buzz ballz v booze box

8/9/2019 Buzz Ballz v Booze Box

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PLAINTIFF’S ORIGINAL COMPLAINT PAGE 1

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

BUZZBALLZ, L.L.C., §

§Plaintiff, §

§

v. §

§

JEM BEVERAGE COMPANY, § Case No.: 3:15-cv-00588

L.L.C. f/k/a JEM BEVERAGE §

COMPANY, INC.; CARLOS G. §

GUILLEM; and ADAM M. PURCELL §

§

Defendants. §

PLAINTIFF BUZZBALLZ, L.L.C.’S ORIGINAL COMPLAINT AGAINST

DEFENDANTS JEM BEVERAGE COMPANY, L.L.C. F/K/A JEM BEVERAGE

COMPANY, INC.; CARLOS G. GUILLEM; AND ADAM M. PURCELL

TO THE HONORABLE COURT:

COMES NOW, Plaintiff BUZZBALLZ, L.L.C. (“BUZZBALLZ”) and brings its Original

Complaint against Defendants JEM Beverage Company, L.L.C. f/k/a JEM Beverage Company,

Inc.; Carlos G. Guillem; and Adam M. Purcell (the “Complaint”) and, in support of said Complaint,

avers as follows:

I. PARTIES

1. Plaintiff BUZZBALLZ is a Texas Limited Liability Company with a principle

place of business located in Dallas County, Texas.

2. Defendant JEM BEVERAGE COMPANY, L.L.C. F/K/A JEM BEVERAGE

COMPANY, INC. (“JEMBEVCO”) is a Texas Limited Liability Company with a principle place

of business at 2525 Tarpley Rd., Suite 104, Carrollton, Texas 75006 and may be served with

Case 3:15-cv-00588-L Document 1 Filed 02/19/15 Page 1 of 17 PageID 1


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process by and through its Registered Agent, John Straits, located at 2525 Tarpley Rd., Suite 104,

Carrollton, Texas 75006 or wherever else he may be found.

3. Defendant CARLOS G. GUILLEM (“GUILLEM”) is an individual who resides

and may be served at 727 Lathrop St., Argyle, Texas 76226 or wherever else he may be found.

4. Defendant ADAM M. PURCELL (“PURCELL”) is an individual who resides and

may be served at 13208 S. Pipeline Rd., Euless, Texas 76040 or wherever else he may be found.

II. JURISDICTION & VENUE

5. This Court has subject-matter jurisdiction over BUZZBALLZ’s claims pursuant to

15 U.S.C. § 1121 and 28 U.S.C. § 1331, 1338, and 1367.

6. Venue is proper in this district with respect to BUZZBALLZ’s claims, pursuant to

28 U.S.C. § 1391.

III. FACTUAL BACKGROUND

7. BUZZBALLZ has been using the term “BuzzBallz” and a stylized form of such

term as trademarks in connection with its sale of pre-mixed, alcoholic beverages for over five (5)

years and has registered such trademarks with the United States Patent and Trademark Office (the

“USPTO”).

8. Specifically, BUZZBALLZ is the owner of a Federal Graphic Trademark,

Registration No. 3,865,524, in International Class 33 for an image consisting of the word

“BuzzBallz” in Gill Sans Ultra Bold Font with depictions of rounded drink containers (the

“BuzzBallz Graphic Mark”), as follows:



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9. Said BuzzBallz Graphic Mark was first used by BUZZBALLZ not later than March

1, 2009 and was first used in commerce not later than October 1, 2009. A true and correct copy

of the Certificate of Registration for said BuzzBallz Graphic Mark is attached hereto as “Exhibit

A” and is incorporated by reference as if fully set forth herein.

10. BUZZBALLZ is also the owner of a Federal Text Trademark, Registration No.

4,498,235, in International Class 33 for the text “BuzzBallz” (the “BuzzBallz Text Mark”)

(hereinafter the BuzzBallz Text Mark and the BuzzBallz Graphic Mark are collectively referred to

as the “BuzzBallz Marks”). Said BuzzBallz Text Mark was first used by BUZZBALLZ not later

than March 1, 2009 and was first used in commerce not later than October 1, 2009. A true and

correct copy of the Certificate of Registration for said BuzzBallz Text Mark is attached hereto as

“Exhibit B” and is incorporated by reference as if fully set forth herein.

11. Additionally, in connection with its sale of products under the BuzzBallz Marks,

BUZZBALLZ has used product packaging with a consistent overall look constituting trade dress

comprised of a beverage container in the approximate form of a primary geometric figure—to wit,

a ball shape—of a single bright color with a suggestive or fanciful flavor name and texts in fanciful

fonts—including, and —designed to create and/or

suggest a party atmosphere (the “BuzzBallz Trade Dress”). Fig. 1 below is a representative

sampling of the BuzzBallz Trade Dress demonstrating its overall consistent appearance:

Fig. 1



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17. GUILLEM’s employment with BUZZBALLZ continued until in or about

December 2013.

18. Despite his employment with BUZZBALLZ, upon information and belief,

GUILLEM was representing and providing services to BUZZBALLZ’ competitor, JEMBEVCO,

during the same period of time; specifically, GUILLEM was engaged by JEMBEVCO on or about

March 29, 2013, and an article in the Dallas Morning News, dated November 22, 2013, indicated

GUILLEM as a representative of JEMBEVCO. A true and correct copy of said engagement

between GUILLEM and JEMBEVCO is attached hereto as “Exhibit D” and is incorporated by

reference as if fully set forth herein. A true and correct copy of said Dallas Morning News article

is attached hereto as “Exhibit E” and is incorporated by reference as if fully set forth herein.

19. Upon information and belief, in or about December 2013, JEMBEVCO and

GUILLEM, in combination with others, began a concerted effort to unfairly compete with

BUZZBALLZ and trade off the consumer goodwill BUZZBALLZ had developed in its products

sold under the BuzzBallz Marks and BuzzBallz Trade Dress.

20.

Specifically, upon information and belief, over the course of 2014, JEMBEVCO

and GUILLEM, in combination with others, began developing a line of pre-mixed, alcoholic

beverages under a name confusingly similar to the BuzzBallz Marks—namely, “BoozeBox”—and

a trade dress confusingly similar to the BuzzBallz Trade Dress—specifically, a beverage container

in the approximate form of a primary geometric figure—to wit, a box shape—of a single bright

color with a suggestive or fanciful flavor name and texts in fanciful fonts designed to create and/or

suggest a party atmosphere. Fig. 2 below is a representative example of the BoozeBox products:



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PLAINTIFF’SORIGINALCOMPLAINT PAGE 6

Fig. 2

21. Upon information and belief, as part of the development of such line of competing

products, GUILLEM disclosed to JEMBEVCO, and JEMBEVCO utilized, various BuzzBallz

Trade Secrets, including beverage formulas and recipes and BUZZBALLZ’ marketing strategies.

22. Moreover, upon information and belief, PURCELL, who was employed by

BUZZBALLZ from February 25, 2013 to January 31, 2014 and had previously worked with

GUILLEM, disclosed certain confidential and proprietary information belonging to

BUZZBALLZ, including manufacturing procedures and specifications, to GUILLEM and/or

JEMBEVCO during the course of his employment with BUZZBALLZ.

23.

The term “BoozeBox” is substantially and confusingly similar to the BuzzBallz

Marks. Specifically, both the terms “BuzzBallz” and “BoozeBox” incorporate an initial term

suggestive of alcohol, which term incorporates an initial “b” and rounded vowel sound and ends

in a “z,” followed by a second term suggestive of the shape of the beverage container, which term

alliteratively begins with “b” and incorporates a rounded vowel sound. Further, both terms involve

the same number of syllables, the same pattern of percussive beats, and the same emphases.

Amidst such similarities, the primary difference between “BuzzBallz” and “BoozeBox” is merely

the difference in endings of the first and second terms—specifically, “uzz” versus “ooze” and “llz”

versus “x,” respectively.



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24. Further, in conjunction with the similarity of the terms set forth above, as used on

the BoozeBox product, the term “BoozeBox” is confusingly similar to the BuzzBallz Graphic

Mark in that the font and the setting of the term is practically identical.

25. Additionally, the product packaging employed for the BoozeBox products is

confusingly similar to the BuzzBallz Trade Dress in that both incorporate a beverage container of

a primary geometric shape with bright colors, suggestive or fanciful flavor name, and texts in

fanciful fonts, all evocative of a party atmosphere. As set forth in Fig. 3 below, a side-by-side

visual comparison readily demonstrates the confusing similarity of the product packaging for

BoozeBox as compared to the BuzzBallz Trade Dress:

Fig. 3

26. Additionally, as set forth above, upon information and belief, the BoozeBox

products have been developed through the misappropriation and use of the BuzzBallz Trade

Secrets.



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1114(1)(a); ii) Trade Dress Infringement under 15 U.S.C. § 1125(a)(1)(A); iii) Breach of Non-

Disclosure Agreement; iv) Breach of Fiduciary Duty; v) Misappropriation of Trade Secrets; vi)

Unfair Competition; and vii) Civil Conspiracy, as follows:

A. COUNT I: TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1114(1)(A)

31. Plaintiff owns the BuzzBallz Marks.

32. Plaintiff has protectable rights in the BuzzBallz Marks.

33. Plaintiff’s use of the BuzzBallz Marks predates Defendant JEMBEVCO’s use of

the term “BoozeBox” in that the alleged first use date for the term “BoozeBox” is August 29, 2014.

34.

Defendant JEMBEVCO’s use of the term “BoozeBox” is in the same class as

Plaintiff’s use of its BuzzBallz Marks—namely, International Class 33.

35. Plaintiff is the owner of valid, protectable, and registered trademarks—namely, the

BuzzBallz Marks—the primary significance of which, in the minds of the public, is to identify the

source of the product in addition to the product itself.

36. Plaintiff, by its commercial and marketing efforts, has developed substantial

consumer goodwill in and awareness of its BuzzBallz Marks.

37. Defendant JEMBEVCO has infringed upon Plaintiff’s exclusive right to use its

proprietary BuzzBallz Marks by, inter alia, placing into commerce, offering to sell, selling, and/or

distributing goods under and/or bearing a colorable imitation of the BuzzBallz Marks—namely,

the term “BoozeBox”—without Plaintiff’s consent.

38. Such unauthorized use of the term “BoozeBox” by Defendant JEMBEVCO has

caused actual confusion and is likely to continue causing confusion, mistake, or deception to the

public.



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39. As such, Defendant JEMBEVCO has infringed Plaintiff’s BuzzBallz Marks in

violation of 15 U.S.C. § 1114(1)(a).

40. Upon information and belief, Defendant JEMBEVCO, in combination with others,

used the term “BoozeBox” with the intent and in a willful attempt to trade upon the consumer

goodwill and awareness Plaintiff has developed in its BuzzBallz Marks by using a substantially

similar mark likely to mislead, deceive, or confuse consumers.

41. Pursuant to 15 U.S.C. § 1116, Plaintiff respectfully requests that the Court enter a

permanent injunction against Defendant JEMBEVCO, enjoining it from using the term

“BoozeBox” or any confusingly similar variant thereof.

42. Pursuant to 15 U.S.C. § 1117, Plaintiff is entitled to recover Defendant

JEMBEVCO’s profits arising from its use of the term “BoozeBox,” as well as the costs of this

action and damages to Plaintiff caused by such use.

B. COUNT II: TRADE DRESS INFRINGEMENT UNDER 15 U.S.C. § 1125(A)(1)(A)

43. Plaintiff is the owner of valuable and protectable trade dress rights in its BuzzBallz

Trade Dress for the packaging of its products sold under the BuzzBallz Marks.

44. Such BuzzBallz Trade Dress is, in its entirety, legally nonfunctional.

45. Further, such BuzzBallz Trade Dress is, in its entirety, inherently distinctive, being

arbitrary in its design.

46. Moreover, such BuzzBallz Trade Dress has acquired secondary meaning in that the

primary significance of such BuzzBallz Trade Dress in the minds of consumers is as an indication

of the source of the products.

47. Plaintiff, by its commercial and marketing efforts, has developed substantial

consumer goodwill in and awareness of its BuzzBallz Trade Dress.



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48. Defendant JEMBEVCO, in connection with its products under the term

“BoozeBox,” has developed and placed into commerce product packing in imitation of and bearing

a substantial similarity to the BuzzBallz Trade Dress, which product packaging is likely to cause,

and has caused, confusion, mistake, or deception as to the source, sponsorship, and/or approval of

Defendant JEMBEVCO’s goods.

49. Such use of deceptively similar product packaging by Defendant JEMBEVCO

constitutes a false and misleading designation likely to cause confusion as to the source of

Defendant JEMBEVCO’s goods in violation of 15 U.S.C. § 1125(a).

50.

Moreover, upon information and belief, Defendant JEMBEVCO, in combination

with others, developed and used its product packaging with the intent and in a willful attempt to

trade upon the consumer goodwill and awareness Plaintiff has developed in its BuzzBallz Trade

Dress by imitating such trade dress.

51. Pursuant to 15 U.S.C. § 1116, Plaintiff respectfully requests that the Court enter a

permanent injunction against Defendant JEMBEVCO, enjoining it from using any product

packaging bearing a substantial similarity to Plaintiff’s BuzzBallz Trade Dress.

52. Pursuant to 15 U.S.C. § 1117, Plaintiff is entitled to recover Defendant

JEMBEVCO’s profits arising from its infringement of Plaintiff’s BuzzBallz Trade Dress, as well

as the costs of this action and damages to Plaintiff caused by such infringement.

C. COUNT III: BREACH OF NON-DISCLOSURE AGREEMENT

53. Plaintiff and Defendant GUILLEM had between them a valid and enforceable

contract—namely, the Non-Disclosure Agreement—whereby Defendant GUILLEM was

constrained not to disclose to third parties any confidential information provided to him by



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60. Defendant PURCELL’s breach of his fiduciary duty to Plaintiff has caused harm to

Plaintiff, including, but not limited to, lost sales, lost market share, and lost competitive advantage.

61. Plaintiff respectfully requests that this Court enter judgment against Defendant

PURCELL for Plaintiff’s damages arising from Defendant PURCELL’s breach of his fiduciary

duty.

E. COUNT V: MISAPPROPRIATION OF TRADE SECRETS

62. Plaintiff owned and owns certain valuable and proprietary information, which

information has been and is the subject of reasonable efforts by Plaintiff to maintain the secrecy

thereof, that derives independent economic value, both actual and potential, from not being

generally known to, nor readily ascertainable by proper means by, other persons who can obtain

economic value from its disclosure or use—to wit, the BuzzBallz Trade Secrets.

63. Upon information and belief, Defendant JEMBEVCO, in concert with Defendant

GUILLEM and/or Defendant PURCELL, misappropriated all or some of the BuzzBallz Trade

Secrets by inducing Defendant GUILLEM and/or Defendant PURCELL to breach their respective

relationships with and obligations to Plaintiff and/or by accepting and using such BuzzBallz Trade

Secrets despite knowing or having reason to know that such information was procured through

breach of duties to Plaintiff.

64. Upon information and belief, Defendant JEMBEVCO’s misappropriation of

Plaintiff’s BuzzBallz Trade Secrets was done willfully and maliciously in a concerted effort and

attempt to deprive Plaintiff of the commercial benefits arising from its efforts in researching,

developing, and protecting its BuzzBallz Trade Secrets.



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65. Pursuant to Tex. Civ. Prac. & Rem. Code § 134A.003, Plaintiff respectfully

requests that the Court enter a permanent injunction against Defendants JEMBEVCO, GUILLEM,

and PURCELL, enjoining them from using any portion of the BuzzBallz Trade Secrets.

66. Defendant JEMBEVCO’s misappropriation of Plaintiff’s BuzzBallz Trade Secrets

has caused harm to Plaintiff, including, but not limited to, lost sales, lost market share, and lost

competitive advantage.

67. Pursuant to Tex. Civ. Prac. & Rem. Code § 134A.004, Plaintiff respectfully

requests that the Court enter judgment against Defendant JEMBEVCO for Plaintiff’s damages

arising from Defendant JEMBEVCO’s misappropriation of the BuzzBallz Trade Secrets,

including Plaintiff’s actual losses and Defendant JEMBEVCO’s unjust enrichment. Plaintiff

further respectfully requests that, in consideration of the willful and malicious nature of Defendant

JEMBEVCO’s misappropriation, the Court award exemplary damages to Plaintiff of up to twice

Plaintiff’s actual damages.

F. COUNT VI: UNFAIR COMPETITION

68.

Plaintiff, by its commercial efforts, has researched, developed, and successfully

marketed a novel line of products and has engendered valuable consumer goodwill.

69. Defendant JEMBEVCO has engaged in a concerted effort to deprive Plaintiff of

the benefits of Plaintiff’s commercial efforts and trade upon the consumer goodwill Plaintiff has

established in its goods by creating a slavish imitation of Plaintiff’s goods utilizing the knowledge

and experience gained by Defendants GUILLEM and PURCELL as a result of the trust that

Plaintiff placed in them in the course of their respective fiduciary relationships with Plaintiff.

70. By slavishly imitating Plaintiff’s products and seeking to trade upon the consumer

goodwill therein, Defendant JEMBEVCO is seeking to perpetuate a fraud on consumers by



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causing them to mistake Defendant JEMBEVCO’s products for Plaintiff’s and is unfairly

competing with Plaintiff.

71. Defendant JEMBEVCO’s unfair competition has caused and/or is likely to cause

Plaintiff actual damages, including lost profits and lost market share.

72. Accordingly, Plaintiff respectfully requests that the Court enter judgment against

Defendant JEMBEVCO for Plaintiff’s damages arising from Defendant JEMBEVCO’s unfair

competition, including Plaintiff’s actual losses and Defendant JEMBEVCO’s unjust enrichment.

G. COUNT VII: CIVIL CONSPIRACY

73.

Defendants JEMBEVCO, GUILLEM, and PURCELL were and are members of a

combination, the object of which was to accomplish certain unlawful purposes and/or lawful

purposes by unlawful means. To wit, Defendants, together with others, have engaged in various

acts as set forth above—including, but not limited to, trademark infringement, trade dress

infringement, and trade secret misappropriation—the overall purpose of which was a concerted

effort to unlawfully deprive Plaintiff of the commercial benefits of its efforts to create, develop,

market, and sell its products under the BuzzBallz Mark and BuzzBallz Trade Dress and to give

Defendant JEMBEVCO the unearned benefit of such efforts by allowing for swifter entry into the

market and the unfair taking of a portion of Plaintiff’s hard-won market share.

74. Defendants JEMBEVCO, GUILLEM, and PURCELL had among them a meeting

of the minds as to the object of their combination.

75. Defendants JEMBEVCO, GUILLEM, and PURCELL committed the unlawful and

overt acts complained of hereinabove in furtherance of the object of their combination.

76. Plaintiff has suffered injuries as a proximate result of Defendants JEMBEVCO,

GUILLEM, and PURCELL’s overt and unlawful acts.



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77. Accordingly, Plaintiff respectfully requests that the Court hold Defendants

JEMBEVCO, GUILLEM, and PURCELL jointly and severally liable for the wrongful acts

complained of hereinabove.

V. ATTORNEY’S FEES

78. Because of the conduct of Defendants, Plaintiff has been compelled to engage the

services of an attorney to prosecute this action. Because of the willful and intentional nature of

Defendant JEMBEVCO’s infringement of Plaintiff’s BuzzBallz Marks and BuzzBallz Trade

Dress, this case is exceptional, and the Court may award Plaintiff its reasonable attorney’s fees,

pursuant to 15 U.S.C. § 1117. Additionally, because of the willful and malicious nature of

Defendant JEMBEVCO’s misappropriation of the BuzzBallz Trade Secrets, the Court may award

Plaintiff its reasonable attorney’s fees, pursuant to Tex. Civ. Prac. & Rem. Code § 134A.005.

Accordingly, in the event that Plaintiff prevails on its cause of action for trademark infringement,

trade dress infringement, and/or trade secret misappropriation Plaintiff respectfully requests that

the Court award it a reasonable sum for the necessary services of Wilson Legal Group P.C. incurred

in the preparation and trial of this action and any resulting appeal.

VI. PRAYER

WHEREFORE, PREMISES CONSIDERED, Plaintiff BUZZBALLZ, L.L.C. prays that

this Court enter judgment against Defendants JEM BEVERAGE COMPANY, L.L.C. F/K/A JEM

BEVERAGE COMPANY, INC.; CARLOS G. GUILLEM; and ADAM M. PURCELL, holding

them jointly and severally liable for Plaintiff’s claims for Trademark Infringement under 15 U.S.C.

§ 1114(1)(a); Trade Dress Infringement under 15 U.S.C. § 1125(a)(1)(A); Breach of Non-

Disclosure Agreement; Breach of Fiduciary Duty; Misappropriation of Trade Secrets; Unfair

Competition; and Civil Conspiracy. Plaintiff further prays that the Court enter a permanent



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injunction against Defendant JEMBEVCO, enjoining it from using the term “BoozeBox,” any

confusingly similar variant thereof, and any product packaging bearing a substantial similarity to

the BuzzBallz Trade Dress. Plaintiff further prays that the Court enter a permanent injunction

against all Defendants, enjoining them from using and/or disseminating any of the BuzzBallz

Trade Secrets. Plaintiff prays that the Court award Plaintiff its actual damages and Defendant

JEMBEVCO’s profits arising from Defendant JEMBEVCO’s use of the Term “BoozeBox,”

product packaging bearing a substantial similarity to the BuzzBallz Trade Dress, and/or any of the

BuzzBallz Trade Secrets; award Plaintiff its actual damages arising from Defendant GUILLEM’s

breach of the Non-Disclosure Agreement; award Plaintiff its actual damages arising from

Defendant PURCELL’s breach of his fiduciary duty to Plaintiff; award Plaintiff exemplary

damages of up to twice its actual damages arising from Defendant JEMBEVCO’s willful and

malicious misappropriation of the BuzzBallz Trade Secrets; and award Plaintiff its costs and

reasonable attorney’s fees. Plaintiff prays for such further relief, at law or in equity, to which it

may show itself entitled.

DATED: February 19, 2015. Respectfully submitted,

WILSON LEGAL GROUP P.C.

By: /s/ John T. Wilson

John T. Wilson

State Bar No. 24008284

[email protected]

Kandace D. Walter

State Bar No. 24047068

[email protected]

16610 Dallas Parkway, Suite 1000Dallas, Texas 75248

(T) 972.248.8080;

(F) 972.248.8088;

ATTORNEYS FOR PLAINTIFF

BUZZBALLZ, L.L.C.



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“EXHIBIT A”

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“EXHIBIT B”



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“EXHIBIT C”



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“EXHIBIT D”



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“EXHIBIT E”



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buzz ballz v booze box

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