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DISTRICT OF OREGON
PORTLAND DIVISION
Defendants.
COMPLAINT
Plaintiff, Pacific Fence and Wire Company (“Plaintiff” or “Pacific”), for its Complaint
against M&M Pacific NW Contracting LLC (“M&M”), Mike Wormington (“Wormington”), and
actual knowledge with respect to Plaintiff’s acts, and based on information and belief with respect
INTRODUCTION
1. Pacific brings this action because Defendants are willfully infringing Pacific’s famous
PACIFIC trademark for fences, fencing material, and fencing services by using PACIFIC NW
FENCE & DECK to advertise and provide fencing services and by using the domain name
pacificnwfenceanddeck.com.
THE PARTIES
2. Plaintiff Pacific Fence and Wire Company is an Oregon corporation having its principal
3. Defendant M&M is an Oregon limited liability company, having its principal place of
business at 3329 B Street, Forest Grove, Oregon 97116 and having a mailing address at PO Box
personally responsible for the infringing acts alleged herein, and resides at 1555 South Alpine St.,
is personally responsible for the infringing acts alleged herein, and resides at 1555 South Alpine
6. The Court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338 because
these are federal causes of action arising under the trademark laws of the United States, including
7. The Court has personal jurisdiction over Defendants because Defendant M&M has its
principal place of business within this district and Defendants Garris and Wormington reside in
and conduct business within this district, and Defendants have committed the tortious activities of
trademark infringement within this district. In addition, Defendants have advertised and continue
to advertise products to consumers within this judicial district in a manner that infringes Pacific’s
trademark rights. More generally, Pacific has suffered a substantial part of the harm from
8. Venue is proper in this Court under at least 28 U.S.C. § 1391(c) because Defendants reside
in this district and a substantial part of the events giving rise to Pacific’s claims occurred in this
district, causing damage to Pacific in this district. Defendants’ actions within this district directly
interfere with and damage Pacific’s commercial business, harm Pacific’s goodwill, and tarnish
FACTUAL BACKGROUND
9. Plaintiff Pacific Fence & Wire Company has established extensive rights in its PACIFIC
trademark for fences, fencing materials, and fencing services over nearly a century of continuous
10. Pacific Fence & Wire is the owner of U.S. Trademark Reg. No. 2,655,643 for PACIFIC.
Exhibit A. The certificate notes Pacific Fence & Wire’s ownership of U.S. Trademark Reg. No.
1,243,399, which was also for PACIFIC for fences and fencing material and which was filed in
1981.
11. Pacific Fence’s rights in the PACIFIC mark are longstanding and well-established, both as
a common law mark and as a federally registered trademark, to such extent that this is a famous
12. Defendants are currently advertising and providing fencing services under PACIFIC NW
13. Defendants have operated the website noted in the preceding paragraph and depicted in
14. Pacific demanded in 2016 that Defendants stop all use of PACIFIC NW FENCE & DECK
and any other use likely to cause confusion or to dilute the PACIFIC mark for fences and fencing
materials.
15. Defendants subsequently had their representative contact Pacific’s counsel in November
2016 and agreed to stop use of PACIFIC NW FENCE & DECK and pacificnwfenceanddeck.com.
16. In or about 2017-18, Defendants temporarily stopped use of PACIFIC NW FENCE &
PACIFIC NW FENCE & DECK at pacificnwfenceanddeck.com was not active. Exhibit E.4
17. However, Defendants have subsequently revived the website advertising PACIFIC NW
FENCE & DECK at pacificnwfenceanddeck.com and are currently advertising there. Exhibit B.
1
Printout on June 22, 2018 of website at http://www.pacificnwfenceanddeck.com/index.html.
2
Printout on June 22, 2018 of Facebook page at
https://www.facebook.com/pg/pacificnwfenceanddeck/community/?ref=page_internal.
3
Printout on June 22, 2018 of Twitter page at https://twitter.com/pnwfd
4
Printout as of June 14, 2018 of pacificnwfenceanddeck.com
19. Despite Defendants’ appearing to provide fencing services, the contractor license from the
state of Oregon for M&M is expired (Exhibit F) and neither Wormington nor Garris has a current
contractor license, and also M&M is past due to file the annual renewal with the Oregon Secretary
of State’s corporate division for M&M Pacific NW Contracting LLC (Exhibit G).
21. This count for trademark infringement of Pacific’s federally registered trademark arises
under the Lanham Trademark Act of July 5, 1946, 15 U.S.C. §§ 1051 et seq. and particularly
§ 1114 thereof.
22. Pacific owns its PACIFIC trademark for fences and parts thereof – namely, chain link
fences, barbed wire fences, slat fences and gates, all made primarily of metal, and that trademark
23. Pacific has continuously used its PACIFIC trademark since as early as 1921. The PACIFIC
trademark is an arbitrary and distinctive mark that consumers associate with Pacific’s sale of fence
products.
24. Over the near-century of Pacific’s use of its PACIFIC trademark, PACIFIC-branded
products and services have earned a reputation for consistent high quality, and through its long,
uninterrupted use, PACIFIC has become a famous mark in the fencing industry.
25. Pacific has spent substantial time, money and effort in developing consumer recognition
and awareness of its PACIFIC-trademarked products, and has invested significantly in advertising
in order to inform its customers and potential customers of the benefits of its products.
connection with the marketing and sale of fencing services, starting long after Pacific’s
establishing its trademark rights, has created, and is likely to continue to create, consumer
confusion, brand and reputational harm to Pacific among customers, potential customers, and
others in the fencing industry who are mistaken as to the origin of each party’s goods/services, or
who mistakenly believe Pacific and Defendant are commonly owned, operated or otherwise
27. This infringement has caused, and continue to cause, irreparable harm to Plaintiff’s brand
29. This count for unfair competition, false designation of origin, and trademark dilution arises
under the Lanham Trademark Act of July 5, 1946, 15 U.S.C. §§ 1051 et seq. and particularly
30. Pacific owns its PACIFIC trademark for fences and parts thereof, and also fencing services,
specifically the installation of fences of all types and configuration, including gates, and that
31. Pacific has used its PACIFIC trademark in the fencing industry since as early as 1921. The
PACIFIC trademark is an arbitrary and distinctive mark that is associated with Pacific’s sale of
32. Over the near-century of Pacific’s use of its PACIFIC trademark, PACIFIC-branded
products and services have earned a reputation for consistent high quality, and through its long,
continuous use for nearly a century, PACIFIC has become a famous mark in the fencing industry.
33. Pacific has spent substantial time, money and effort in developing consumer recognition
and awareness of its trademarked products and services, and has invested significantly in
advertising in order to inform its customers and potential customers of the benefits of its products
and services.
connection with the marketing and sale of fencing services, starting long after Pacific’s securing
its trademark rights, has created, and is likely to continue to create, consumer confusion, brand and
reputational harm to Pacific, and dilution of the famous PACIFIC trademark among customers,
potential customers, and others in the fencing industry who are mistaken as to the origin of each
party’s goods/services, or who mistakenly believe Pacific and Defendant are commonly owned,
operated or otherwise affiliated, connected or associated. Members of the public have been, and
are likely to continue being, confused as to the origin, sponsorship, authorization and/or approval
35. This unfair competition, false designation of origin, and dilution have caused, and continue
to cause, irreparable harm to Pacific’s brand and reputation, for which there is no adequate remedy
at law.
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proven at trial for unfair competition, false designation of origin, and dilution under 15 U.S.C. §
1125.
D. For temporary, preliminary and permanent injunctive relief from this Court
prohibiting Defendant from engaging or continuing to engage in the infringement and other
unlawful or unfair business acts or practices described herein, including the unauthorized use of
any trademark right of Plaintiff; acts of trademark infringement; false designation of origin; unfair
Plaintiff;
F. For the Defendants’ use of “Pacific NW Fence & Deck” and colorably similar
marks to be enjoined, including orders to website hosts and social media website provides,
including those identified in Exhibits B-D herein, including deletion of the website depicted in
Exhibit B, deletion of the Facebook account depicted in Exhibit C, and deletion of the Twitter
I. For such other and further relief as the Court may deem just and equitable.
JURY DEMAND
Pacific Fence and Wire Company demands a trial by jury on all issues properly tried before
a jury.
Respectfully submitted,
By s/ Owen W. Dukelow
Owen W. Dukelow, OSB No. 965318
E-mail: owen@khpatent.com
520 S.W. Yamhill Street, Suite 200
Portland, Oregon 97204
Telephone: (503) 224-6655
Facsimile: (503) 972-9115