Case 3:11-cv-00592-AC
Document 1
Filed 05/16/11
Page 1 of 13
Page ID#: 1
Vicki L. Smith, OSB No. 854410
[email protected]
Parna A. Mehrbani, OSB No. 053235
[email protected]
LANE POWELL PC
601 SW Second Avenue, Suite 2100
Portland, Oregon 97204-3158
Telephone: 503.778.2100
Facsimile: 503.778.2200
Attorneys for Plaintiff
UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION
PENDLETON WOOLEN MILLS, INC., an
A
Oregon corporation,
Plaintiff,
v.
THE ROUND UP ASSOCIATION, an
COMPLAINT
(Trademark Infringement, Unfair
Competition, Trademark Dilution, Unfair and
Deceptive Trade Practices, Declaratory
Judgment Regarding Registration)
Oregon corporation,
DEMAND FOR JURY TRIAL
Defendant.
Plaintiff Pendleton Woolen Mills, Inc. ("plaintiff' or "Pendleton") files this Complaint
and states as follows:
1.
This is an action for trademark infringement, unfair competition and dilution,
unfair and deceptive trade practices, and declaratory judgment arising out of the Trademark Act
of 1946, 15 U.S.c. § 1051 et seq. (2002) ("the Lanham Act"); the Declaratory Judgment Act,
§§ 2201-2202; the Oregon Unlawful Trade Practices Act, ORS §§ 646.605-646.656 (2009); the
Oregon anti-dilution statute, ORS 647.107 (2009); and the common law.
PAGE 1 -
COMPLAINT
LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
PORTLAND, OREGON 97204-31 58
50J 778.2100 FA X, 503.778 2200
Case 3:11-cv-00592-AC
2.
Document 1
Filed 05/16/11
Page 2 of 13
Page ID#: 2
Defendant is marketing and selling fragrance products under a trademark that is
confusingly similar to Pendleton's trademarks as set forth below.
Defendant's use of the
trademark is likely to cause confusion, mistake, or deception as to the affiliation, connection, or
association of Defendant with Pendleton, or as to the origin of Defendant's goods, or as to their
sponsorship or approval by Pendleton, and is likely to dilute the distinctive quality of
Pendleton's trademarks.
THE PARTIES
3.
Plaintiff Pendleton Woolen Mills, Inc. is a corporation organized and existing
under the laws of the state of Oregon, with a principal place of business at 220 NW Broadway,
Portland, Oregon, 97209.
4.
Defendant The Round Up Association is a corporation organized and existing
under the laws of the state of Oregon, with a principal place of business at 1205 S W Court,
Pendleton, Oregon, 97801.
JURISDICTION AND VENUE
5.
This Court has original subject matter jurisdiction over this action under the
Lanham Act pursuant to 15 U.S.C. §§ 1116 and 1121 and 28 U.S.C. §§ 1331 and 1338. This
Court has supplemental jurisdiction over Pendleton's state and common law claims pursuant to
28 U.S.C. § 1367.
6.
This Court has personal jurisdiction over Defendant under 28 U.S.C. § 1331
because Defendant has distributed, sold, or offered for sale merchandise under the infringing
trademark within this state, has engaged in acts or omissions within this state causing injury, has
manufactured, distributed, sold, or offered for sale products used or consumed within this state in
the ordinary course of trade, resides in this state, or otherwise has made or established contacts
within this state sufficient to permit the exercise of personal jurisdiction.
7.
Venue is proper in this District pursuant to 28 U.S.C. § 1391 because Defendant
resides in this District and/or is subject to personal jurisdiction in this District. Moreover, a
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0054360569/5070188 .1
LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
PORTLAND, OREGON 97204·3158
503 .778 .2100 FAX 503 .778.2200
Case 3:11-cv-00592-AC
Document 1
Filed 05/16/11
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substantial part of the events or omissions giving rise to the claims herein occurred in this
District and, upon information and belief, important and relevant records are located in this
District.
8.
Pursuant to Local Rule 3-2(b), venue is proper in this Division because a
substantial part of the events or omissions giving rise to the claims occurred in this Division and
the intellectual property at issue is owned by Pendleton and thus resides in this Division.
FACTUAL BACKGROUND
9.
Pendleton owns numerous federal registrations issued by the U.S. Patent and
Trademark Office ("USPTO") for the trademark PENDLETON for use on a variety of goods.
See Certificates of Registration Nos. 3,574,742, 3,555,536, 3,574,743, 3,568,773, 3,718,175,
3,297,528, 3,049,323, 2,951,453, 1,980,970, 2,059,665, 1,218,445, 913,742, and 514,710
attached as Exhibits 1-13, incorporated herein and made a part hereof. Pendleton also owns
numerous federal registrations for marks containing the term PENDLETON, including
PENDLETON COLORPLA Y, Reg. No. 3,680,928; PENDLETON ESTATE VINEYARDS &
WINERY, Reg. No. 3,662,604; PENDLETON ECO-WISE WOOL, Reg. No. 3,638,636;
PENDLETON HOME, Reg. No. 2,713,136; PENDLETON HOME COLLECTION, Reg.
No. 2,717,244; PENDLETON ORIGINALS, Reg. No. 2,276,567; PENDLETON ORIGINALS
BORN IN OREGON, Reg. No. 2,395,884; NOR' WESTER WEAR BY PENDLETON, Reg.
No. 2,276,748;
PENDLETON
PENDLETON,
Reg.
STUDIO,
Reg.
No. 2,117,014;
No. 1,814,471; COUNTRY CLOTHES
BEAVER
BY
STATE
PENDLETON,
BY
Reg.
No. 800,729; WARRANTED TO BE A PENDLETON PENDLETON WOOLEN MILLS
PORTLAND, OREGON SINCE 1863, Reg. No. 2,053,150; WARRANTED TO BE A
"PENDLETON"
PENDLETON
WOOLEN
MILLS
PORTLAND,
OREGON,
Reg.
Nos. 777,919, 777,908, and 663,602; SIR PENDLETON, Reg. No. 715,837; and PENDLETON
49'ER, Reg. No. 666,627. Collectively, the PENDLETON trademarks are referred to herein as
the "PENDLETON Marks."
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005436.0569/5070188.1
LANE POWELL PC
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Case 3:11-cv-00592-AC
10.
Document 1
Filed 05/16/11
Page 4 of 13
Page ID#: 4
As an example of Pendleton's long-term use of its PENDLETON Marks,
Pendleton has been using PENDLETON on blankets and throws since at least as early as 1895
and on apparel since at least as earl)' as 1912.
11.
In addition to sales of products and services pursuant to the registrations listed in
paragraph 9 above, Pendleton has sold numerous additional products under the mark
PENDLETON and marks including "PENDLETON" together with other words. For example,
Pendleton has used the mark PENDLETON in connection with scented lotions, soaps, and other
scented bath products since at least 2006.
12.
As a result of Pendleton's promotion and sale of products under the
PENDLETON Marks, the PENDLETON Marks have gained significant recognition and
goodwill among the purchasing public.
13.
The PENDLETON Marks have acquired distinctiveness with respect to the
products and services sold under them.
14.
Since at least as early as 1997, Defendant has been a licensee of Pendleton and
thus acknowledged Pendleton's ownership and rights in the PENDLETON Marks via a license
agreement between the parties related to sales of apparel.
15.
In addition, since at least as early as 2003, Defendant has either expressly or
constructively acknowledged Pendleton's ownership and rights in the PENDLETON Marks via a
trademark licensing arrangement that has existed since about 2003 between Pendleton and a third
party and likewise between Defendant and the same third party. The products produced via the
aforementioned arrangement are c?-branded with Pendleton's PENDLETON mark and marks
owned by Defendant and acknowledge Pendleton's ownership of the PENDLETON mark.
16.
Defendant is currently selling or in the past has sold personal products, including
fragrances, under PENDLETON ROUND-UP (the "Infringing Mark"), a mark that is
confusingly similar to the PENDLETON Marks when used on goods similar or related to the
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005436056915070188 .1
LANE POWELL PC
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503 .778 .2100 FAX 503.778.2200
Case 3:11-cv-00592-AC
Document 1
Filed 05/16/11
Page 5 of 13
Page ID#: 5
various goods and services offered by Pendleton. Defendant's products sold under the Infringing
Mark compete with Pendleton's products sold under the PENDLETON Marks.
17.
Defendant's use of the Infringing Mark includes, but is not limited to, using a
form, format, or design that emphasizes solely the PENDLETON portion of the Infringing Mark.
18.
On information and belief, Defendant has encouraged and/or allowed the
manufacturer and/or distributor of its fragrance products to use and apply to register the mark
PENDLETON FRAGRANCES for use on fragrance products, which is nearly identical and
confusingly similar to the PENDLETON Marks.
19.
Defendant's activities are likely to cause confusion, mistake, and deception as to
the affiliation, connection, or association of Defendant with Pendleton, and as to the origin,
sponsorship, or approval of Defendant's goods or commercial activities.
20.
By causing such a likelihood of confusion, mistake, and deception, Defendant is
inflicting irreparable harm to the goodwill symbolized by the PENDLETON Marks, for which
Pendleton has no adequate remedy at law.
FIRST CLAIM FOR RELIEF
(Federal Trademark Infringement, 15 U.S.c. § 1114)
21.
Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 20 above as if fully set forth herein.
22.
The PENDLETON Marks and the goodwill of the business associated with it are
of great value, are highly distinctive, and have become associated in the public mind with
Pendleton's high quality products.
23.
Defendant's use of the Infringing Mark is likely to cause confusion, deception,
and mistake by creating the false and misleading impression that Defendant's goods are
manufactured or distributed by Pendleton, or are associated or connected with Pendleton, or have
the sponsorship, endorsement, or approval of Pendleton.
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0054360569/5070188.1
LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
PORTLAND, OREGON 97204-3158
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Case 3:11-cv-00592-AC
24.
Document 1
Filed 05/16/11
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Defendant's use of the Infringing Mark that is confusingly similar to Pendleton's
federally registered PENDLETON Marks is in violation of 15 US.c. § 1114, and Defendant's
activities have caused and, unless enjoined by this Court, will continue to cause a likelihood of
confusion and deception of members of the trade and public and, additionally, irreparable harm
and injury to Pendleton's goodwill and reputation as symbolized by the federally registered
PENDLETON Marks, for which Pendleton has no adequate remedy at law.
25.
Defendant's actions demonstrate an intentional, willful, and malicious intent to
trade on the goodwill associated with Pendleton's federally registered PENDLETON Marks to
Pendleton's great and irreparable injury and are in knowing and willful violation of Pendleton's
rights under 15 US.c. § 1114(a).
26.
As a direct and proximate result of Defendant's conduct, Pendleton has suffered
damages to its valuable PENDLETON Marks and other damages in an amount to be proven at
trial.
27.
Defendant has cause.d and is likely to continue causing substantial injury to the
public and to Pendleton, and Pendleton is entitled to injunctive relief and to recover Defendant's
profits, actual damages, enhanced profits and damages, costs, and reasonable attorneys' fees
under 15 US.c. §§ 1114,1116, and 1117.
SECOND CLAIM FOR RELIEF
(Federal Unfair Competition, 15 U.S.c. § 1125(a))
28.
Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 27 above as if fully set forth herein.
29.
Defendant's infringement of the PENDLETON Marks constitutes a false
designation of origin, or a false or misleading description or representation of fact, which is
likely to cause confusion, or to cause mistake, or to deceive as to Defendant's affiliation,
connection, or association with Pendleton, and as to the origin of Defendant's products, or as to
the sponsorship or approval of Defendant's products by Pendleton.
PAGE 6 -
COMPLAINT
005436 .0569/5070188 .1
LANE POWELL PC
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Case 3:11-cv-00592-AC
30.
Document 1
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Upon information and belief, Defendant has intentionally and willfully used the
Infringing Mark in disregard of Pendleton's rights.
31.
As a direct and proximate result of Defendant's conduct, Pendleton has suffered
damages to its valuable PENDLETON Marks and other damages in an amount to be proven at
trial.
32.
Pendleton has no adequate remedy at law, and if Defendant's activities are not
enjoined, Pendleton will continue to suffer irreparable harm and injury to its goodwill and
reputation.
THIRD CLAIM FOR RELIEF
(Federal Trademark Dilution, 15 U.S.C. § 1125(c))
33.
Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 32 above as if fully set forth herein.
34.
Pendleton has extensively and continuously promoted, advertised, and used the
PENDLETON Marks in the U.S. for more than a century and the marks have thereby acquired
distinctiveness and become famous and well-known symbols of Pendleton's goods and services.
35.
Defendant's use of the Infringing Mark began after the PENDLETON Marks
became famous.
36.
Defendant is making commercial use of the Infringing Mark that dilutes and is
likely to dilute the distinctiveness of Pendleton's PENDLETON Marks by eroding the public's
exclusive identification of these famous marks with Pendleton, tarnishing and degrading the
positive associations and prestigious connotations of the marks, and otherwise lessening the
capacity of the marks to identify and distinguish goods and services.
37.
Defendant's actions demonstrate an intentional, willful, and malicious intent to
trade on the goodwill associated. with Pendleton's PENDLETON Marks to the great and
irreparable inj ury of Pendleton.
PAGE 7 - COMPLAINT
LANE POWELL PC
0054360569/5070188 .1
60 I SW SECOND AVENUE, SUITE 2100
PORTLAND, OREGON 97204-) 158
50) 7782100 FAX 50) .778.2200
Case 3:11-cv-00592-AC
38.
Document 1
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Defendant's conduct has caused, and is likely to continue causing, substantial
injury to Pendleton's goodwill and business reputation, and dilution of the distinctiveness and
value of Pendleton's famous
and distinctive PENDLETON Marks,
in violation of
15 U.S.c. §§ 1125(c), 1116, and 1117.
FOURTH CLAIM FOR RELIEF
(Oregon Trademark Dilution, ORS 647.107)
39.
Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 38 above as if fully set forth herein.
40.
Defendant's acts set forth above violate Oregon laws, and particularly
ORS 647.107, in that Defendant has diluted the distinctive quality of the PENDLETON Marks,
causing irreparable harm to Pendleton's goodwill and business reputation. Pendleton is entitled
to injunctive relief and to recover damages, costs, and reasonable attorneys' fees.
FIFTH CLAIM FOR RELIEF
(Common Law Trademark Infringement and Unfair Competition)
41.
Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 40 above as if fully set forth herein.
42.
Defendant's acts constitute common law trademark infringement and unfair
competition, and have created and will continue to create a likelihood of confusion to the
irreparable injury of Pendleton and its PENDLETON Marks unless restrained by this Court, as
Pendleton has no adequate remedy at law for this injury.
43.
On information and belief, Defendant acted with full knowledge of Pendleton's
use of, and statutory and common law rights to, the PENDLETON Marks and without regard to
the likelihood of confusion of the public created by Defendant's activities.
44.
Defendant's actions demonstrate an intentional, willful, and malicious intent to
trade on the goodwill associated with the PENDLETON Marks to the great and irreparable injury
of Pendleton.
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005436.0569/5070188.1
LANE POWELL PC
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Case 3:11-cv-00592-AC
45.
Document 1
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As a result of Defendant's acts, Pendleton has been damaged in an amount not as
yet determined or ascertainable. At a minimum, however, Pendleton is entitled to injunctive
relief, an accounting of Defendant's profits, damages, and costs.
Further, in light of the
deliberately fraudulent and malicious use of confusingly similar imitations of the PENDLETON
Marks, and the need to deter Defendant from similar conduct in the future, Pendleton
additionally is entitled to punitive
SIXTH CLAIM FOR RELIEF
(Unfair and Deceptive Trade Practices, ORS 646.605 to 646.656)
46.
Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 45 above as if fully set forth herein.
47.
Defendant's unauthorized use of the PENDLETON Marks have caused and are
likely to continue to cause Pendleton ascertainable loss.
48.
Defendant has been and is intentionally and willfully passing off its goods as
those of Pendleton, causing a likelihood of confusion or misunderstanding as to the source,
sponsorship, or approval of
goods, causing a likelihood of confusion as to
Defendant's affiliation, connection, or association with Pendleton, and/or otherwise damaging
the public.
49.
Defendant's unauthorized
use
of confusingly
similar imitations of the
PENDLETON Marks has caused and is likely to cause substantial injury to the public and to
Pendleton, and Pendleton is entitled to injunctive relief and to recover damages, costs, and
reasonable attorneys' fees.
SEVENTH CLAIM FOR RELIEF
(Declaratory Judgment Regarding Registration, 15 U.S.c. § 1119,28 U.S.c. § 2201)
50.
Pendleton repeats and reaUeges each of the allegations set forth in paragraphs 1
through 49 above as if fully set forth herein.
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51.
Document 1
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On July 15, 2010, Defendant filed an intent-to-use application in the USPTO to
register the mark PENDLETON ROUND-UP for "Fragrances" in International Class 3, and was
assigned application serial number 85/085,903.
52.
Pendleton's registrations for the PENDLETON Marks have earlier filing dates
than Defendant's application for PENDLETON ROUND-UP for use on fragrances, hence
Pendleton's registrations have priori.ty over Defendant's application.
53.
Pendleton's use of the mark PENDLETON in connection with scented lotions,
soaps, and other scented bath products, which are categorized in the same International
Classification as fragrances, predates the filing date of Defendant's application to register
PENDLETON ROUND-UP for use on fragrances.
54.
Prior to the Defendant's application filing date of July 15, 2010, Pendleton had
been using the mark PENDLETON in interstate commerce in connection with candles, scented
lotions, scented soaps, and other scented bath products for several years. These goods are similar
or related to, and in the same International Classification as, fragrances. Hence, Pendleton's use
has priority over Defendant's
55.
The goods on which Defendant intends to use and is using its PENDLETON
ROUND-UP mark, as evidenced by Defendant's application, are similar and/or related to the
goods on which Pendleton uses its PENDLETON Marks, as evidenced by Pendleton's
registrations and common law uses described herein.
56.
Defendant's mark P'E NDLETON ROUND-UP
IS
nearly identical
III
sight and
sound and includes within it Pendleton's PENDLETON mark.
57.
Defendant's
PENDLETON
ROUND-UP
mark
so
resembles
Pendleton's
PENDLETON Marks as to be likely to cause confusion, mistake, or deception, when used in
connection with related goods, with!n the meaning of 15 U.S.C. § 1052( d).
58.
During the examination of Defendant's PENDLETON ROUND-UP mark, the
USPTO issued two office actions refusing registration of the mark. In its second office action,
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Case 3:11-cv-00592-AC
Document 1
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the USPTO denied Defendant's claim of acquired distinctiveness based on prior registrations.
The USPTO indicated that Defendant could "submit evidence that the relevant purchasing
community would be likely to
the proposed mark, and more importantly the term
"PENDLETON", as [a] trademark when used in connection with fragrances."
59.
PENDLETON
ROUND-UP
for
fragrances
IS
incapable
of
acqumng
distinctiveness because (a) of Pendleton's longstanding and continuous use of the various
PENDLETON marks for a wide variety of goods and services; (b) Pendleton has priority in the
International Class that includes fragrances;
(c) Defendant's mark has not acquired
distinctiveness for the goods identified in Defendant's application because Defendant's use has
not been substantially exclusive or continuous; (d) the goods in Defendant's application are not
the same or related to the goods or services in its prior registrations on which it bases its claim of
acquired distinctiveness; and (e)
evidence submitted by Defendant showing consumers'
recognition of PENDLETON as a trademark for fragrances should be discounted or disregarded
based on Pendleton's various PENDLETON marks, which have priority and acquired
distinctiveness prior to Defendant's application filing date.
60.
Pendleton will be damaged by the registration Defendant seeks because the
registration will assist and support 'Defendant in the confusing and misleading use of the mark
PENDLETON ROUND-UP and will give color of exclusive statutory rights to Defendant in
violation and derogation of Pendleton's prior rights.
61.
Accordingly, Defendant has no right to register the mark PENDLETON ROUND-
UP for use on fragrances.
DEMAND FOR JURY TRIAL
62.
Plaintiff respectfully demands a trial by jury on all claims and issues so triable.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Pendleton Woolen Mills, Inc. respectfully prays for judgment as
follows:
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1.
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That Defendant and all of its agents, officers, employees, representatives,
successors, assigns, attorneys, and all other persons acting for, with, by, through, or under
authority from Defendant, or in copcert or participation with Defendant, and each of them, be
preliminarily and permanently enjoined from:
a.
using the PENDLETON Marks, or any confusingly similar variations
thereof, in connection with Defendant's goods;
b.
using any trademark, service mark, name, logo, design, or source
designation of any kind on or in connection with Defendant's goods that is a copy, reproduction,
colorable imitation, simulation of, confusing similar to, or in any way similar to the trademarks,
service marks, names, or logos of Pendleton;
c.
using any trademark, servIce mark, name, logo, design, or source
designation of any kind on or in coonnection with Defendant's goods or services that is likely to
cause confusion, mistake, deception, or public misunderstanding that such goods or services are
produced or provided by Pendleton, or are sponsored or authorized by Pendleton or are in any
way connected or related to Pendleton;
d.
using any trademark, service mark, name, logo, design, or source
designation of any kind on or in connection with Defendant's goods that dilutes or is likely to
dilute the distinctiveness of the trademarks, service marks, names, or logos of Pendleton; and
e.
passing off, palming off, or assisting in passing off or palming off,
Defendant's goods as those of Pendleton, or otherwise continuing any and all acts of unfair
competition as alleged in this Comp)aint.
2.
That Defendant account for and pay over to Pendleton profits realized by
Defendant by reason of its unlawful acts herein alleged and that the amount of damages for
trademark infringement of the PENDLETON Marks be increased by a sum not exceeding three
times the amount thereof as provided by law.
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3.
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That Pendleton be awarded actual damages in an amount to be proven at trial and
punitive damages, and that such damages be increased by a sum not exceeding three times the
amount thereof as provided by law by reason of Defendant's willful and intentional conduct.
4.
That the Court declare that Defendant has no right to register the PENDLETON
ROUND-UP mark for use on "Fragrances," or on any goods similar or related to the goods and
services offered by Pendleton.
5.
That the Court order Defendant to abandon the U.S. trademark application for
PENDLETON ROUND-UP for use on "Fragrances" in International Class 3, serial number
85/085,903.
6.
That Pendleton be awarded reasonable attorneys' fees, costs, and disbursements
incurred herein.
7.
That Pendleton be awarded prejudgment interest.
8.
That Pendleton be awarded such other and further relief as the Court deems just
and equitable.
DATED: May 16,2011
LANE POWELL PC
_________
Vicki L. Smith, OSB No. 854410
Parna A. Mehrbani, OSB No. 053235
Telephone: 503.778.2100
Attorneys for Plaintiff Pendleton Woolen Mills,
Inc., an Oregon corporation
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