A Pewaukee-based specialty coffee roaster has filed a trademark infringement lawsuit against an Ohio-based coffee company for continuing to use a series of trademarks it willingly gave up the rights to.
Express Coffee, a specialty coffee roaster and distributor operating at N28 W2300 Roundy Drive in Pewaukee, filed the lawsuit in U.S. District Court for the Eastern District of Wisconsin against Brecksville, Ohio-based
Caruso’s Coffee, another specialty coffee roaster.
In April 2006,
Coffee Holding Co. and Caruso’s Coffee entered into a joint venture agreement to form a new entity called Generations Coffee. Coffee Holding Co. is a Brooklyn, New-York based integrated wholesale coffee roaster and dealer.
Generations Coffee was created to roast and sell private label specialty coffees for distribution across the country. As part of the agreement, Coffee Holding Co. owned a 60% equity interest in Generations Coffee while Caruso’s Coffee owned the remaining 40%, according to the complaint.
Then, in April 2018, Generations Coffee acquired Madison-based
Steep N Brew, Inc.
As part of the agreement, Coffee Holding Co. paid $2.6 million for the assets of the company, which included the “Steep & Brew” trademark, according to the complaint.
Generations Coffee did not meet the financial expectations of Coffee Holding Co. so the company’s owner and chief executive officer,
Andrew Gordon, shut the business down in January 2022, according to the complaint.
Gordon and the owner of Caruso's Coffee,
Dominic Caruso, also agreed to wind down the operations of Generations Coffee, according to the complaint.
Recognizing the amount of money Coffee Holding Co. initially paid to acquire Steep N Brew, both Gordon and Caruso allegedly agreed that Coffee Holding Co. would continue to own the Steep & Brew trademarks.
"Mr. Caruso specifically noted to Mr. Gordon that (Caruso's Coffee) was not interested in any ownership interest in the Steep & Brew trademarks as writing off a loss thereof in its books would negatively affect (Caruso Coffee's) banking relations," reads the complaint.
In November 2023, Gordon began the process of assigning the Steep & Brew trademarks to the Express Coffee brand, a part of the Steep N Brew portfolio. Despite giving up the rights to use the Steep & Brew trademarks, Caruso’s Coffee is accused of continually using the name and selling Steep & Brew-branded products on its website.
"(Caruso's Coffee) has gone so far as attempting to register a number of the Steep & Brew trademarks while claiming priority from the rights therein that belonged to Generations Coffee and/or Steep N Brew, Inc., and which now are owned by Express Coffee," according to the lawsuit.
Express Coffee has requested a trial by jury and seeks statutory damages in addition to a repayment from Caruso’s Coffee for any profit the company made using the Steep & Brew trademarks.
