CASE 0:23-cv-00110-JWB-TNL Doc.

1 Filed 01/13/23 Page 1 of 9

UNITED STATES DISTRICT COURT

DISTRICT OF MINNESOTA

POST FOODS, LLC,

Case No. ____________________
Plaintiff,

v. COMPLAINT FOR
DECLARATORY JUDGMENT
OK GO PARTNERSHIP, DAMIAN J.
KULASH, JR., TIMOTHY J. NORDWIND,
DANIEL M. KONOPKA, AND ANDREW B.
ROSS,

Defendants

Plaintiff Post Foods, LLC (“Post”), for its Complaint for Declaratory Judgment

against Defendants OK Go Partnership (“Defendant Partnership”) and Damian J. Kulash

Jr., Timothy J. Nordwind, Daniel M. Konopka, and Andrew B. Ross (Defendant

Partnership and individual defendants collectively referred to herein as “Defendants”)

states as follows:

Nature of Action

1. Defendant Partnership—a musical group performing

under the name OK Go (“Defendants’ Alleged Mark”)—accused

Post of violating the United States Trademark Act (“Lanham Act”)

by attempting to register and use the mark OK GO! in connection

with on-the-go breakfast cereal products, an example of which is shown to the right.

2. Defendant Partnership alleges that Post’s use of OK GO! will cause

confusion, lead to false association of Defendant Partnership with Post and its products,

and, among other things, suggest to consumers that Defendant Partnership is endorsing
 CASE 0:23-cv-00110-JWB-TNL Doc. 1 Filed 01/13/23 Page 2 of 9

Post’s products, or that Post has received Defendant Partnership’s permission to use

Defendants’ Alleged Mark, in each case despite at least: (a) Defendants having no rights

to Defendants’ Alleged Mark in connection with cereal products or any other food or

beverage products, (b) the prominent display of Post’s federally registered “house mark”

POST® as well as secondary branding that is also federally registered (e.g., HONEY

BUNCHES OF OATS®, PEBBLES®, etc.), (c) significant differences between the parties’

respective goods and services, (d) significant differences between the parties’ respective

channels of trade, and (e) differences in the appearance of the parties’ respective marks.

3. Post denies Defendant Partnership’s allegations. Because of the actual case

and controversy created by Defendant Partnership’s allegations, and the parties’ failure to

resolve this matter amicably, Post seeks a declaratory judgment from this Court finding

that use of the OK GO! mark in connection with breakfast cereals and cereal-based

products does not violate the Lanham Act or any alleged rights in Defendants’ Alleged

Mark.

The Parties

4. Plaintiff Post Foods, LLC is a Delaware limited liability company,

authorized to do and is doing business in the State of Minnesota, with its principal place of

business at 20802 Kensington Blvd., Lakeville, Minnesota 55044.

5. On information and belief, Defendant OK Go Partnership is a California

partnership comprised of Damian J. Kulash Jr., Timothy J. Nordwind, Daniel M. Konopka,

-2-
 CASE 0:23-cv-00110-JWB-TNL Doc. 1 Filed 01/13/23 Page 3 of 9

and Andrew B. Ross with its principal place of business at 250 West 57th Street, 23rd Floor,

New York, New York 10107.1

6. On information and belief, Defendant Damian J. Kulash Jr. is a California

resident currently residing at 1726 Deloz Ave., Los Angeles, CA 90027-4616.

7. On information and belief, Defendant, Timothy J. Nordwind is a California

resident currently residing at 2000 Baxter Street, Los Angeles, CA 90039-3913.

8. On information and belief, Defendant, Daniel M. Konopka is a California

resident currently residing at 1120 N. Florence St., Burbank, CA 91505-2333.

9. On information and belief, Defendant, Andrew B. Ross is a California

resident currently residing at 1955 Anaheim Ave., Apt. D1, Costa Mesa, CA 92627-5526.

Jurisdiction and Venue

10. This Court has jurisdiction over the subject matter of this action under the

Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, the Federal Trademark

(Lanham) Act, 15 U.S.C. § 1051 et seq., and 28 U.S.C. §§ 1331 and 1338 since this action

seeks declaratory judgment for claims involving trademarks and because an actual case or

controversy exists between Post and Defendants as a result of Defendant Partnership’s

threats and allegations.

1
The allegations of infringement and threats of litigation have been previously raised on behalf of Defendant
Partnership; however, according to United States Patent and Trademark Office records for Reg. Nos. 3439835 and
3440393, the individual partners of Defendant Partnership may also claim ownership in Defendants’ Asserted Mark.
Therefore, Post names the individuals as defendants to ensure this action finally and forever resolves the issues
between the parties.

-3-
 CASE 0:23-cv-00110-JWB-TNL Doc. 1 Filed 01/13/23 Page 4 of 9

11. This Court has personal jurisdiction over Defendants because, upon

information and belief, Defendants transact business in the State of Minnesota and in this

judicial district. Furthermore, Defendants purposefully directed their objections and threats

of infringement toward Minnesota and this district, including, without limitation, through

Defendant Partnership’s September 9, 2022 cease and desist letter sent to Post’s General

Counsel at 20802 Kensington Blvd., Lakeville, Minnesota 55044.

12. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b), (c) and

(d) because Defendants are subject to personal jurisdiction in this judicial district, a

substantial part of the events giving rise to the claims asserted in the Complaint occurred

in this judicial district, and a substantial part of the property that is the subject of this action

is situated in this judicial district.

Facts Common to All Counts

13. Post provides its consumers with high-quality, delicious cereal products (e.g.,

HONEY BUNCHES OF OATS®, FRUITY PEBBLES®, GRAPE-NUTS®, GREAT

GRAINS®, MALT-O-MEAL®, HONEY-COMB®, and others). Defendants do not provide

any similar goods and/or services. Defendants are all part of a musical group that primarily

provides entertainment services through musical performances.

14. On May 4, 2022, Post filed a trademark application with the United States

Patent and Trademark Office (“USPTO”) for the mark OK GO! in connection with

breakfast cereals; cereal-based snack foods (Ser. No. 97394932). The USPTO examined

the application, conducted a search, raised no objections, and published the application for

opposition on August 30, 2022. By approving the application for publication, the USPTO

-4-
 CASE 0:23-cv-00110-JWB-TNL Doc. 1 Filed 01/13/23 Page 5 of 9

concluded following its search and examination that Post’s OK GO! mark is entitled to

registration on the Principal Register, upon acceptance of a statement of use. The USPTO

did not make a finding that Post’s proposed use of OK GO! is likely to cause confusion

with Defendants’ Alleged Mark or any other mark.

15. On September 9, 2022, counsel for Defendant Partnership sent a cease and

desist letter to Post’s General Counsel. Defendant Partnership claimed ownership of federal

trademark registrations for Defendants’ Alleged Mark (Registration Nos. 3439835 and

3440393) and alleged that Post’s application to register the OK GO! mark and its intended

use of that mark in connection with cereal products, will cause confusion, lead to false

association of Defendant Partnership with Post and its products, and, among other things,

suggest to consumers that Defendant Partnership is endorsing Post’s products, or that Post

has received Defendant Partnership’s permission to use Defendants’ Alleged Mark. A true

and accurate copy of the September 9, 2022 letter is attached as Exhibit 1 and incorporated

herein by reference.

16. In its September 9, 2020 letter, Defendant Partnership further demanded that

Post agree to not use at any time now or in the future the mark OK GO.

17. In a letter dated September 20, 2022, Post responded to Defendant

Partnership generally denying the allegations raised in Defendant Partnership’s September

9, 2022 letter. Post acknowledged that the parties had previously worked on a project

together over a decade earlier but assured Defendant Partnership that the proposed use and

registration of OK GO! was not influenced in any way by the earlier collaboration and that

Post believed no one involved with the prior collaboration was still with the company. A

-5-
 CASE 0:23-cv-00110-JWB-TNL Doc. 1 Filed 01/13/23 Page 6 of 9

true and accurate copy of Post’s letter dated September 20, 2022 refuting Defendant

Partnership’s accusations is attached as Exhibit 2 and incorporated herein by reference.

18. On September 28, 2022, Defendant Partnership filed a request for an

extension with the USPTO Trademark Trial and Appeal Board to oppose Post’s application

for OK GO!, claiming it needed additional time to investigate its claim and confer with

counsel.

19. On October 12, 2022, Defendant Partnership’s counsel sent Post a response

letter and reiterated that it would not hesitate to take any action that is necessary to protect

its alleged mark. A true and accurate copy of the October 12, 2022 letter is attached as

Exhibit 3 and incorporated herein by reference.

20. On December 16, 2022, Defendant Partnership received a final extension of

time to oppose Post’s trademark application for OK GO!

21. Good faith efforts to resolve this dispute have not been fruitful. In December

2022, Post offered to pay Defendant Partnership for a branding collaboration/co-marketing

arrangement in an effort to resolve this matter. Defendant Partnership’s counsel rejected

Post’s offer on January 10, 2023, provided no counter-offer, and indicated a Lanham Act

action may be necessary.

22. Therefore, given Defendant Partnership’s clear threat of potential litigation,

the parties’ inability to resolve this matter amicably, and Post’s recent release of the OK

GO! product into the market this month, an actual case and controversy exists to forever

resolve any legal dispute between the parties and establish that Post is free to use the OK

GO! mark. Without resolution by this Court, Post will be unfairly forced to continue

-6-
 CASE 0:23-cv-00110-JWB-TNL Doc. 1 Filed 01/13/23 Page 7 of 9

investing in its new OK GO! brand while under the constant threat of unfounded future

litigation by Defendants.

COUNT I
DECLARATORY JUDGMENT UNDER 28 U.S.C. § 2201
(NO VIOLATION OF THE LANHAM ACT OR RELATED LAWS)

23. Post re-alleges and incorporates by reference the foregoing paragraphs of

this Complaint as though set forth fully under this Count.

24. Based at least on the facts stated above, Post’s use of the mark OK GO! in

connection with breakfast cereals and cereal-based products is not likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association

of Post with Defendants, or as to the origin, sponsorship, or approval of Post’s goods,

service, or commercial activities by Defendants under the Lanham Act or related laws,

including state law and common law. Post’s use of the mark OK GO! in connection with

breakfast cereals and cereal-based products is also not likely to cause dilution by blurring

or tarnishment with Defendants’ Alleged Mark.

25. If the Court does not declare that Post’s use of the OK GO! mark does not

violate the Lanham Act (and related state laws and common law) or any of Defendants’

alleged rights in Defendants’ Alleged Mark, Post will remain in a position of unreasonable

apprehension of unfounded future litigation.

26. As such, Post respectfully requests that this Court enter a declaratory

judgment finding that Post’s use of the OK GO! mark does not violate the Lanham Act

-7-
 CASE 0:23-cv-00110-JWB-TNL Doc. 1 Filed 01/13/23 Page 8 of 9

(and any related state laws or common law) or any of Defendants’ alleged rights in

Defendants’ Alleged Mark.

PRAYER FOR RELIEF

WHEREFORE, Post respectfully prays for the following relief:

A. Judgment in favor of Post on Count I;

B. That this Court enter a declaration finding that (i) Post can lawfully use the

OK GO! mark; (ii) Post’s use of the OK GO! mark does not violate the Lanham Act or any

related state laws; (iii) Post’s use of the OK GO! mark does not violate any of Defendants’

purported rights in Defendants’ Alleged Mark; and (iv) Defendants’ Alleged Mark is not

famous under the Lanham Act for purposes of dilution by blurring or tarnishment;

C. That this Court award Post (i) its attorney fees pursuant to 15 U.S.C. §

1117(a); (ii) its expenses and costs; (iii) any further relief pursuant to 28 U.S.C. § 2202;

and (iv) all other monetary relief to which Post is entitled; and

D. That this Court award Post any other and/or further relief to which Post may

be entitled under the circumstances.

Respectfully Submitted,

Dated: January 13, 2023 WINTHROP & WEINSTINE, P.A.

By: s/ Aimée D. Dayhoff

Aimée D. Dayhoff, #0319041
225 South Sixth Street, Suite 3500
Minneapolis, MN 55402
Telephone: (612) 604-6400
Facsimile: (612) 604-6800
adayhoff@winthrop.com

-8-
 CASE 0:23-cv-00110-JWB-TNL Doc. 1 Filed 01/13/23 Page 9 of 9

THOMPSON COBURN LLP

Thomas A. Polcyn (Pro Hac Vice to be

submitted)
Matthew A. Braunel (Pro Hac Vice to be
submitted)
Justin Powers Mulligan (Pro Hac Vice to be
submitted)
One US Bank Plaza
St. Louis, MO 63101
P: (314) 552-6000
F: (314) 552-7000
tpolcyn@thompsoncoburn.com
mbraunel@thompsoncoburn.com
jmulligan@thompsoncoburn.com

Attorneys for Plaintiff Post Foods, LLC

25523734v1

-9-