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DISTRICT OF OREGON
PORTLAND DIVISION
Defendants.
COMPLAINT
For its Complaint, Plaintiff prAna Living, LLC (“prAna”) states and alleges as follows:
This is a civil action for trademark infringement and unfair competition under the
Lanham Act, 15 U.S.C. § 1051, et seq. and Oregon common law arising from the deliberate use
by Defendants IFG Corp. and Adjmi Apparel Group LLC (collectively “Defendants”) of a name
and logo on yoga apparel that is confusingly similar to prAna’s federally-registered and
common-law protected PRANA trademark and logo. prAna seeks equitable and monetary relief
Defendants are offering for sale, selling and promoting yoga apparel under the
confusingly similar name “apana” coupled with a logo (collectively, the “Infringing Marks”) that
is confusingly similar to prAna’s distinctive logo design in violation of prAna’s trademark rights.
As a result of Defendants’ uses of the Infringing Marks in connection with their products,
By way of this lawsuit, prAna seeks: (i) judgment enjoining Defendants’ use of
the Infringing Marks in connection with yoga apparel and related accessories; (ii) an award of
damages, fees, and costs resulting from Defendants’ infringement and unfair competition; and
(iii) such other relief as the Court may deem just and proper.
THE PARTIES
and existing under the laws of the State of Oregon, with its principal place of business located at
Company, a corporation organized and existing under the laws of the State of Oregon, with its
principal place of business in Portland, Oregon. prAna is in the business of, among other things,
the marketing, promotion, and sale of sustainable clothing for yoga, travel, and outdoor
adventure enthusiasts.
Defendant IFG Corp. (“IFG”) is a company organized and existing under the laws
of the State of New York, with its principal place of business located at 463 7th Avenue, New
organized and existing under the laws of the State of New York, with its principal place of
business located at 463 7th Avenue, New York, New York 10018.
Upon information and belief, Defendants are in the business of—among other
This Court has original subject-matter jurisdiction over this action pursuant to 28
U.S.C. §§ 1331 and 1338. This Court also has jurisdiction pursuant to 15 U.S.C. § 1121 because
This Court has jurisdiction over prAna’s related common law claims pursuant to
28 U.S.C. § 1338, because these claims are joined with substantial and related claims under
federal trademark law, and pursuant to the doctrine of supplemental jurisdiction, 28 U.S.C. §
1367.
This Court has specific personal jurisdiction over Defendants because (i)
Defendants conduct business within the State of Oregon and this judicial district; (ii) Defendants
have caused products to be advertised, promoted, offered for sale and/or sold under the
Infringing Marks in the State of Oregon and this judicial district, and have purposely availed
themselves of the privilege of conducting business in Oregon; and (iii) the causes of action
asserted in this Complaint arise out of Defendants’ contacts with the State of Oregon and this
judicial district.
Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b) and (c)
because a substantial part of the events giving rise to prAna’s claims have occurred and are
continuing to occur in this judicial district, and prAna’s trademarks at issue are located in this
prAna is a premium lifestyle clothing company that offers sustainable clothing for
In 1992, Beaver and Pam Theodosakis founded prAna in their garage in Carlsbad,
California. They selected the ancient word “prana” for the company name, which is Sanskrit for
breath, life, and vitality of the spirit. Oftentimes translated as “breath of life,” prana reflects the
To those who practice yoga, “prana” is readily identifiable not only as the overall
life force, but also as one of the five “vayus” or “winds” within that life force. Specifically,
prana-vayu is seen as being situated and centered in the head, and it reflects energy that travels
Since its humble beginnings, prAna has grown to become a leading, socially
responsible clothing and lifestyle brand, with net sales of prAna-branded products totaling nearly
$140.9 million in 2017. prAna’s products have been purchased and enjoyed by millions of
Among prAna’s most successful product lines is its yoga line, which features
yoga apparel, mats, mat bags, and other related accessories and equipment for yoga practice.
prAna’s products are sold online at www.prana.com and at retail stores nationwide.
Since at least as early as 1992, prAna has continuously used and promoted the
Since at least as early as 2010, prAna has continuously used and promoted its
“sitting yoga pose” logo mark for apparel and related products:
its brand, and to that end has obtained trademark registrations in more than 80 jurisdictions,
including the United States. prAna owns, among others, the following valid and subsisting U.S.
True and correct copies of the certificates of registration for these federally-registered trademarks
For years, prAna has spent millions of dollars annually advertising and promoting
its name and logo to the general public. prAna has widely and extensively promoted its name
and logo through its retail channels and virtually every available type of media, including print
federally-registered trademarks and its other distinctive brand identifiers (collectively, the
“PRANA Marks”), the PRANA Marks have become associated with high-quality apparel,
accessories, and equipment for use in yoga practice, as well as with yoga instruction.
prAna has also developed strong common law rights based on its extensive use of
The PRANA Marks and the goodwill associated therewith are of substantial value
to prAna.
selling and promoting yoga apparel and related yoga accessories featuring a name and logo
Defendants promote its yoga clothing and accessories in retail stores under the
Like “prana,” “apana” is also well-known to those who practice yoga, and is
closely related as the balancing vayu to the prana-vayu. It is situated in the pelvic floor, and
prana and apana are opposing, yet balanced forces. Where ‘prana’ regulates the
intake of particles and energy, ‘apana’ is responsible for the elimination of the unabsorbed
residues. Thus, in yogic practice, ‘prana’ inherently invokes reference to ‘apana,’ as the two
forces are deemed to counteract one another to create balance. apana is, for all intents and
Thus, “prana” and “apana,” in addition to each being a five letter word featuring
the letter “p,” ending letters “ana,” and rhyming, are closely related words and reflect closely
Defendants are offering for sale, selling and promoting their “apana” branded
pose” logo.
Defendants also frequently display the Infringing Logo centered over the middle
“a” in the word “apana,” in a similar fashion to how prAna uses and displays its logo with its
prAna Logo
The Infringing Logo and its placement over the “apana” name is prominently
The Infringing Logo and its placement with the “apana” name is confusingly
similar to the PRANA Marks. The PRANA Marks and the Infringing Marks are nearly identical
or highly similar in sight, sound, appearance, and commercial impression and have a closely
Defendants’ products bearing the Infringing Marks are offered through the same
marketing and trade channels—such as retail stores and e-commerce websites—and to the same
Defendants’ advertising and marketing also feature the Infringing Logo and a
placement and correlation with the apana name that is highly similar in appearance to the
PRANA Marks.
Defendants’ use of the Infringing Logo and its positioning in relation to the brand
name are likely to cause confusion, mistake, and deception as to the source or origin of
Defendants and/or their products and infringe prAna’s valuable federal and common law rights
Defendants’ use of the Infringing Marks in its marketing and advertising and on
its products, particularly the “apana” mark and the placement of the logo in relation to a similarly
prAna is not affiliated with Defendants. prAna has not consented to, sponsored,
endorsed, or approved of the production, marketing, or sale of Defendants’ products under the
Infringing Marks.
Defendants’ actions reflect an intent to confuse consumers and profit from the
goodwill and consumer recognition associated with the prAna brand and the PRANA Marks.
Defendants’ actions, described above, have damaged and irreparably injured and,
if permitted to continue, will further damage and irreparably injure prAna, its PRANA Marks,
Defendants’ actions, described above, have damaged and irreparably injured and,
if permitted to continue, will further damage and irreparably injure the public, who has an
stated herein.
prAna owns the federally registered PRANA Marks, which were used and
registered before Defendants commenced use of the Infringing Marks in the United States.
The Infringing Marks are nearly identical to the PRANA Marks. The Infringing
Marks are used by Defendants on and in connection with products identical or related to those
for sale, and sale of products using the Infringing Marks in interstate commerce and/or in
distribution, advertising, offering for sale, and sale of products has been without the permission
or authority of prAna.
manufacture, distribution, advertising, offering for sale and sale of its products has been with full
knowledge of prAna’s rights in and to its federally registered PRANA Marks. Such acts are
without prAna’s authority or consent, are intended to, have and are likely to continue to confuse
irreparable harm and injury to prAna, in that, among other things, they deceive the relevant
consuming public as to the origin of and sponsorship or association between prAna and
Defendants; they deprive prAna of control over the nature, design, and quality of products
associated with the federally-registered PRANA Marks; they injure prAna’s relationships with
its customers; and they wrongfully trade and capitalize upon prAna’s reputation and goodwill
Defendants’ use of the Infringing Logo as alleged herein constitutes the use in
connection with the manufacture, distribution, advertising, offering for sale, and sale of the
Defendants’ products, which use is likely to cause confusion, to cause mistake, or to deceive as
prAna has no adequate remedy at law. Unless Defendants are preliminarily and
permanently enjoined from committing the unlawful acts alleged herein, including the
unauthorized use in commerce of the Infringing Logo, prAna will continue to suffer irreparable
harm in the form of, inter alia, loss of control over the goodwill associated with the federally-
U.S.C. § 1116 restraining Defendants, their officers, agents, and employees, and all other persons
acting in concert with them, from engaging in any further such acts of trademark infringement in
has sustained and will sustain as a result of Defendants’ wrongful conduct, and the gains, profits,
and advantages that Defendants have obtained as a result of their wrongful conduct. At present,
prAna is unable to ascertain the full extent of its damages, or the gains, profits, and advantages
that Defendants have obtained by reason of their wrongful conduct described herein.
U.S.C. § 1125(a))
stated herein.
Defendants’ use of the apana logo, the “apana” brand name, and the placement
and stylizing of the name and the logo together in connection with the apana products as alleged
herein constitutes the use in commerce of a word, term, name, symbol, or device, which use is
1125(a)(1).
prAna has no adequate remedy at law. Unless Defendants are preliminarily and
permanently enjoined from committing the unlawful acts alleged herein, including the
unauthorized use in commerce of the Infringing Marks, prAna will continue to suffer irreparable
harm in the form of, inter alia, loss of control over the goodwill associated with the PRANA
Logo. Accordingly, prAna is entitled to injunctive relief pursuant to 15 U.S.C. § 1116 restraining
Defendants, their officers, agents, and employees, and all other persons acting in concert with
them, from engaging in any further such acts of unfair competition, false designation of origin
sustained and will sustain as a result of Defendants’ wrongful conduct, and the gains, profits, and
advantages that Defendants have obtained by reason of their wrongful conduct described herein.
stated herein.
advertising and unfair competition, and will continue to create a likelihood of confusion or to
deceive the purchasing public and others, whereby they would be led to mistakenly believe that
Defendants are affiliated with, related to, sponsored by, or connected with prAna, to the
irreparable injury of prAna and its PRANA Marks, unless restrained by this Court, as prAna has
Defendants acted with full knowledge of prAna’s use of, and statutory and
common law rights to, the PRANA Marks and without regard to the likelihood of confusion of
trade on the goodwill associated with the PRANA Marks to the great and irreparable injury of
prAna.
As a result of Defendants’ acts, prAna has been damaged in an amount not as yet
similar imitations of the PRANA Marks, and the need to deter Defendants from similar conduct
stated herein.
Defendants have been and are passing off its goods as those of prAna, causing a
course of business, trade or commerce in violation of Oregon’s Unlawful Trade Practices Act,
Marks has caused and is likely to continue causing substantial injury to the public and to prAna,
and prAna is entitled to injunctive relief and to recover damages, costs and reasonable attorneys’
fees.
(Unjust Enrichment)
stated herein.
In committing the acts alleged herein, Defendants have willfully and knowingly
copied and infringed the PRANA Marks for their own purposes and, as a direct and proximate
prAna has suffered, and will continue to suffer, loss of profits by virtue of
Defendants’ conduct and their improper acts have caused and are continuing to cause irreparable
injury to the reputation and goodwill that prAna has established over the years.
lost profits.
JURY DEMAND
Pursuant to Fed. R. Civ. P. 38(b), prAna hereby demands a trial by jury of all
issues so triable that are raised herein or which hereinafter may be raised in this action.
WHEREFORE, prAna respectfully requests that this Court enter judgment in its favor on
each and every claim for relief set forth above, and award it relief, including but not limited to
the following:
1. An Order declaring that Defendants’ uses of the Infringing Marks infringe the
PRANA Marks, and constitute unfair competition, false designation of origin and passing off
affiliates, distributors, dealers, wholesale customers, and all persons in active concert or
a. From using the Infringing Marks in any form, including in connection with any
b. From using any other marks, logos, designations, or indicators of source that are
SCHWABE, WILLIAMSON & WYATT, P.C.
Page 16 - COMPLAINT FOR TRADEMARK INFRINGEMENT Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:18-cv-01174-YY Document 1 Filed 07/02/18 Page 17 of 18
or services;
e. From assisting, aiding, or abetting any other person or business entity in engaging
materials, advertisements, websites, and/or any other materials and things that contain or bear
any of the designations the use of which is enjoined under the injunctions prayed for herein;
advertising, and send pre-approved letters to all customers, resellers, retailers, agents, partners,
and/or representatives to address the likely confusion caused by use of the Infringing Marks;
Court and serve upon counsel for prAna, within thirty (30) days after the service on Defendants
of the injunctions prayed for herein, a report in writing under oath setting forth in detail the
manner and form in which they have complied with the injunctions;
6. An Order requiring Defendants to account for and pay to prAna any and all profits
arising from the foregoing acts, and increasing such profits, in accordance with 15 U.S.C. § 1117
undetermined caused by the foregoing acts, and trebling such damages in accordance with 15
SCHWABE, WILLIAMSON & WYATT, P.C.
Page 17 - COMPLAINT FOR TRADEMARK INFRINGEMENT Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:18-cv-01174-YY Document 1 Filed 07/02/18 Page 18 of 18
including reasonable attorneys’ fees and the costs of this action pursuant to 15 U.S.C. § 1117 and
9. Any other and further relief as the Court may deem just and proper.
PDX\106477\241419\AEAD\23300396.4