Case 3:14-cv-02036-SI

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J. Peter Staples, OSB No. 794042

pete@chernofflaw.com
Susan D. Pitchford, OSB No. 980911
sdp@chernofflaw.com
CHERNOFF VILHAUER LLP
601 SW Second Avenue, Suite 1600
Portland, Oregon 97204
Phone: (503) 227-5631
Fax: (503) 228-4373
Attorneys for Plaintiff

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON
PORTLAND DIVISION
KOOL PAK LLC, an Oregon
Limited Liability Company,
Plaintiff,
v.
KOOL TRANS LLC, an Arizona
Limited Liability Company,
Defendant.

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Case No.
COMPLAINT FOR TRADEMARK
INFRINGEMENT
DEMAND FOR JURY TRIAL

TRADEMARK CASE

For its Complaint against Kool Trans LLC (Kool Trans), Kool Pak LLC (Kool Pak)
alleges as follows:
PARTIES
1.

Kool Pak is an Oregon limited liability company with a primary place of business

in Lake Oswego, Oregon.

2.

Upon information and belief, Kool Trans LLC is an Arizona limited liability

company with its headquarters in Salt Lake City, Utah.

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JURISDICTION AND VENUE

3.

This court has subject matter jurisdiction over Kool Paks federal trademark

claims pursuant to 28 U.S.C. 1331 and 1338. This Court has jurisdiction over Kool Paks
related common law claims pursuant to 28 U.S.C. 1367.
4.

This court has personal jurisdiction over defendant Kool Trans because, upon

information and belief, defendant has used the KOOLTRANS name/mark in connection with the
provision of services within this state, or has engaged in acts or omissions within this state
causing injury to Kool Pak, or has engaged in acts or omissions outside of this state causing
injury within this state, or has otherwise established contacts within this state sufficient to permit
the exercise of personal jurisdiction. Venue is proper in this district pursuant to 28 U.S.C.
1391(b) and (c).
FACTS
5.

Kool Pak provides transcontinental refrigerated trucking services with emphasis

in the western U.S.

6.

Kool Pak owns a family of KOOL trademarks for refrigerated trucking services

and related products and services, including the following KOOL Marks:
KOOL PAK
KOOL PAK

Registration No. 4,336,274

KOOL

Registration No. 4,318,957

KEEP IT KOOL

Registration No. 4,325,967

WELL KEEP YOUR KOOL

Registration No. 4,325,968

KOOL SHIELD

Registration No. 4,499,092

KOOL PAK LOGISTICS

Registration No. 4,524,764

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Most of Kool Paks KOOL Marks are registered with the U.S. Patent and Trademark Office, and
copies of the registration certifications are attached as Exhibits 1(a)-1(f).
7.

Kool Pak has used KOOL PAK as a service mark for refrigerated trucking

services for over 45 years. By virtue of extensive use of KOOL PAK over a long period of time,
and by virtue of its use and registration of the other KOOL Marks, Kool Pak has established
strong trademark rights in KOOL PAK and its other KOOL Marks.
8.

In use, Kool Pak presents its KOOL Marks to the public in dark blue bold block

letters. Attached as Exhibit 2 is a photograph of a Kool Pak truck with KOOL PAK in dark
blue bold block letters against a white background.
9.

Upon information and belief, Kool Trans began using KOOLTRANS as a service

mark for refrigerated trucking services in June 2014.

10.

Kool Trans presents its KOOLTRANS mark to the public in bold block lettering

with the KOOL portion of KOOLTRANS in dark blue, emphasizing the KOOL portion of the
mark and setting it apart from the TRANS portion of the mark.
11.

Attached as Exhibit 3 is a photograph of a Kool Trans truck with KOOLTRANS

in bold block lettering against a white background and the KOOL portion in dark blue.
12.

Kool Trans KOOL in Exhibit 3 is substantially identical in font, color and size

to Kool Paks KOOL in Exhibit 2.

13.

Attached as Exhibit 4 is a frontal photograph of four Kool Trans trucks. The dark

blue KOOL is plainly visible against the white truck while the light blue TRANS is barely
discernable.
14.

KOOL is the dominant portion of KOOLTRANS.

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15.

KOOL is the dominant portion of KOOL PAK and the centerpiece of its family of

KOOL Marks. It is Kool Paks intent to migrate to its registered KOOL mark as the umbrella
mark for its family of KOOL Marks.
16.

Kool Trans represents itself as a transcontinental carrier with regional niches

starting on the West Coast.

17.

Kool Pak and Kool Trans are head-to-head competitors for refrigerated trucking

services throughout the U.S., particularly in the western U.S.

18.

On August 13, 2014, Kool Pak wrote to Jon Isaacson, President and a Manager of

Kool Trans, noting Kool Trans recent adoption of the service mark KOOLTRANS, informing
Mr. Isaacson of Kool Paks family of KOOL Marks and U.S. Trademark registrations therefor,
noting that the respective services provided under the respective marks are identical, expressing a
concern about likelihood of confusion, and suggesting that since Kool Trans had just begun
operation and had not yet built up significant name familiarity, it was a good time to reconsider
use of the newly adopted KOOLTRANS mark.
19.

On August 29, 2014, having had no response to its letter to Mr. Isaacson, Kool

Pak sent a copy of its August 13 letter to Todd F. Carlson, Registered Agent for Kool Trans, and
to Kevin Knight, a Manager of Kool Trans LLC.
20.

On September 16, 2014, Kool Paks lawyers received a letter from Jessica

Benford, attorney for Kool Trans, stating that Kool Trans does not believe that its name is
confusingly similar to KOOL PAK and requesting further information about Kool Paks
trademark registrations for KOOL Marks and Kool Paks claim of long use of KOOL PAK.

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21.

On September 19, 2014, Kool Pak responded to Ms. Benfords request for further

information by providing registration numbers for its KOOL family of marks and attaching proof
of Kool Paks long use of KOOL PAK.
22.

Kool Trans and Kevin Knight have failed to respond to Kool Paks September 19,

2014 letter despite subsequent reminders by Kool Pak.

23.

Instead Kool Trans filed trademark applications with the U.S. Patent and

Trademark Office to register KOOLTRANS and KOOLTRANS and Design as service marks for
interstate freight transportation by truck, alleging June 25, 2014 as the date of first use of the
marks.
24.

Upon information and belief, Kool Trans is substantially owned by its sole

Member, Knight Capital Growth LLC, which is in turn owned by Knight Transportation, Inc.
(Knight Transportation). Kevin Knight, Chairman and Chief Executive Officer of Knight
Transportation, and David Jackson, President of Knight Transportation, are the other two
Managers of Kool Trans.
25.

Upon information and belief, Kool Trans is substantially owned by and controlled

by Knight Transportation.
26.

Upon information and belief, Knight Transportation is a publicly traded company

and one of North Americas largest trucking companies. Knight Transportation operates a fleet
of 4000 trucks and is valued at approximately $606 million.
27.

Upon information and belief, Kool Trans intends to leverage the administrative

capabilities and facility network of Knight Transportation to rapidly build Kool Trans presence
in the refrigerated trucking business.

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28.

Upon information and belief, with financial backing from Knight Transportation,

Kool Trans is starting big with a fleet of 50 new 2015 Freightliner trucks and ThermoKing
refrigerated trailers. Kool Trans expects to grow rapidly with plans to have 150-200 trucks on
the road within 12 to 18 months.
29.

Upon information and belief, Kool Trans was aware of Kool Paks long use of

KOOL PAK prior to adoption and first use of KOOLTRANS, and Kool Trans adoption of and
use of KOOLTRANS has been deliberate, willful, malicious, and in reckless disregard of
Kool Paks rights.
30.

Since at least August 2014 Kool Trans has been aware of Kool Paks family of

KOOL Marks, Kool Paks ownership of multiple trademark registrations for KOOL Marks, Kool
Paks exclusive right to use its Registered KOOL Marks, and Kool Paks long use of KOOL
PAK. Kool Trans subsequent and continued use of KOOLTRANS has been deliberate, willful,
malicious, and in reckless disregard of Kool Paks rights.
31.

Kool Trans use of KOOLTRANS for refrigerated trucking services is likely to

cause confusion with Koo Paks prior use of its KOOL Marks for the same services.
32.

Kool Pak has been and will continue to be damaged by Kool Trans use of

KOOLTRANS.
CLAIMS FOR RELIEF (1-6)
(Trademark Infringement of The Registered KOOL Marks)
33.

These claims arise under 15 U.S.C. 1114.

34.

Kool Pak incorporates the allegations of paragraphs 1-32 above.

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35.

Kool Pak is the sole owner of a family of KOOL Marks, including the following

registered marks (the Registered KOOL Marks) for refrigerated trucking services and related
products and services:

36.

KOOL PAK

Registration No. 4,336,274

KOOL

Registration No. 4,318,957

KEEP IT KOOL

Registration No. 4,325,967

WELL KEEP YOUR KOOL

Registration No. 4,325,968

KOOL SHIELD

Registration No. 4,499,092

KOOL PAK LOGISTICS

Registration No. 4,524,764

The services provided by KOOL PAK under the Registered KOOL Marks are

identical to the services provided by Kool Trans under the infringing KOOLTRANS mark.
37.

The infringing mark KOOLTRANS is very similar to the Registered KOOL

Marks with KOOL being the dominant portion of both marks. In the case of Kool Paks KOOL
mark, substantially the entire mark is subsumed in Kool Trans infringing KOOLTRANS mark.
38.

Kool Trans use of KOOLTRANS for refrigerated trucking services is likely to

cause confusion, or to cause mistake, or to deceive with respect to Kool Paks prior use of each
of the Registered KOOL Marks.
39.

Kool Trans use of the KOOLTRANS infringes each of the Registered KOOL

Marks. Kool Pak has been and will continue to be damaged by Kool Trans use of
KOOLTRANS unless Kool Trans is enjoined.
40.

Pursuant to 15 U.S.C. 1117, Kool Pak is entitled to an injunction, its damages

(trebled), costs and Kool Trans profits.

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41.

Kool Trans actions have been willful, deliberate and malicious, with full

knowledge of Kool Paks rights and registrations, and therefore this case is exceptional under 15
U.S.C. 1117 entitling Kool Pak to an award of its reasonable attorney fees.
CLAIMS FOR RELIEF 7-13
(Federal Statutory False Designation of Origin)
42.

These claims arise under 15 U.S.C. 1125(a)

43.

Kool Pak incorporates the allegations of paragraphs 1-41.

44.

With respect to each of the KOOL Marks (see paragraph 6), Kool Trans use of

KOOLTRANS has caused and/or is likely to cause confusion, to cause mistake, or to deceive as
to the origin, sponsorship, or approval of Kool Trans services by Kool Pak. Such likely
confusion, mistake or deception as to the origin of Kool Trans services under 15 U.S.C.
1125(a) is independent of the rights afforded to Kool Paks Registered KOOL Marks under
15 U.S.C. 1114.
45.

Pursuant to 15 U.S.C. 1117, Kool Pak is entitled to an injunction, its damages

(trebled) and Kool Trans profits.

46.

Kool Trans actions have been deliberate, willful and malicious with full

knowledge of Kool Paks rights in the KOOL Marks and in deliberate or reckless disregard of
Kool Paks rights, and therefore this case is exceptional under 15 U.S.C. 1117, entitling Kool
Pak to an award of its reasonable attorney fees.
CLAIMS FOR RELIEF 14-20
(Common Law Trademark Infringement of the KOOL Marks)
47.

These claims arise under the common law.

48.

Kool Pak incorporates the allegations of paragraphs 1-46.

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49.

By reason of Kool Paks prior use of the KOOL Marks (see paragraph 6) for

refrigerated trucking services and related products and services, Kool Pak has acquired common
law trademark rights in the KOOL Marks for such services.
50.

Kool Trans use of KOOLTRANS for refrigerated trucking services has caused

and/or is likely to cause confusion, and therefore infringes Kool Paks rights in the KOOL
Marks. Upon information and belief, Kool Pak has been and will continue to be damaged by
Kool Trans actions unless Kool Trans is enjoined from using KOOLTRANS.
51.

Kool Trans actions have been willful and malicious, with full knowledge of Kool

Paks trademark rights in the KOOL Marks and in deliberate or reckless disregard of Kool Paks
rights. As a consequence, Kool Pak is entitled to injunctive relief, damages, its costs, Kool
Trans profits, and punitive damages.
PRAYER
Kool Pak prays for judgment in its favor on all claims for relief and for an Order:
(a)

that Kool Trans use of KOOLTRANS infringes Kool Paks Registered

KOOL Marks under 15 U.S.C. 1114, that Kool Pak has been damaged by such infringement,
that such infringement was willful, malicious, and in deliberate or reckless disregard of the rights
of Kool Pak;
(b)

that Kool Trans use of KOOLTRANS is likely to cause confusion, or

mistake, or to deceive as to the origin, sponsorship, affiliation, or association of Kool Trans or its
services with Kool Pak under 15 U.S.C. 1125(a), that Kool Pak has been damaged by such
confusion, mistake, or deception, and that Kool Trans conduct was willful and malicious and in
deliberate or reckless disregard of the rights of Kool Pak;

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(c)

that Kool Trans use of KOOLTRANS infringes Kool Paks KOOL Marks

under the common law, that Kool Pak has been damaged by such infringement, and that such
infringement was willful and malicious and in deliberate or reckless disregard of the rights of
Kool Pak;
(d)

preliminarily and permanently enjoining Kool Trans, its agents, officers

members and assigns, and all those in privity with them from using KOOLTRANS;
(e)

awarding Kool Pak its costs, its actual damages, a trebling of such

damages, and Kool Trans profits;

(f)

that this is an exceptional case and for an award of Kool Paks costs and

attorney fees pursuant to 15 U.S.C. 1117;

(g)

awarding punitive damages to Kool Pak under the common law; and

(h)

awarding such other relief as the Court shall deem appropriate.

DATED: December 23, 2014.

Respectfully submitted,
CHERNOFF VILHAUER LLP
/s/J. Peter Staples
J. Peter Staples, OSB No. 794042
pete@chernofflaw.com
601 SW Second Avenue, Suite 1600
Portland, Oregon 97204
Attorneys for Plaintiff

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DEMAND FOR JURY

Kool Pak hereby demands a jury trial of all issues so triable.
/s/ J. Peter Staples
J. Peter Staples, OSB No. 794042
Of Attorneys for Plaintiff

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