Case 2:14-cv-00093-LRS

Document 47

Filed 01/06/15

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MARK W. HENDRICKSEN, WSBA #15,542

WELLS ST. JOHN, P.S.
601 W. 1st Avenue, Suite 1300
Spokane, WA 99201-3828
Tel: (509) 624-4276
Fax: (509) 838-3424
Attorneys for Plaintiff

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF WASHINGTON

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THE CORPORATION OF GONZAGA

UNIVERSITY,
Plaintiff,

Case No.: 2:14-cv-00093-LRS

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vs.
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PENDLETON ENTERPRISES, LLC, a

Washington LLC; PENDLETON
BROADCASTING, INC., a Washington
corporation; and JAMIE PENDLETON,
an individual and a resident of the State
of Washington,

FIRST AMENDED COMPLAINT

DEMAND FOR JURY

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Defendants.

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Plaintiff The Corporation of Gonzaga University submits the following first

amended complaint against the Defendants:

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FIRST AMENDED COMPLAINT - 1

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JURISDICTION, VENUE AND PARTIES

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This Court has jurisdiction over this matter pursuant to 15 U.S.C.

1121, and 28 U.S.C. 1338. This Court should exercise pendant jurisdiction over

all other claims including state law claims.

2.

Venue is proper in this judicial district in Eastern Washington as the

events referred to occurred within the County of Spokane, State of Washington,

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and the Plaintiff and Defendants are believed to reside and/or do business within
Spokane County.
3.

Plaintiff THE CORPORATION OF GONZAGA UNIVERSITY

(Gonzaga) is a corporation organized under the laws of the State of Washington,

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with its principal place of business located at 502 E. Boone Avenue, Spokane,

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Washington, within the County of Spokane, Washington.

Gonzaga is a well-

known university of higher education.

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4.
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Defendant Pendleton Enterprises, LLC (Pendleton Enterprises)

is a limited liability company organized under the laws of the State of Washington,

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with its registered agent located at 121 N. Wall Street, Spokane, WA, within the

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County of Spokane, Washington. Pendleton Enterprises, among other business

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interests, does business as the Downtown Spokane Daiquiri Factory.

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5.

Defendant

Pendleton

Broadcasting,

Inc.,

(Pendleton

Broadcasting) is a corporation organized under the laws of the State of

Washington, and does business within the County of Spokane, Washington.

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Pendleton Broadcasting had and/or has, among other business interests, an FM

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radio station at 104.5 FM which has operated with multiple call letters, such as

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JAMZ or KGZG-FM (Pendleton and the business he promotes with Gonzaga

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Trademarks & Identifiers, represent and advertise that the GZG portion of the

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call letters is a representation of GO ZAGS).

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FIRST AMENDED COMPLAINT - 2

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6.

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Defendant Jamie Pendleton is an individual residing within the

County of Spokane, State of Washington, and owns and controls defendants

Pendleton Enterprises and Pendleton Broadcasting. Defendant Jamie Pendleton, as

an owner, officer, member and director of both Pendleton Enterprises and

Pendleton Broadcasting, has control over and is engaging in and causing the other

defendants to engage in, the conduct complained of herein.

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7.

The defendants Pendleton Enterprises, Pendleton Broadcasting and

Jamie Pendleton individually may be referred to collectively as defendants or

alternately as defendants Pendleton.

FACTUAL BACKGROUND

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Gonzaga University Trademarks & Identifiers

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Gonzaga University is a household name that is well-known and

widely recognized in the greater Spokane area, including for its athletic programs.

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The mens and womens basketball programs in particular have drawn an extensive

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following in the Spokane area and have achieved national recognition.

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trademarks and identifiers, which provide the viewer an immediate association

with Gonzaga University and its various programs, including without limitation:
a.

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Gonzaga University has numerous common law and registered

GONZAGA UNIVERSITY:

Gonzaga University owns U.S.

Trademark Registration No. 1,931,286, for GONZAGA UNIVERSITY for

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educational services in the nature of courses at university and postgraduate

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levels; library services; arranging and conducting athletic competitions

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(attached as part of Exhibit A), which it first started using at least as early as

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1912. Gonzaga University has substantial goodwill and notoriety in the

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GONZAGA UNIVERSITY trademark in the Greater Spokane area (and

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beyond) and GONZAGA UNIVERSITY has become very well known in

connection with Gonzaga University and its various programs, including its

sports programs. Gonzaga also owns substantial longstanding common law

trademark rights in the Spokane area for GONZAGA UNIVERSITY.

b.

GONZAGA UNIVERSITY BULLDOGS: Gonzaga University

owns U.S. Trademark Registration No. 1,931,285, for GONZAGA

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UNIVERSITY BULLDOGS for educational services in the nature of

courses at university and postgraduate levels; library services; arranging and

conducting athletic competitions (attached as part of Exhibit A), which it

first started using at least as early as 1921. Gonzaga University has

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substantial goodwill and notoriety in the GONZAGA UNIVERSITY

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BULLDOGS trademark in the Greater Spokane area (and beyond) and

GONZAGA UNIVERSITY BULLDOGS has become very well known in

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connection with Gonzaga University and its various programs, including its
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sports programs. Gonzaga also owns substantial longstanding common law

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trademark rights in the Spokane area for GONZAGA UNIVERSITY

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BULLDOGS.

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c.

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No. 1,931,449, for ZAGS for educational services in the nature of courses

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ZAGS: Gonzaga University owns U.S. Trademark Registration

at university and postgraduate levels; library services; arranging and

conducting athletic competitions (attached as part of Exhibit A), which it

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first started using at least as early as 1960. Gonzaga University has

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substantial goodwill and notoriety in the ZAGS trademark in the Greater

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Spokane area and ZAGS has become very well known in connection with

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Gonzaga University and its various programs, including its sports programs.

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Gonzaga also owns substantial longstanding common law trademark rights

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in the Spokane area for ZAGS.

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d.

established and owns substantial common law trademark rights in its

BULLDOG HEAD Image, for among other things, educational services,

arranging conducting athletic competitions, and the like (a photographic

The Gonzaga University Bulldog Head: Gonzaga University has

image of which is attached as part of Exhibit A), which it first started using
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at least as early as 1998. Gonzaga University has substantial goodwill and

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notoriety in the Gonzaga University Bulldog Head trademark in the Greater

Spokane area and the Gonzaga University Bulldog Head trademark has

become very well known in connection with Gonzaga University and its

various programs, including its sports programs, alone and in combination

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with other Gonzaga University Trademarks & Identifiers. It is difficult to

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travel anywhere in the Spokane area and not see the Gonzaga Bulldog Head
trademark on vehicles, hats, and clothing.

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The Gonzaga University Mascot Spike Wearing Gonzaga

Clothing/References: Gonzaga University owns substantial common law

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trademark rights in and for the use of the Gonzaga University Mascot Spike

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Wearing Gonzaga Clothing/References, for among other things, educational

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services, arranging conducting athletic competitions, and the like (a

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photographic image of which is attached as part of Exhibit A), which it first

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started using at least as early as 1985. Gonzaga University has substantial

goodwill and notoriety in the Gonzaga University Mascot Spike Wearing

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Gonzaga Clothing/References trademark in the Greater Spokane area. The

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Gonzaga University Mascot Spike Wearing Gonzaga Clothing/References

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has become very well known in connection with Gonzaga University and its

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various programs, including its sports programs, alone and in combination

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with other Gonzaga University Trademarks & Identifiers. When people in

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Spokane see the Spike Bulldog mascot they associate it with Gonzaga

University.

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rights in and for the trademark for the acronym GU for among other

GU: Gonzaga University owns substantial common law trademark

things, educational services, arranging conducting athletic competitions, and

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the like, which it first started using at least as early as 1998. Gonzaga
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University has substantial goodwill and notoriety in the GU trademark in the

Greater Spokane area and GU has become very well known in connection

with Gonzaga University and its various programs, including its sports

programs, alone and in combination with other Gonzaga University

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Trademarks & Identifiers. When people in Spokane refer to, see or hear the

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GU acronym, they associate it with Gonzaga University.

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The Gonzaga University Trademarks & Identifiers collectively refer

to, without limitation, the following: GONZAGA UNIVERSITY; GONZAGA

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UNIVERSITY BULLDOGS; ZAGS; GU; the Gonzaga University Mascot

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Spike Wearing Gonzaga Clothing/References; and the Gonzaga University

Bulldog Head.
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In the Spokane area, Gonzaga has been and is well-known as the

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exclusive source for the Gonzaga University Trademarks & Identifiers set forth

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above, and others. Gonzaga University asserts that the Court may take judicial

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notice of the extensive notoriety, fame and well-known nature of the Gonzaga
University Trademarks & Identifiers in the Spokane area.

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Defendants Activities
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Very generally, the defendants Pendleton Enterprises, Pendleton

Broadcasting and Jamie Pendleton, have each been using and causing others and

each other to use the Gonzaga Trademarks and Identifiers to create a likelihood of
confusion and actual confusion as to whether there is an affiliation, connection,

association or other business/commercial relationship with Gonzaga University.

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13.

The photographs attached as Exhibit B to this complaint provide a

non-exhaustive sampling of examples of the use by defendants of Gonzaga

Trademarks & Identifiers.

The Downtown Spokane Daiquiri Factory

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The Downtown Spokane Daiquiri Factory very recently opened its

doors and has been engaged in substantial use of the Gonzaga University
Trademarks & Identifiers in the promotion of its bar/tavern business.

Some

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examples of the uses of Gonzaga University Trademarks & Identifiers are provided
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in Exhibit B to this complaint.

The Date Grape Koolaid Controversy
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The Downtown Spokane Daiquiri Factory started advertising and

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offering an alcoholic drink which it refers to as Date Grape Koolaid, which it

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appears to promote as related to a very sensitive and controversial subject to many,

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namely Date Rape.

The controversy received much publicity from the Spokane

community, including media attention, which Gonzaga University considers to be

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negative publicity.
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The combination of the substantial use of the Gonzaga University

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Trademarks & Identifiers in connection with a bar/tavern, the Date Grape Koolaid

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controversy, and other uses of the Gonzaga University Trademarks and Identifiers,

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have caused citizens and supporters to become confused as to whether there is an

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affiliation, connection, association or other business/commercial relationship

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between the Downtown Spokane Daiquiri Factory (Pendleton Enterprises, Jamie

Pendleton), and Gonzaga University.

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In the past weeks for example, multiple concerned citizens have

voiced a concern or outrage that Gonzaga University would be affiliated or

associated with a business that would engage in conduct such as naming a drink

Date Grape Koolaid.

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FIRST CAUSE OF ACTION

Violation of the Lanham Act, 15 U.S.C. 1025

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Plaintiff alleges and realleges all paragraphs preceding this paragraph

as though set forth herein.

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The Lanham Act at 15 U.S.C. 1125(a) provides in relevant part:

(a) Civil action
(1) Any person who, on or in connection with any goods or services, .
. . uses in commerce any word, term, name, symbol, or device, or
any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of
fact, which

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(A) is likely to cause confusion, or to cause mistake, or to deceive as

to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his or
her goods, services, or commercial activities by another person,
. . .

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shall be liable in a civil action by any person who believes that he or

she is or is likely to be damaged by such act.

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The defendants conduct individually and collectively in commerce,

have been willful and an intentional attempt to create confusion and/or the false
impression of an affiliation, connection, association or other business/commercial
relationship with Gonzaga University.

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FIRST AMENDED COMPLAINT - 8

This conduct by Jamie Pendleton and

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Pendleton Broadcasting has also created confusion and/or the false impression that

Gonzaga University is affiliated with, connected to, associated with or otherwise

connected to several other businesses which Jamie Pendleton and Pendleton

Broadcasting promote through the radio station at 104.5 FM.

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The defendants conduct has in fact created actual confusion amongst

members of the Spokane community that the defendants, individually and/or

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collectively,

have

an

affiliation,

connection,

association

or

other

business/commercial relationship with Gonzaga University.

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As a direct and proximate result of defendants wrongful conduct as

alleged herein, plaintiff Gonzaga University has and will continue to be damaged

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in amounts to be proven at trial. These damages include without limitation, the

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damage to its goodwill, the loss of control of its goodwill and others.

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IRREPARABLE HARM
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Gonzaga University has spent substantial time, resources and efforts

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to maintain a good reputation for the University in general and for the mens and

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womens athletic programs. Gonzaga has been very successful in achieving and

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maintaining a good reputation and is well recognized in the community for such.

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Defendants on the other hand individually and collectively, have

obtained a reputation different than that of Gonzaga Universitys and in such a way
that Gonzaga University does not want to appear to be involuntarily associated

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with any entity that it is not associated with, including the defendants.

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Furthermore, Gonzaga University does not want there to be or appear to be

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confusion as to whether there is an affiliation, connection, association or other

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business/commercial relationship with the defendants.

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One example of defendant Jamie Pendleton and Pendleton Enterprises

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dba Downtown Spokanes Daiquiri Factory, is the recent use by defendants of the

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term DATE GRAPE KOOLAID as a drink they serve. This name was used and

maintained for some period of time before it was finally changed, and drew

substantial negative publicity.

Identifiers as set forth more fully above, the local community has associated the

Due to the use of Gonzagas Trademarks &

negative publicity with Gonzaga University and members of the public have
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communicated this to Gonzaga University.

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Defendants have also used Gonzaga Universitys Trademarks and

Identifiers in the promotion of several other business around the Spokane area,

making it appear not only that the defendant is somehow affiliated or associated

with Gonzaga, but that the other business is also. This type of promotion has

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generally occurred by showing a Bulldog mascot named Spike Jr. with a Gonzaga

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basketball jersey on (or alternatively a GU basketball T-shirt) posing at the

business, with the employees, in a urinal in a bathroom, and in several other ways.

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PRAYER FOR RELIEF

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Plaintiff therefore prays that the Court enter an order:

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1.

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Ordering permanently that each defendant Jamie Pendleton, Pendleton

Broadcasting and Pendleton Enterprises:

a. Cease and desist using in commerce any word, term, name,
symbol, or device, or any combination thereof, or false or
misleading representation of fact, which is likely to cause

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

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connection,

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individually, with Gonzaga University and any of its programs

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and/or activities.

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following:

or

association

each

defendant

Pendleton

This shall include, without limitation, the

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i. Cease use of all Gonzaga University Trademarks and

Identifiers (including Gonzaga, Zags, GU, Spike the

Gonzaga mascot with Gonzaga clothing on, the Gonzaga

Bulldog logo) and likenesses thereof, on or in connection

with the operations and advertising of all business interests

of defendants Jamie Pendleton, Pendleton Broadcasting

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(including without limitation 104.5 FM), and Pendleton

Enterprises (including without limitation the Downtown

Spokane Daiquiri Factory)

ii. Cease and desist use of all Gonzaga University trademarks

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(Gonzaga, Zags, GU, Spike the Gonzaga mascot with

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Gonzaga clothing on, the Gonzaga Bulldog head logo) and

likenesses thereof, on or in connection with the operations

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and advertising of defendants Jamie Pendleton, Pendleton

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Broadcasting

in

radio

station

social

media

posts,

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advertiser/sponsor

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appearances of Gonzaga Spike mascot at the Daiquiri

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Factory, on-air references to Gonzaga University in a way

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that creates a likelihood of confusion that the radio station is

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location

appearances,

in-venue

in any way affiliated, connected or associated with said

station;

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iii. Cease and desist using the call letters KGZG-FM (the

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GZG portion of which has been promoted as standing for

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or representing GO ZAGS);

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b. Remove all publicly accessible photos of logos, images and

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likenesses of the Gonzaga Trademarks and Identifiers from any

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webpage or other social media (including without limitation,

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websites, Facebook pages, twitter, radio station websites, and the

like) controlled and/or with postings by defendants Jamie

Pendleton, Pendleton Broadcasting and Pendleton Enterprises

(including without limitation, those of or related to the Daiquiri

Factory or the Spokane Downtown Daiquiri Factory).

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For an order requiring the defendants individually and collectively to

issue corrective advertising, including without limitation, by issuing such

statements, website postings/notices and social media postings in a form acceptable

to Gonzaga and to the Court, that the defendants are not individually or

collectively affiliated with, connected to, associated with or otherwise in a

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business/commercial relationship with Gonzaga University;

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For an award of direct and indirect damages in an amount to be

proven at trial, including a disgorgement of profits made by the Defendants;

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4.

For an award of prejudgment interest;

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For a trebling of damages pursuant to 15 U.S.C. 1117;

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For costs of the suit and an award of reasonable attorneys fees

pursuant to, without limitation, 15 U.S.C. 1117 and R.C.W. 19.86.090; and
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For such other and further relief as the Court deems just and equitable.

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REQUEST FOR JURY TRIAL

Plaintiff hereby requests a trial by jury on all issues so triable.

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Dated this 6th day of January, 2015.

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s/Mark W. Hendricksen/
MARK W. HENDRICKSEN, WSBA #15,542
WELLS ST. JOHN, P.S.
601 W. 1st Avenue, Suite 1300
Spokane, WA 99201-3828
e-mail: mhendricksen@wellsstjohn.com
Tel: (509) 624-4276
Fax: (509) 838-3424

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CERTIFICATE OF SERVICE
I certify under the penalty of perjury that on the 6thth day of January, 2015, I
electronically filed the document above with the Clerk of the Court using the

CM/ECF system, which will send electronic notification of such filing to the
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following counsel of record.

John Pierce
e-mail: john@lawps.com

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s/Mark W. Hendricksen/
Mark W. Hendricksen
Wells St. John, P.S.
601 W. 1st Avenue, Suite 1300
Spokane, WA 99201-3828
(509) 624-4276 phone
mhendricksen@wellsstjohn.com

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FIRST AMENDED COMPLAINT - 14