is a wholly-owned subsidiary of King’s
Hawaiian Holding Company, Inc., and is a licensed distributor of King’s Hawaiian goods,
including goods packaged with the King’s Hawaiian Sweet Roll Packaging Trade Dress.
6.
Plaintiff King’s Hawaiian Bakery Southeast, Inc. is a corporation organized and
existing under the laws of the State of Georgia, with its principal place of operation in Oakwood,
Georgia, and its principal office address at King’s Hawaiian Holding Company, Inc.’s corporate
headquarters in Torrance, California. King’s Hawaiian Bakery Southeast, Inc. is a wholly-
owned subsidiary of King’s Hawaiian Holding Company, Inc., and is a licensed distributor of
King’s Hawaiian goods, including goods packaged with the King’s Hawaiian Sweet Roll
Packaging Trade Dress.
7.
Defendant Southern Bakeries, LLC is, upon information and belief, a limited
liability company organized and existing under the laws of the State of Indiana, with its principal
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 2 of 18
3
place of business in Hope, Arkansas. Southern Bakeries is a commercial bakery business that
manufactures, promotes, and distributes baked goods, including sweet rolls, and sells them in
stores in a number of states across the United States, including locations in this District and other
locations in Texas.
8.
Defendant Harlan Bakeries, LLC is, upon information and belief, a limited
liability company organized and existing under the laws of the State of Indiana, with its principal
place of business in Avon, Indiana. Harlan Bakeries is a commercial bakery business that
manufactures, promotes, and distributes baked goods, including sweet rolls, and sells them in
stores in a number of states across the United States, including locations in this District and other
locations in Texas. Harlan Bakeries is, upon information and belief, the parent company of
Southern Bakeries.
9.
The identities of the various Doe defendants are not currently known. This
Complaint will be amended to include the names and capacities of such individuals or entities
when the same is ascertained.
JURISDICTION AND VENUE
10.
This Court has subject matter jurisdiction under 15 U.S.C. § 1121 (action arising
under Lanham Act), 28 U.S.C. § 1331 (federal question), 28 U.S.C. § 1332 (diversity),
28 U.S.C. § 1338(a) (any Act of Congress relating to patents or trademarks), 28 U.S.C. § 1338(b)
(action asserting claim of unfair competition joined with a substantial and related claim under the
trademark laws), and 28 U.S.C. § 1367(a) (supplemental jurisdiction).
11.
This Court has personal jurisdiction over Defendants because Defendants have
committed and, upon information and belief, intend to continue to commit acts of infringement
in violation of 15 U.S.C. § 1125 in the State of Texas, including in this District; place into the
stream of commerce products in packaging that infringe King’s Hawaiian’s packaging trade
dress with knowledge or understanding that such products are sold in the State of Texas,
including in this District; and transact business in this District. The acts of Defendants cause
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 3 of 18
4
injury to King’s Hawaiian in the State of Texas, including in this District. Upon information and
belief, Defendants have and will continue to derive substantial revenue from the sale within the
State of Texas, including within this District, of products in packaging that infringes King’s
Hawaiian’s packaging trade dress and Defendants expect their actions to have consequences in
the State of Texas, including in this District.
12.
Venue is proper within this District under 28 U.S.C. § 1391 because Defendants
transact business within this District, offer for sale in this District products in packaging that
infringes King’s Hawaiian’s packaging trade dress, and place into the stream of commerce
products in packaging that infringes King’s Hawaiian’s packaging trade dress with knowledge or
understanding that such products are sold in this District. In addition, venue is proper because
Defendants specifically market in this District products in packaging that infringe King’s
Hawaiian’s packaging trade dress and King’s Hawaiian has suffered, and will continue to suffer,
harm in this District as a result of Defendants’ conduct. Moreover, venue is proper in this
District because Defendants are subject to the Court’s personal jurisdiction in this District.
THE KING’S HAWAIIAN SWEET ROLL PACKAGING TRADE DRESS
13.
King’s Hawaiian is a family-owned business that makes and sells KING’S
HAWAIIAN Original Hawaiian Sweet Rolls and other baked goods. The history of King’s
Hawaiian began in the 1950s in Hilo, Hawaii. There, Robert Taira opened his first bake shop,
Robert’s Bakery, where he made round, soft loaves of Hawaiian Sweet Bread using his own
original recipe. After nearly a decade of growing popularity, in 1963 the original shop expanded
and moved to King Street in Honolulu, where it was renamed King’s Bakery. In the 1970s,
Mr. Taira brought his Hawaiian Sweet Bread to the mainland and built a 24,000-square-foot
bakery in Torrance, California. He named it King’s Hawaiian Bakery.
14.
In 1983, King’s Hawaiian introduced the now well-known 12-pack of Original
Hawaiian Sweet Rolls. During the next several decades, King’s Hawaiian continued to grow as
its reputation spread for making delicious, high-quality products. What started as a small bakery
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 4 of 18
5
in Hilo, Hawaii, is now a national brand with products available in grocery stores and other
outlets across the United States.
15.
King’s Hawaiian goes to great efforts to preserve its image and identity and the
image and identity of its high-quality products. To that end, King’s Hawaiian has developed
distinctive packaging trade dress for use with its KING’S HAWAIIAN Original Hawaiian Sweet
Rolls.
16.
The sweet roll packaging trade dress asserted in this lawsuit (the “King’s
Hawaiian Sweet Roll Packaging Trade Dress”) consists of an overall visual impression, which
includes (1) the prominent use of the color orange; (2) on the front of the package a clear
window, with the color orange as the primary element around such clear window; (3) within the
window, a light-colored element with contrasting writing; and (4) on the light-colored element,
no word appears in larger font than the word “Hawaiian,” which is in a serif font, as shown
below and in Exhibits A and B hereto.
17.
King’s Hawaiian has used the King’s Hawaiian Sweet Roll Packaging Trade
Dress to distinguish its Original Hawaiian Sweet Rolls since at least the early 1980s.
18.
The King’s Hawaiian Sweet Roll Packaging Trade Dress is non-functional. The
overall look and feel of the packaging design is not required to achieve any particular function—
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 5 of 18
6
and there are a plethora of alternative packaging designs available to King’s Hawaiian’s
competitors.
19.
The King’s Hawaiian Sweet Roll Packaging Trade Dress is inherently distinctive.
Moreover, through extensive use, advertising, marketing, and promotional activities, the King’s
Hawaiian Sweet Roll Packaging Trade Dress has acquired a strong secondary meaning. The
King’s Hawaiian Sweet Roll Packaging Trade Dress serves to identify King’s Hawaiian as the
source of the products with which it is used, and the relevant consuming public recognizes the
King’s Hawaiian Sweet Roll Packaging Trade Dress as distinguishing those products from the
goods and services of others.
20.
Plaintiff King’s Hawaiian Holding Company, Inc. is the owner of all rights and
title to the King’s Hawaiian Sweet Roll Packaging Trade Dress. King’s Hawaiian Holding
Company, Inc.’s wholly-owned subsidiaries, King’s Hawaiian Bakery West, Inc., and King’s
Hawaiian Bakery Southeast, Inc., are distributors of King’s Hawaiian goods and are licensed to
use the King’s Hawaiian Sweet Roll Packaging Trade Dress.
DEFENDANTS’ UNLAWFUL AND DECEPTIVE ACTS
21.
Defendants are neither licensed nor otherwise authorized by King’s Hawaiian to
use the King’s Hawaiian Sweet Roll Packaging Trade Dress in connection with Defendants’
products.
22.
Without King’s Hawaiian’s permission or consent, Defendants have offered and
sold, and are offering for sale and selling in the United States, including in this District and other
Districts in Texas, sweet rolls in product packaging that is deceptively similar to the King’s
Hawaiian Sweet Roll Packaging Trade Dress. For example, King’s Hawaiian is informed and
believes, and on that basis alleges, that Defendants’ sweet roll products have been offered for
sale and sold at H-E-B grocery stores in this District and other Districts in Texas in packaging
that is deceptively similar to King’s Hawaiian Sweet Roll Packaging Trade Dress.
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 6 of 18
7
23.
Defendants have placed the infringing sweet roll products into the stream of
commerce, with knowledge or understanding that such products would be sold in the United
States, including in this District.
24.
Defendants’ conduct is likely to cause consumers to be confused, deceived, or
mistaken into believing that there is an affiliation, connection, or association between Defendants
and King’s Hawaiian, or that Defendants’ products originate from or are sponsored by or
approved by King’s Hawaiian.
25.
The packaging for Defendants’ sweet rolls is confusingly similar in overall look
and feel to the King’s Hawaiian Sweet Roll Packaging Trade Dress and includes (1) the
prominent use of the color orange; (2) on the front of the package a clear window, with the color
orange as the primary element around such clear window; (3) within the window, a light-colored
element with contrasting writing; and (4) on the light-colored element, no word appears in larger
font than the word “Hawaiian,” which is in a serif font, as shown below and in Exhibits C and D,
hereto.
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 7 of 18
8
26.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants have adopted and used their deceptively-similar packaging with the intent to trade
off the enormous goodwill that King’s Hawaiian has earned in the King’s Hawaiian Sweet Roll
Packaging Trade Dress, and the high-quality products with which it is used and, further, to cause
consumers to be confused, deceived, or mistaken into believing that there is an affiliation,
connection, or association between Defendants and King’s Hawaiian, or that Defendants’ sweet
rolls originate from or are sponsored by or approved by King’s Hawaiian. Defendants have
damaged the reputation, business, and goodwill of King’s Hawaiian, including within this
District, and, unless enjoined, King’s Hawaiian is informed and believes that Defendants will
continue such conduct to the immediate and irreparable injury of King’s Hawaiian.
27.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants have acted and, unless enjoined, will continue to act, in willful, wanton, and callous
disregard of King’s Hawaiian’s rights.
COUNT I
Federal Trade Dress Infringement—15 U.S.C. § 1125(a)
28.
King’s Hawaiian repeats and realleges each and every allegation of paragraphs 1
through 27, above, as though fully set forth at length, against all defendants.
29.
King’s Hawaiian is the owner of all rights and title to, and has valid and
protectable prior rights in, the King’s Hawaiian Sweet Roll Packaging Trade Dress.
30.
King’s Hawaiian engages in the sale and distribution of KING’S HAWAIIAN
Original Hawaiian Sweet Rolls employing the King’s Hawaiian Sweet Roll Packaging Trade
Dress in interstate commerce and has done so since long before Defendants began their
infringing use of the King’s Hawaiian Sweet Roll Packaging Trade Dress as alleged herein.
31.
The King’s Hawaiian Sweet Roll Packaging Trade Dress is inherently distinctive.
In addition, based on extensive marketing, promotion, and use, the King’s Hawaiian Sweet Roll
Packaging Trade Dress has acquired distinctiveness and enjoys secondary meaning among
consumers, identifying King’s Hawaiian as the source of the products with which it is used.
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 8 of 18
9
32.
Without King’s Hawaiian’s permission or consent, Defendants have adopted and
used with their sweet rolls packaging that is deceptively similar to the King’s Hawaiian Sweet
Roll Packaging Trade Dress. Defendants’ conduct is likely to cause members of the consuming
public to be confused, deceived, or mistaken into believing that there is an affiliation,
connection, or association between Defendants and King’s Hawaiian, or that Defendants’
products originate from or are sponsored by or approved by King’s Hawaiian.
33.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants’ wrongful conduct has been and continues to be intentional, willful, and without
regard for King’s Hawaiian’s rights in the King’s Hawaiian Sweet Roll Packaging Trade Dress,
as described above.
34.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants have gained profits by virtue of their infringement of the King’s Hawaiian Sweet
Roll Packaging Trade Dress.
35.
King’s Hawaiian has sustained damages as a direct and proximate result of
Defendants’ infringement of the King’s Hawaiian Sweet Roll Packaging Trade Dress in an
amount to be proven at trial.
36.
King’s Hawaiian has been and will continue to be irreparably harmed by
Defendants’ wrongful conduct. The damage to King’s Hawaiian includes harm to its goodwill,
reputation, and market position that money cannot compensate. King’s Hawaiian is therefore
entitled to an injunction against Defendants’ continuing infringement of the King’s Hawaiian
Sweet Roll Packaging Trade Dress. Unless enjoined, Defendants will continue their infringing
conduct.
37.
King’s Hawaiian is entitled to its actual damages, Defendants’ profits, and an
award of costs pursuant to 15 U.S.C. § 1117(a). Further, King’s Hawaiian is entitled to treble its
actual damages, an enhancement of Defendants’ profits, and, because this is an exceptional case,
reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a).
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 9 of 18
10
COUNT II
Federal False Designation of Origin and Unfair Competition—15 U.S.C. § 1125(a)
38.
King’s Hawaiian repeats and realleges each and every allegation of paragraphs 1
through 37, above, as though fully set forth at length, against all defendants.
39.
The conduct and acts of Defendants described above constitute a false designation
of origin and a false description in violation of 15 U.S.C. § 1125(a).
40.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants’ wrongful conduct has been and continues to be intentional, willful, and without
regard for King’s Hawaiian’s rights in the King’s Hawaiian Sweet Roll Packaging Trade Dress.
41.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants have gained profits by virtue of their infringement of the King’s Hawaiian Sweet
Roll Packaging Trade Dress.
42.
King’s Hawaiian has sustained damages as a direct and proximate result of
Defendants’ wrongful conduct in an amount to be proven at trial.
43.
King’s Hawaiian has been and will continue to be irreparably harmed by
Defendants’ wrongful conduct. The damage to King’s Hawaiian includes harm to its goodwill,
reputation, and market position that money cannot compensate. King’s Hawaiian is therefore
entitled to an injunction against Defendants’ continuing infringement of the King’s Hawaiian
Sweet Roll Packaging Trade Dress. Unless enjoined, Defendants will continue their infringing
conduct.
44.
King’s Hawaiian is entitled to its actual damages, Defendants’ profits, and an
award of costs pursuant to 15 U.S.C. § 1117(a). Further, King’s Hawaiian is entitled to treble its
actual damages, an enhancement of Defendants’ profits, and, because this is an exceptional case,
reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a).
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 10 of 18
11
COUNT III
State Common Law Trade Dress Infringement
45.
King’s Hawaiian repeats and realleges each and every allegation of paragraphs 1
through 44, above, as though fully set forth at length, against all defendants.
46.
King’s Hawaiian is the owner of all rights and title to, and has valid and
protectable prior rights in, the King’s Hawaiian Sweet Roll Packaging Trade Dress.
47.
King’s Hawaiian engages in the sale and distribution of KING’S HAWAIIAN
Original Hawaiian Sweet Rolls employing the King’s Hawaiian Sweet Roll Packaging Trade
Dress in the State of Texas and has done so since long before Defendants began their infringing
use of the King’s Hawaiian Sweet Roll Packaging Trade Dress as alleged herein.
48.
The King’s Hawaiian Sweet Roll Packaging Trade Dress is inherently distinctive.
In addition, based on extensive marketing, promotion, and use, the King’s Hawaiian Sweet Roll
Packaging Trade Dress has acquired distinctiveness and enjoys secondary meaning among
consumers, identifying King’s Hawaiian as the source of the products with which it is used.
49.
Without King’s Hawaiian’s permission or consent, Defendants have adopted and
used with their sweet rolls packaging that is deceptively similar to the King’s Hawaiian Sweet
Roll Packaging Trade Dress in violation of Texas common law. Defendants’ conduct is likely to
cause members of the consuming public in the State of Texas to be confused, deceived, or
mistaken into believing that there is an affiliation, connection, or association between Defendants
and King’s Hawaiian, or that Defendants’ products originate from or are sponsored by or
approved by King’s Hawaiian.
50.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants’ wrongful conduct has been and continues to be intentional, willful, and without
regard for King’s Hawaiian’s rights in the King’s Hawaiian Sweet Roll Packaging Trade Dress,
as described above.
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 11 of 18
12
51.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants have gained profits by virtue of their infringement of the King’s Hawaiian Sweet
Roll Packaging Trade Dress and, if not remedied, Defendants will be unjustly enriched.
52.
King’s Hawaiian has sustained damages as a direct and proximate result of
Defendants’ infringement of the King’s Hawaiian Sweet Roll Packaging Trade Dress in an
amount to be proven at trial.
53.
King’s Hawaiian has been and will continue to be irreparably harmed by
Defendants’ wrongful conduct. The damage to King’s Hawaiian includes harm to its goodwill,
reputation, and market position that money cannot compensate. King’s Hawaiian is therefore
entitled to an injunction against Defendants’ continuing infringement of the King’s Hawaiian
Sweet Roll Packaging Trade Dress. Unless enjoined, Defendants will continue their infringing
conduct.
54.
King’s Hawaiian is also entitled to its actual damages, Defendants’ profits, and an
award of costs and attorneys’ fees.
55.
Additionally, because Defendants’ misconduct as alleged herein has been willful,
malicious, and wanton, King’s Hawaiian is entitled to an award of punitive damages under Texas
law in an amount sufficient to punish Defendants and deter such misconduct in the future.
COUNT IV
State Common Law Unfair Competition
56.
King’s Hawaiian repeats and realleges each and every allegation of paragraphs 1
through 55, above, as though fully set forth at length, against all defendants.
57.
King’s Hawaiian is the owner of all rights and title to, and has valid and
protectable prior rights in, the King’s Hawaiian Sweet Roll Packaging Trade Dress.
58.
King’s Hawaiian engages in the sale and distribution of KING’S HAWAIIAN
Original Hawaiian Sweet Rolls employing the King’s Hawaiian Sweet Roll Packaging Trade
Dress in the State of Texas and has done so since long before Defendants began their infringing
use of the King’s Hawaiian Sweet Roll Packaging Trade Dress as alleged herein.
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 12 of 18
13
59.
The King’s Hawaiian Sweet Roll Packaging Trade Dress is inherently distinctive.
In addition, based on extensive marketing, promotion, and use, the King’s Hawaiian Sweet Roll
Packaging Trade Dress has acquired distinctiveness and enjoys secondary meaning among
consumers, identifying King’s Hawaiian as the source of the products with which it is used.
60.
Without King’s Hawaiian’s permission or consent, Defendants have adopted and
used with their sweet rolls packaging that is deceptively similar to the King’s Hawaiian Sweet
Roll Packaging Trade Dress in violation of Texas common law. Defendants’ offers to sell, sales,
manufacture, and/or distribution of their infringing products, in direct competition with King’s
Hawaiian, constitutes common law unfair competition. Defendants’ conduct is likely to cause
members of the consuming public in the State of Texas to be confused, deceived, or mistaken
into believing that there is an affiliation, connection or association between Defendants and
King’s Hawaiian, or that Defendants’ products originate from or are sponsored by or approved
by King’s Hawaiian.
61.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants’ wrongful conduct has been and continues to be intentional, willful, and without
regard for King’s Hawaiian’s rights in the King’s Hawaiian Sweet Roll Packaging Trade Dress,
as described above.
62.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants have gained profits by virtue of their infringement of the King’s Hawaiian Sweet
Roll Packaging Trade Dress and, if not remedied, Defendants will be unjustly enriched.
63.
King’s Hawaiian has sustained damages as a direct and proximate result of
Defendants’ infringement of the King’s Hawaiian Sweet Roll Packaging Trade Dress in an
amount to be proven at trial.
64.
King’s Hawaiian has been and will continue to be irreparably harmed by
Defendants’ wrongful conduct. The damage to King’s Hawaiian includes harm to its goodwill,
reputation, and market position that money cannot compensate. King’s Hawaiian is therefore
entitled to an injunction against Defendants’ continuing infringement of the King’s Hawaiian
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 13 of 18
14
Sweet Roll Packaging Trade Dress. Unless enjoined, Defendants will continue their infringing
conduct.
65.
King’s Hawaiian is also entitled to its actual damages, Defendants’ profits, and an
award of costs and attorneys’ fees.
66.
Additionally, because Defendants’ misconduct as alleged herein has been willful,
malicious, and wanton, King’s Hawaiian is entitled to an award of punitive damages under Texas
law in an amount sufficient to punish Defendants and deter such misconduct in the future.
COUNT V
State Common Law Misappropriation
67.
King’s Hawaiian repeats and realleges each and every allegation of paragraphs 1
through 66, above, as though fully set forth at length, against all defendants.
68.
King’s Hawaiian is the owner of all rights and title to, and has valid and
protectable prior rights in, the King’s Hawaiian Sweet Roll Packaging Trade Dress.
69.
King’s Hawaiian engages in the sale and distribution of KING’S HAWAIIAN
Original Hawaiian Sweet Rolls employing the King’s Hawaiian Sweet Roll Packaging Trade
Dress in the State of Texas and has done so since long before Defendants began their infringing
use of the King’s Hawaiian Sweet Roll Packaging Trade Dress as alleged herein.
70.
The King’s Hawaiian Sweet Roll Packaging Trade Dress is inherently distinctive.
In addition, based on extensive marketing, promotion, and use, the King’s Hawaiian Sweet Roll
Packaging Trade Dress has acquired distinctiveness and enjoys secondary meaning among
consumers, identifying King’s Hawaiian as the source of the products with which it is used.
71.
Without King’s Hawaiian’s permission or consent, Defendants have adopted and
used with their sweet rolls packaging that is deceptively similar to the King’s Hawaiian Sweet
Roll Packaging Trade Dress in violation of Texas common law. Defendants’ offers to sell, sales,
manufacture, and/or distribution of their infringing products, in direct competition with King’s
Hawaiian, constitutes common law misappropriation.
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 14 of 18
15
72.
King’s Hawaiian created the King’s Hawaiian Sweet Roll Packaging Trade Dress
through extensive time, labor, effort, skill, and money. Defendants have wrongfully used and are
wrongfully using the King’s Hawaiian Sweet Roll Packaging Trade Dress, and/or colorable
imitations thereof, in competition with King’s Hawaiian, and have gained a special advantage
because Defendants were not burdened with the expenses incurred by King’s Hawaiian.
Defendants have commercially damaged King’s Hawaiian, at least by causing consumer
confusion as to origin, sponsorship, or affiliation of Defendants’ infringing products, by creating
the false and misleading impression that its infringing products originate from or are
manufactured by, authorized by, or otherwise associated with King’s Hawaiian, and by taking
away sales that King’s Hawaiian would have made.
73.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants’ wrongful conduct has been and continues to be intentional, willful, and without
regard for King’s Hawaiian’s rights in the King’s Hawaiian Sweet Roll Packaging Trade Dress,
as described above.
74.
King’s Hawaiian is informed and believes, and on that basis alleges, that
Defendants have gained profits by virtue of their infringement of the King’s Hawaiian Sweet
Roll Packaging Trade Dress and, if not remedied, Defendants will be unjustly enriched.
75.
King’s Hawaiian has sustained damages as a direct and proximate result of
Defendants’ infringement of the King’s Hawaiian Sweet Roll Packaging Trade Dress in an
amount to be proven at trial.
76.
King’s Hawaiian has been and will continue to be irreparably harmed by
Defendants’ wrongful conduct. The damage to King’s Hawaiian includes harm to its goodwill,
reputation, and market position that money cannot compensate. King’s Hawaiian is therefore
entitled to an injunction against Defendants’ continuing infringement of the King’s Hawaiian
Sweet Roll Packaging Trade Dress. Unless enjoined, Defendants will continue their infringing
conduct.
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 15 of 18
16
77.
King’s Hawaiian is also entitled to its actual damages, Defendants’ profits, and an
award of costs and attorneys’ fees.
78.
Additionally, because Defendants’ misconduct as alleged herein has been willful,
malicious, and wanton, King’s Hawaiian is entitled to an award of punitive damages under Texas
law in an amount sufficient to punish Defendants and deter such misconduct in the future.
PRAYER FOR RELIEF
Wherefore, Plaintiffs King’s Hawaiian Holding Company, Inc., King’s Hawaiian Bakery
West, Inc., and King’s Hawaiian Bakery Southeast, Inc., and each of them, hereby respectfully
request that this Court:
A.
Enter an injunction enjoining Defendants, their officers, directors, employees,
agents, licensees, servants, successors, and assigns, and any and all persons in active concert or
participation with any of them, from:
1.
Any unauthorized use of the King’s Hawaiian Sweet Roll Packaging
Trade Dress, including, without limitation, any colorable imitation or confusingly-similar
variation thereof, in connection with the promotion, advertising, distribution, or sale of goods by
Defendants;
2.
Engaging in any conduct suggesting or tending to suggest that any product
promoted, advertised, distributed, or offered for sale by Defendants originates from or is directly
or indirectly sponsored by, approved by, affiliated with, or connected with King’s Hawaiian; and
3.
Conveying the impression to the public through displays, advertising,
packaging, or otherwise that any product offered by Defendants originates from or is directly or
indirectly sponsored by, approved by, affiliated with, or connected with King’s Hawaiian;
B.
Award King’s Hawaiian its actual damages and Defendants’ profits from
Defendants’ wrongful acts;
C.
Award King’s Hawaiian its costs of suit and reasonable attorneys’ fees;
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 16 of 18
17
D.
Award King’s Hawaiian treble its actual damages and an enhancement of
Defendants’ profits pursuant to 15 U.S.C. § 1117(a);
E.
Enter an order, pursuant to 15 U.S.C. §§ 1118 and 1125(c)(3) and other applicable
law, directing Defendants to deliver up for destruction all products, fabrics, labels, signs, prints,
packages, dies, wrappers, receptacles, and advertisements in its possession or under its control,
bearing any unauthorized copy of the King’s Hawaiian Sweet Roll Packaging Trade Dress or any
simulation, reproduction, counterfeit, copy, confusingly-similar likeness, or colorable imitation
thereof, and all plates, molds, matrices, and other means of making the same;
F.
Award restitutionary relief against Defendants and in favor of King’s Hawaiian,
including disgorgement of wrongfully obtained profits and any other appropriate relief;
G.
Award King’s Hawaiian punitive damages pursuant to Texas law in an amount
sufficient to punish Defendants and deter such willful misconduct in the future;
H.
Award any other legal and/or equitable remedies to which King’s Hawaiian may
be entitled, including all remedies provided for in 15 U.S.C. § 1117(a) and under any other Texas
state statutory or common law; and
I.
Award such other and further relief as this Court deems just and proper.
JURY DEMAND
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiffs King’s
Hawaiian Holding Company, Inc.; King’s Hawaiian Bakery West, Inc.; and King’s Hawaiian
Bakery Southeast, Inc., and each of them, hereby demand trial by jury on all issues so triable.
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 17 of 18
18
DATED: December 16, 2020
By
Christopher D. Porter (Texas Bar No. 24070437)
Attorney-in-Charge
Southern District of Texas Bar No. 1052367
QUINN EMANUEL URQUHART & SULLIVAN, LLP
711 Louisiana Street, Suite 500
Houston, Texas 77002
Tel: (713) 221-7000
Fax: (713) 221-7100
Email: chrisporter@quinnemanuel.com
Scott B. Kidman (admission pro hac vice pending)
QUINN EMANUEL URQUHART & SULLIVAN, LLP
865 South Figueroa Street, 10th Floor
Los Angeles, California 90017-2543
Tel: (213) 443-3000
Fax: (213) 443-3100
Email: scottkidman@quinnemanuel.com
Brian M. Wheeler (admission pro hac vice pending)
ATKINSON, ANDELSON, LOYA, RUUD & ROMO
A Professional Corporation
12800 Center Court Drive South, Suite 300
Cerritos, California 90703-9364
Tel: (562) 653-3200
Fax: (562) 653-3333
Email: bwheeler@aalrr.com
Attorneys for Plaintiffs King’s Hawaiian Holding
Company, Inc.; King’s Hawaiian Bakery West, Inc.; and
King’s Hawaiian Bakery Southeast, Inc.
Case 4:20-cv-04283 Document 1 Filed on 12/16/20 in TXSD Page 18 of 18
