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METAL-TECH CAGE, LLC. ("Metal-Tech") v. JOHN SUNDQUIST, an individual d / b / a / WHITE KNUCKLE OFF ROAD PRODUCTS. Plaintiff owns a federally registered trade dress in its non-functional design for its Illb rails. Defendant's unauthorized use in commerce of Plaintiff's trade dress.
METAL-TECH CAGE, LLC. ("Metal-Tech") v. JOHN SUNDQUIST, an individual d / b / a / WHITE KNUCKLE OFF ROAD PRODUCTS. Plaintiff owns a federally registered trade dress in its non-functional design for its Illb rails. Defendant's unauthorized use in commerce of Plaintiff's trade dress.
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METAL-TECH CAGE, LLC. ("Metal-Tech") v. JOHN SUNDQUIST, an individual d / b / a / WHITE KNUCKLE OFF ROAD PRODUCTS. Plaintiff owns a federally registered trade dress in its non-functional design for its Illb rails. Defendant's unauthorized use in commerce of Plaintiff's trade dress.
Drepturi de autor:
Attribution Non-Commercial (BY-NC)
Formate disponibile
Descărcați ca PDF, TXT sau citiți online pe Scribd
kevin.hayes@klarquist.com Jeffrey S. Love, OSB No. 87398 jeffrey.love@klarquist.com KLARQUIST SPARKMAN, LLP One World Trade Center, Suite 1600 121 S.W. Salmon Street Portland, Oregon 97204-2988 Telephone: 503-595-5300 Facsimile: 503-228-9446 Counsel for Plaintiff METAL-TECH CAGE, LLC. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON PORTLAND DIVISION METAL-TECH CAGE, LLC., an Oregon limited liability corporation, Plaintiff, v. JOHN SUNDQUIST, an individual d/b/a/ WHITE KNUCKLE OFF ROAD PRODUCTS ofCahfomia Defendant. Civil Ac'&V ~ 1 1 - 1 39 4 - BR _-. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION JURY TRIAL DEMANDED COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 1 of 15 Page ID#: 1 Plaintiff METAL-TECH CAGE, LLC. ("Metal-Tech"), through its attorneys, complains of Defendant JOHN SUNDQUIST doing business as WHITE KNUCKLE OFF ROAD PRODUCTS ("White Knuckle") and alleges as follows, upon knowledge with respect to itself and its own acts, and upon infonnation and belief as to all other matters: I. THE METAL-TECH TRADEDRESS AND THE NATURE OFTHE ACTION 1. This is an action at law and in equity to remedy acts of trademark infringement and unfair competition under federal and Oregon law, all caused by Defendant's unauthorized use in commerce of Metal-Tech's federally registered trade dress in its non-functional design for its Illb rails (hereinafter, "the Asserted Metal-Tech Mark"). 2. Plaintiff owns a federally registered trade mark for its design of a vehicle rub rail. Metal-Tech's mark is registered on the Principal Register as U.S. Federal Trademark Registration No. 4,010,850. A true copy of this registration is attached hereto as Exh. A. The mark was registered on August 16,2011, based on an application filed December 23,2009. 3. Pursuant to 15 U.S.c. 1057 (b), Plaintiff's certificate of registration is prima facie evidence of the validity of the registered mark and of the registration of the mark, of the record owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate. 4. PlaintifT's federal statutory trademark rights in its federally registered design based on its Federal Trademark Registration No. 4,010,850 begin as of the filing date of the application that matured into the registration, namely on December 23,2009. 5. A drawing from Metal-Tech's Federal Trademark Registration No. 4,010,850 showing its federally registered rub rail design is shown below: COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 2 of 15 Page ID#: 2 . ., ,,,- " ,,, " /-1 , , ", , ". " - , /,,' , ", ,/' ,if" , , , , I " , ,"., , ,"/' // I I ,,-/ , " " I , , I ,'I' " "\:,-' 6. A distinctive design feature of the Asserted Metal-Tech Mark is the two piece design with the second piece having a "kick-out" portion, as shown below. This provides a more streamlined appearance to the kick-out portion of the rub rail as compared to traditional one piece designs, giving a valuable distinctiveness to Plaintiffs design. rearward piece of tubing forms kick-out /' ./,/ forward :piece of tubing ,/ ." / ,.' I' / { /f) r / //. I ' , f''// ,/ In DJ-" /,' ' ./ ,I I... ___ ___---I t // ../ I ". 7. For illustrative purposes, copied below are two examples of actual products distributed by Plaintiffthat embody its federally registered design. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 2 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 3 of 15 Page ID#: 3 8. In addition to its Federal Trademark rights based on Federal Trademm"k Registration No. 4,010,850, Metal-Tech is also the owner of the common law trade dress rights in its registered design based on its extensive use of its trade dress for its rub rails in Oregon and COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 3 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 4 of 15 Page ID#: 4 elsewhere, which has caused the consuming public to associate Plaintiff s design with Plaintiff as the source of the rub rails (also "the Asserted Metal-Tech Mark"). These rights accrued prior to Defendant offering its infringing rub rails. 9. Defendant has been using the Asserted Metal-Tech Mark in its own rub rails without authorization from, and over the objection of, Plaintiff, and with full knowledge of Plaintiffs prior use and federal registration. 10. For example, despite Plaintiffs federally registered trade dress rights in the design of the rub rail on the left, which Plaintiff offers in commerce, Defendant sells the rub rail on the right (bottom left of picture). Example of Plaintifrs Federally Example of Defendant's Design A commenter in the off road forum maintained by IH8MUD (at http://foTUm.ih8mud .com/80-series-tech/ 481 779-whi te-knuckIe-offroad -sliders-insrtalIed-2.html ) stated concerning the White Knuckle rub rails: "my MT [Metal-Tech] Sliders are the same on COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 4 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 5 of 15 Page ID#: 5 both sides and these white knuckle sliders are obviously an imitation ofMT's as far as looking exactly like them ... " (the screen capture copied below is an excerpt from that forum). 11. Defendant's use of the Asserted Metal-Tech Mark unfairly trades offofMetal Tech's rights in its trade dress by, among other things, confusing consumers as to whether Defendant ' s goods are associated with Plaintiff. 12. Plaintiff requested Defendant to stop selling products whose design embodies Plaintiffs Asserted Metal-Tech Mark in a letter dated October 3,2011. Instead of complying, Defendant threatened to take legal action in a Federal District Court in a letter dated October 31 , 2011. II. THE PARTIES 13. Plaintiffis a corporation organized and existing under the laws of the State of Oregon with its principai place of business at Suite A 1000 Commerce Parkway, Newberg, Oregon, 97132. Plaintiff is located and does business within this judicial district. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 5 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 6 of 15 Page ID#: 6 14. Defendant John Sundquist d/b/a White Knuckle Off Road Products is an individual from the State of California with a place of business at 9630 Mesa Vista Street, Apple Valley, California, 92308. Defendant is doing business in this judicial district. III. JURISDICTION AND VENUE 15. This Court has jurisdiction over the subject matter of this action because this action arises under the Federal Trademark Act, 15 U.S.c. 1051-1127, jUllsdiction being conferred in accordance with 15 U.s.C. 1121 and 28 U.S.c. 133 I and 1338. Supplemental jUllsdiction over the causes of action under Oregon state law is proper as those causes of action are substantially related to the causes of action over which the Court has original jurisdiction, pursuant to 28 U.s.c. 1338(b) and 1367. Venue is proper under 28 U.S.c. 1391(b) in that Defendant is doing and transacting business within, and has committed acts complained of herein, in this judicial district and targeted at this judicial district. IV. THE FACTS A. Metal-Tech's Products 16. Metal-Tech is a Newberg, Oregon-based company that manufactures and sells equipment for off-road vehicles, such as roll cages, rub rails, bumpers and fender kits. Since at least 2000, Metal-Tech has provided quality off-road equipment to off-road vehicle enthusiasts. Metal-Tech sells its goods all over the United States, including in Oregon and California. 17. Since as early as June 2004 Metal-Tech has been marketing its vehicle rub rail shown in the drawing below. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 6 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 7 of 15 Page ID#: 7 ., , ,/ ,'1 / ;'/ , ," , , ' , , ", " , , , ' / ~ "" , , ", , , , , , , , , , , , ,", // , // .. , , , , , , ~ . / 18. Metal-Tech's design has enjoyed significant commercial success and consumers all over the nation, and even abroad, recognize the design as meaning that the rub rail is from Metal-Tech. In particular, the kick-out p0l1ion ofMetal-Tech's design (shown above in the top of the drawing) is a feature that sets Metal-Tech' s design apart from its competitors and causes consumers to recognize the design as exclusively Metal-Tech's. 19. With regard to the recognition ofMetal-Tech's design by consumers, Plaintiff had a poll conducted in which over 97 percent of respondents selecting between photographs of different rub rail designs were able to correctly select Plaintiff's rub rail due to its distinctive design. Moreover, respondents providing reasons for their selection in many cases explained that it was Plaintiff's distinctive kick-out that caused them to recognize the rub rail as Plaintiff's. For example, one respondent stated: "that rear kickout is a metaltech giveaway." B. Defendant's Infringing Acts 10. Defendant markets knock-otIs of Plaintiff's rub rail that look so much like Plaintiffs trade dress that consumers are likely to be confused as to the source or origin of the products and/or as to the association, sponsorship or endorsement between Plaintiff and Defendant. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 7 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 8 of 15 Page ID#: 8 21. Examples of such infringing rub rails sold by Defendant are shown in the photographs below, which are excerpts from Defendant's website at http://www.white knuckleoffroad.com: COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 8 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 9 of 15 Page ID#: 9 Bolt-On/Bare Metal 22. Defendant has sold one or more of the above or other rub rails having a two-piece design and kick-out into Oregon. 23. Defendant also maintains an online retail store at http://www.white knuckleoffroad.com. Copied below is a screen capture from the home-page for that store: COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 9 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 10 of 15 Page ID#: 10 durable hand.,..ade Rock SlIden where qualty III second to none. From magaZIne faatures to Independent reviews end customer testimonies, the quality of our products have been proven. Whether you ere a trtal drtver or rock crawler, our Rock Sliders are up to the challenge. 24. Ahhough difficult to read, in the background on the upper left, Defendant offers shipping to 48 states, which are believed to be the contiguous United States, including Oregon. 25. Defendant is targeting Oregon for sales of products that include its infringing products such as Defendant's "Toyota FJ Cruiser Rock Sliders," as advertised on its website and shown in the screen capture copied above. 26. Defendant knew when it sold its products into Oregon, including infringing products such as Defendant's "Toyota FJ Cruiser Rock Sliders," that Plaintiff is based in Newberg, Oregon. 27. Defendant knew that the effects of Defendant's infringement would be felt by Plaintiff in Newberg, Oregon. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 10 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 11 of 15 Page ID#: 11 28. Defendant further advertises its products for sale nationally, such as in the nationally circulated "4WD Toyota Owner," a magazine that is also circulated in Oregon. Defendant touts that its FJ Cruiser Rock Sliders, such as those shown above in Paragraph 24, were "featured in 4WD Toyota Owner magazine" on its website at www.white knuckleoffroad.com/fjcruiser.htm. 29. Plaintiff requested that Mr. Sundquist and White Knuckle stop offering copies of Plaintiff's rub rails in a letter dated October, 3, 2011. 30. In response, in a letter dated October 31,2011, to Plaintiff's counsel in Portland, Oregon, White Knuckle admitted that Metal-Tech "is the rightful owner" of U.S. Federal Trademark Registration No. 4,010,850 for the Asserted Metal-Tech Mark. 31. However, White Knuckle claimed that its design did not infiinge and went on to threaten suit (i.e., that it would "proceed with action to protect its rights at the TTAB and/or appropriate FDe."). 32. Defendant's actions are knowing, willful and without Plaintiff's authorization, and Defendants are directly, contributorily, and vicariously liable for the resulting acts of unfair competition and trademark infiingement. V. CAUSES OF ACTION A. Unfair Competition 33. MetaJ-Tech repeats and re-alleges each and every allegation contained in the above paragraphs of this Complaint as though fully set forth herein. 34. This cause of action for unfair competition arises under Section 43(a)(1) ofthe Lanham Act, 15 U.S.C. 1125(a)(1), and Oregon State common law. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 11 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 12 of 15 Page ID#: 12 " 35. Defendant's use ofthe Asserted Metal-Tech Mark in commerce as alleged hereinabove is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of Defendants with Plaintiff or as to the origin, sponsorship, or approval of the products and services of Defendants and those of Plaintiff, and misrepresents the nature, characteristics, and qualities of these products and services. 36. The acts of Defendants constitute unfair competition in violation of Section 43(a)(1) of the Lanham Act, 15 U.S.c. 1125(a)(1), and unfair competition under Oregon common law. 37. Metal-Tech is without an adequate remedy at law because Defendant's unfair competition has caused ineparable injury to Metal-Tech, and unless said acts are enjoined by this Court, they will continue and Metal-Tech will continue to suffer irreparable injury. 38. Defendant's acts of unfair competition, ifnot enjoined, will cause Metal-Tech to sustain monetary damages, loss, and injury in an amount to be determined in this action. B. Trademark Infringement 39. Metal-Tech repeats and realleges each and every allegation contained in the above paragraphs of this Complaint as though fully set forth herein. 40. The acts of Defendants constitute trademark infringement in violation of 15 U.S.c. l114(1)(a), and Oregon common law. 41 . Defendant's use of the Asserted Metal-Tech Mark as alleged hereinabove is likely to cause confusion, mistake, or deception as to the source, sponsorship, or approval of the products and services of Defendants in that others are likely to believe that Defendant's goods and services are in some way legitimately connected with, sponsored or licensed by, or otherwise related to Metal-Tech. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 12 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 13 of 15 Page ID#: 13 42. Defendant's use of the Asserted Metal-Tech Mark was made with actual or constructive knowledge of Metal-Tech' s rights in the Asserted Metal-Tech Mark. 43. Defendant's use of the Asserted Metal-Tech Mark is without Metal-Tech's consent or permission. 44. Defendant's acts of trademark infiingement, unless enjoined, will cause Metal- Tech to sustain monetary damages, loss, and injury in an amount to be determined in this action. PRAYER FOR RELIEF WHEREFORE, Plaintiff Metal-Tech prays that, pursuant to the Federal Trademark Act, 15 U.S.c. 1051-1127 and Oregon State law: A. The Court finds that Metal-Tech owns valid and subsisting trademark rights in the Asserted Metal-Tech Mark. B. Defendant be held liable under each claim for relief set forth in this Complaint. C. Defendant, its agents, servants, employees, and attorneys, and all other persons in active concert or participation with them, be immediately and permanently enjoined from using the Asserted Metal-Tech Mark, or any other reproduction, counterfeit, copy, colorable imitation or confusingly similar variation of the Asserted Metal-Tech Mark, as a trademark or service mark (including trade dress), or in advertising, distribution, sale, or offering for sale of Defendant's products and/or services. D. Defendant be required to pay to Metal-Tech all damages Metal-Tech has suffered and will suffer by reason of Defendant's unlawful acts set forth herein, together with legal interest from the date of accrua thereof. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 13 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 14 of 15 Page ID#: 14 E. Defendant be required to account for and pay to Metal-Tech all profits wrongfully derived by Defendant through its unlawful acts set forth herein, together with legal interest from the date of accrual thereof. F. Defendant be required to pay to Metal-Tech its reasonable attorneys' fees and disbursements incurred herein, pursuant to 15 U.S.c. 1117 and the equity powers of this Court. G. Defendant be required to pay Metal-Tech the costs of this action. H. The Court award Metal-Tech enhanced profits and damages and such other and further relief as this Court deems just and equitable. DEMAND FOR JURY TRIAL Metal-Tech hereby makes demand for a trial by jury pursuant to Rule 38 of the Federal Rules of Civil Procedure as to all issues herein so tI;able. Dated: November 17,2011 Kevin M. Hayes, OS kevin.ha es (i klar uist.c I Jeffrey S. Love, OSB o. 87398 jeffrey.love@klarquist.com KLARQUIST SPARKMAN, LLP One World Trade Center, Suite 1600 121 S.W. Salmon Street Portland, Oregon 97204-2988 Telephone: 503-595-5300 Facsimile: 503-228-9446 Counsel for Plaintiff METAL-TECH CAGE, LLC. COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 14 Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 15 of 15 Page ID#: 15