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DISTRICT OF OREGON
PORTLAND DIVISION
Defendant.
INTRODUCTION
The purpose of this lawsuit is to obtain a judgment declaring that Bob’s Red Mill
Natural Foods may use a basic symbol, , indicating to consumers that a certain
product is gluten-free, without having to seek the permission of, or pay money to, the
corporation with its headquarters, and principal place of business, in Milwaukie, Oregon.
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Washington nonprofit corporation. BRM is informed and believes, and on the basis of
such information and belief alleges, that GIG’s principal place of business and
3. As set forth in detail below in the First Claim for Relief, the Court has
jurisdiction over this civil action pursuant to 28 U.S.C. §§ 2201-2202, the Declaratory
Judgment Act, because there is an actual case or controversy between the parties. The
underlying claim is made pursuant to the Lanham Act, which confers jurisdiction
pursuant to 15 U.S.C. § 1121(a). More generally, the Court has federal question
controversy as complying with the demands GIG has made through correspondence to
BRM, set forth below, would damage BRM in an amount in excess of that amount.
5. The Court has personal jurisdiction over GIG because GIG does business
6. This Court is the appropriate venue because the demand letter described
below was sent to BRM in Milwaukie, Oregon, and the property potentially affected by
this action is situated there. This Court is the appropriate divisional venue because
produces natural, certified organic, and gluten-free milled grain products. It products are
distributed throughout North America and the world. BRM produces over 400 products,
including whole grains ground using stone mills, baking mixes, beans, seeds, nuts,
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8. For over 30 years, BRM has been creating products appropriate for those
seeking to avoid gluten (“gluten-free products”). BRM currently has over 100 gluten-free
products, which include flours, cereals, oats, baking mixes, and grains.
9. BRM goes to great lengths to assure as best as possible that the products
it markets as suitable for those on gluten-free diets meet stringent criteria. BRM has
parts per million of gluten with respect to products marketed as suitable for consumers
eating gluten-free. BRM has never claimed certification by any outside organization.
10. BRM distributes its products to markets, specialty stores, and online
vendors. BRM also sells directly to consumers over the Internet and at its factory store
in Milwaukie, Oregon.
some indication that a consumer would understand means that the product is gluten-
free. The indicators that BRM has employed in this fashion have varied over time. One
such indicator, currently in use, comprises a circle containing the letters “GF” and the
13. On May 17, 2018, without any prior discussions, GIG emailed the
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February 13, 2018, GIG abandoned its application to register it with the U.S. Patent and
Trademark Office (“USPTO”). The USPTO had refused to register the mark on the
grounds that it was “merely descriptive.” For example, the USPTO found that “GF” was
in the dictionary and meant gluten-free. A copy of the USPTO’s Office Action, in which
15. It is also notable that the abandonment occurred one day after GIG
entered into a stipulated dismissal of a lawsuit that it had filed against Jamie Oliver, a
celebrity chef known as “The Naked Chef.” In that lawsuit, which was filed in the
Western District of Washington on September 26, 2017, GIG had sued for infringement
of the GF mark—even though the USPTO had already informed GIG that it was refusing
registration.
16. It is BRM’s position that it may continue to use its circle-GF indicator
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without undergoing GIG’s certification process, which entails both paying for initial
18. It is also BRM’s position that a reasonable consumer would not confuse
the indicator with the registered certification mark, , that GIG owns. BRM
does not use the indicator in connection with the word “certified,” and the other
19. There is an actual controversy between the parties as GIG has insisted
that BRM either undergo, and pay for, GIG’s certification process, or stop using the
circle-GF indicator, “or anything confusingly similar thereto” and cease using it on all
products. Presumably, that would require the withholding from store shelves of millions
of dollars’ worth of product. At a minimum, complying with GIG’s demand would require
a significant redesign and marketing process. Either way, the potential damages exceed
$75,000.
including on its website, does not infringe upon any GIG trademark;
merely descriptive;
C. For a permanent injunction against GIG, enjoining GIG from claiming that
others may not employ a symbol that comprises a circle containing the
letters “GF”, with or without other words, so long as the word “certified” is
D. Such other and further relief the Court deems just or proper.
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By s/Clifford S. Davidson
Clifford S. Davidson, OSB No. 125378
(503) 227-1111
Attorneys for plaintiff Bob's Red Mill Natural Foods, Inc.
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