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Case 3:11-cv-00592-AC

Document 4

Filed 06/22/11

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Page ID#: 36

Vicki L. Smith, OSB No. 854410 smithv@lanepowell.com


Parna A. Mehrbani, OSB No. 053235

mehrbanip@lanepowell.com LANE POWELL PC 601 SW Second Avenue, Suite 2100


Portland, Oregon 97204-3158
Telephone: 503.778.2100 Facsimile: 503.778.2200

Attorneys for Plaintiff

UNITED STATES DISTRICT COURT


DISTRICT OF OREGON PORTLAND DIVISION

PENDLETON WOOLEN MILLS, INC., an


Oregon corporation,

CV No. 11-592-AC

Plaintiff,
v.

THE ROUND UP ASSOCIATION, an Oregon corporation,


Defendant.

FIRST AMENDED COMPLAINT (Trademark Infringement, Unfair Competition, Trademark Dilution, Unfair and Deceptive Trade Practices, Declaratory Judgment Regarding Registration)

DEMAND FOR JURY TRIAL

Plaintiff Pendleton Woolen Mils, Inc. ("plaintiff' or "Pendleton") files this Complaint
and states as follows:
1. This is an action for trademark infringement, unfair competition and dilution,

unfair and deceptive trade practices, and declaratory judgment arising out of the Trademark Act
of 1946, 15 U.S.C. 1051 et seq. (2002) ("the Lanham Act"); the Declaratory Judgment Act,

2201-2202; the Oregon Unlawfl Trade Practices Act, ORS 646.605-646.656 (2009); the
Oregon anti-dilution statute, ORS 647.107 (2009); and the common law.

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2. Defendant is marketing and selling apparel, fragrances, and related products under

a trademark that is confusingly similar to Pendleton's trademarks as set forth below.

Defendant's use of the trademark is likely to cause confusion, mistake, or deception as to the

affiiation, connection, or association of Defendant with Pendleton, or as to the origin of


Defendant's goods, or as to their sponsorship or approval by Pendleton, and is likely to dilute the
distinctive quality of

Pendleton's trademarks.
THE

PARTIES

3. Plaintiff Pendleton Woolen Mils, Inc. is a corporation organized and existing

under the laws of the state of Oregon, with a principal place of business at 220 NW Broadway,
Portland, Oregon, 97209.

4. Defendant The Round Up Association is a corporation organized and existing

under the laws of the state of Oregon, with a principal place of business at 1205 SW Cour,
Pendleton, Oregon, 97801.

JURISDICTION AND VENUE

5. This Cour has original subject matter jurisdiction over this action under the
Lanham Act pursuant to 15 U.S.C. 1116 and 1121 and 28 U.S.C. 1331 and 1338. This
Court has supplemental jurisdiction over Pendleton's state and common law claims pursuant to
28 U.S.C. 1367.

6. This Cour has personal jurisdiction over Defendant under 28 U.S.C. 1331

because Defendant has distributed, sold, or offered for sale merchandise under the infringing
trademark within this state, has engaged in acts or omissions within this state causing injur, has
manufactured, distributed, sold, or offered for sale products used or consumed within this state in

the ordinary course of trade, resides in this state, or otherwise has made or established contacts
within this state suffcient to permit the exercise of personal jurisdiction.

7. Venue is proper in this District pursuant to 28 U.S.C. 1391 because Defendant

resides in this District and/or is subject to personal jurisdiction in this District. Moreover, a
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PORTLAND, OREGON 97204-3158 503.778.2100 FAX: 503.7782200

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substantial par of the events or omissions giving rise to the claims herein occurred in this

District and, upon information and belief, important and relevant records are located in this
District.
8. Pursuant to Local Rule 3-2(b), venue is proper in this Division because a

substantial part of the events or omissions giving rise to the claims occurred in this Division and
the intellectual property at issue is owned by Pendleton and thus resides in this Division.

FACTUAL BACKGROUND

9. Pendleton owns numerous federal registrations issued by the U.S. Patent and
Trademark Offce ("USPTO") for the trademark PENDLETON for use on a variety of goods. See Certificates of Registration Nos. 3,574,742, 3,555,536, 3,574,743, 3,568,773, 3,718,175,
3,297,528, 3,049,323, 2,951,453, 1,980,970, 2,059,665, 1,218,445, 913,742, and 514,710

attached as Exhibits 1-13, incorporated herein and made a part hereof. Pendleton also owns
numerous federal registrations for marks containing the term PENDLETON, including
PENDLETON COLORPLA Y, Reg. No. 3,680,928; PENDLETON ESTATE VINEYARDS &
WINERY, Reg. No. 3,662,604; PENDLETON ECO-WISE WOOL, Reg. No.

3,638,636;

PENDLETON HOME, Reg. No.

2,713,136; PENDLETON HOME COLLECTION, Reg.

No. 2,717,244; PENDLETON ORIGINALS, Reg. No. 2,276,567; PENDLETON ORIGINALS


BORN IN OREGON, Reg. No. 2,395,884; NOR'

WESTER WEAR BY PENDLETON, Reg.

No.

2,276,748; PENDLETON STUDIO, Reg. No.

2,117,014; BEAVER STATE BY

PENDLETON, Reg. No. 1,814,471; COUNTRY CLOTHES BY PENDLETON, Reg.


No.

800,729; WARRTED TO BE A PENDLETON PENDLETON WOOLEN MILLS

PORTLAND, OREGON SINCE 1863, Reg. No.

2,053,150; WARRNTED TO BE A

"PENDLETON" PENDLETON WOOLEN MILLS PORTLAND, OREGON, Reg.


Nos. 777,919, 777,908, and 663,602; SIR PENDLETON, Reg. No. 715,837; and PENDLETON

49'ER, Reg. No. 666,627. Collectively, the PENDLETON trademarks are referred to herein as
the "PENDLETON Marks." PAGE 3 - FIRST AMENDED COMPLAINT
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10. As an example of Pendleton's long-term use of its PENDLETON Marks,

Pendleton has been using PENDLETON on blankets and throws since at least as early as 1895
and on apparel since at least as early as 1912.
11. In addition to sales of products and services pursuant to the registrations listed in

paragraph 9 above, Pendleton has sold numerous additional products under the mark

PENDLETON and marks including "PENDLETON" together with other words. For example,
Pendleton has used the mark PENDLETON in connection with scented lotions, soaps, and other
scented bath products since at least 2006.
12. As a result of Pendleton's promotion and sale of products under the

PENDLETON Marks, the PENDLETON Marks have gained significant recognition and
goodwil among the purchasing public.

13. The PENDLETON Marks have acquired distinctiveness with respect to the
products and services sold under them.
14. Since at least as early as 1997, Defendant has been a licensee of Pendleton and

thus acknowledged Pendleton's ownership and rights in the PENDLETON Marks via a license
agreement between the parties related to sales of appareL.
15. In addition, since at least as early as 2003, Defendant has either expressly or

constructively acknowledged Pendleton's ownership and rights in the PENDLETON Marks via a
trademark licensing arrangement that has existed since about 2003 between Pendleton and a third

party and likewise between Defendant and the same third pary. The products produced via the

aforementioned arangement are co-branded with Pendleton's PENDLETON mark and marks
owned by Defendant and acknowledge Pendleton's ownership ofthe PENDLETON mark.
16. The 1997 license agreement allowed Defendant to use the words "PENDLETON

ROUND-UP" on apparel in a limited manner occurring on the grounds of Defendant's event and
in stores located in Pendleton approved by Pendleton.
17. The parties operated under the 1997 agreement until May 16, 2011.

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18. On May 16, 2011, Pendleton terminated and revoked the license which formerly

allowed Defendant to sell apparel using Pendleton's PENDLETON mark and described the
limited circumstances under which Defendant was authorized to sell apparel and related products

bearing the words "PENDLETON ROUND-UP."

19. After May 16,2011, Defendant continued, and currently continues, to sell apparel
and related goods bearing Pendleton's PENDLETON mark and/or marks confusingly similar to

the PENDLETON Marks, including PENDLETON ROUND-UP (the "Infringing Mark"). The
Infringing Mark is confusingly similar to the PENDLETON Marks when used on goods similar
or related to the various goods and services offered by Pendleton. Defendant's products sold

under the Infringing Mark compete with Pendleton's products sold under the PENDLETON
Marks.

20. Defendant is also currently selling or in the past has sold personal products,
including fragrances, under the Infringing Mark.

21. Defendant's use of the Infringing Mark includes, but is not limited to, using a
form, format, or design that emphasizes solely the PENDLETON portion of

the Infringing Mark.

22. On information and belief, Defendant has encouraged and/or allowed the
manufacturer and/or distributor of its fragrance products to use and apply to register the mark

PENDLETON FRAGRANCES for use on fragrance products, which is nearly identical and
confusingly similar to the PENDLETON Marks.
23. Defendant's activities are likely to cause confusion, mistake, and deception as to

the affiiation, connection, or association of Defendant with Pendleton, and as to the origin,
sponsorship, or approval of

Defendant's goods or commercial activities.

24. By causing such a likelihood of confusion, mistake, and deception, Defendant is


inflicting irreparable harm to the goodwil symbolized by the PENDLETON Marks, for which
Pendleton has no adequate remedy at law.

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FIRST CLAIM FOR RELIEF


(Federal Trademark Infringement, 15 U.S.c. 1114)

25. Pendleton repeats and realleges each of the allegations set forth in paragraphs i
through 24 above as if fully set forth herein.
26. The PENDLETON Marks and the goodwil of the business associated with it are

of great value, are highly distinctive, and have become associated in the public mind with
Pendleton's high quality products.

27. Defendant's use of the Infringing Mark is likely to cause confusion, deception,
and mistake by creating the false and misleading impression that Defendant's goods are

manufactured or distributed by Pendleton, or are associated or connected with Pendleton, or have


the sponsorship, endorsement, or approval of Pendleton.
28. Defendant's use of

the Infringing Mark that is confusingly similar to Pendleton's

federally registered PENDLETON Marks is in violation of 15 U.S.C. 1114, and Defendant's

activities have caused and, unless enjoined by this Cour, wil continue to cause a likelihood of
confusion and deception of members of the trade and public and, additionally, irreparable har

and injur to Pendleton's goodwil and reputation as symbolized by the federally registered
PENDLETON Marks, for which Pendleton has no adequate remedy at law.

29. Defendant's actions demonstrate an intentional, wilful, and malicious intent to


trade on the goodwil associated with Pendleton's federally registered PENDLETON Marks to

Pendleton's great and irreparable injur and are in knowing and wilful violation of Pendleton's
rights under 15 U.S.C. 1114(a).
30. As a direct and proximate result of Defendant's conduct, Pendleton has suffered

damages to its valuable PENDLETON Marks and other damages in an amount to be proven at
triaL.

31. Defendant has caused and is likely to continue causing substantial injury to the

public and to Pendleton, and Pendleton is entitled to injunctive relief and to recover Defendant's
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profits, actual damages, enhanced profits and damages, costs, and reasonable attorneys' fees
under 15 U.S.C. 1114, 1116, and 1117.

SECOND CLAIM FOR RELIEF


(Federal Unfair Competition, 15 U.S.c. 1125(a))

32. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 31 above as if fully set forth herein.

33. Defendant's infringement of the PENDLETON Marks constitutes a false


designation of origin, or a false or misleading description or representation of fact, which is

likely to cause confusion, or to cause mistake, or to deceive as to Defendant's affliation,

connection, or association with Pendleton, and as to the origin of Defendant's products, or as to


the sponsorship or approval of

Defendant's products by Pendleton.

34. Upon information and belief, Defendant has intentionally and wilfully used the
Infringing Mark in disregard of

Pendleton's rights.

35. As a direct and proximate result of Defendant's conduct, Pendleton has suffered
damages to its valuable PENDLETON Marks and other damages in an amount to be proven at
triaL.

36. Pendleton has no adequate remedy at law, and if Defendant's activities are not

enjoined, Pendleton wil continue to suffer irreparable harm and injur to its goodwil and
reputation.

THIRD CLAIM FOR RELIEF


(Federal Trademark Dilution, 15 U.S.c. 1125(c))
3 7. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 36 above as if

fully set forth herein.

38. Pendleton has extensively and continuously promoted, advertised, and used the

PENDLETON Marks in the U.S. for more than a century and the marks have thereby acquired
distinctiveness and become famous and well-known symbols of

Pendleton's goods and services.

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39. Defendant's use of the Infringing Mark began after the PENDLETON Marks
became famous.

40. Defendant is making commercial use of the Infringing Mark that dilutes and is

likely to dilute the distinctiveness of Pendleton's PENDLETON Marks by eroding the public's

exclusive identification of these famous marks with Pendleton, tarishing and degrading the
positive associations and prestigious connotations of the marks, and otherwise lessening the
capacity of the marks to identify and distinguish goods and services.

41. Defendant's actions demonstrate an intentional, wilful, and malicious intent to

trade on the goodwil associated with Pendleton's PENDLETON Marks to the great and
irreparable injur of Pendleton.

42. Defendant's conduct has caused, and is likely to continue causing, substantial

injur to Pendleton's goodwil and business reputation, and dilution of the distinctiveness and

value of Pendleton's famous and distinctive PENDLETON Marks, in violation of


15 U.S.C. 1125(c), 1116, and 1117.

FOURTH CLAIM FOR RELIEF


(Oregon Trademark Dilution, ORS 647.107)

43. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 42 above as if fully set forth herein.
44. Defendant's acts set forth above violate Oregon laws, and paricularly
ORS 647.107, in that Defendant has diluted the distinctive quality of

the PENDLETON Marks,

causing irreparable harm to Pendleton's goodwil and business reputation. Pendleton is entitled
to injunctive relief and to recover damages, costs, and reasonable attorneys' fees.

FIFTH CLAIM FOR RELIEF


(Common Law Trademark Infringement and Unfair Competition)

45. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 44 above as if fully set forth herein.

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46. Defendant's acts constitute common law trademark infringement and unfair

competition, and have created and wil continue to create a likelihood of confusion to the
irreparable injur of Pendleton and its PENDLETON Marks unless restrained by this Cour, as
Pendleton has no adequate remedy at law for this injur.
47. On information and belief, Defendant acted with full knowledge of Pendleton's

use of, and statutory and common law rights to, the PENDLETON Marks and without regard to
the likelihood of confusion of the public created by Defendant's activities.

48. Defendant's actions demonstrate an intentional, wilful, and malicious intent to


trade on the goodwil associated with the PENDLETON Marks to the great and irreparable injury

of Pendleton.
49. As a result of Defendant's acts, Pendleton has been damaged in an amount not as

yet determined or ascertainable. At a minimum, however, Pendleton is entitled to injunctive

relief, an accounting of Defendant's profits, damages, and costs. Further, in light of the
deliberately fraudulent and malicious use of confusingly similar imitations of the PENDLETON

Marks, and the need to deter Defendant from similar conduct in the future, Pendleton
additionally is entitled to punitive damages.

SIXTH CLAIM FOR RELIEF


(Unfair and Deceptive Trade Practices, ORS 646.605 to 646.656)

50. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 49 above as if fully set forth herein.
51. Defendant's unauthorized use of the PENDLETON Marks have caused and are

likely to continue to cause Pendleton ascertainable loss.

52. Defendant has been and is intentionally and wilfully passing off its goods as

those of Pendleton, causing a likelihood of confusion or misunderstanding as to the source,

sponsorship, or approval of Defendant's goods, causing a likelihood of confusion as to

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Defendant's affiiation, connection, or association with Pendleton, and/or otherwise damaging


the public.

53. Defendant's unauthorized use of confusingly similar imitations of the


PENDLETON Marks has caused and is likely to cause substantial injur to the public and to

Pendleton, and Pendleton is entitled to injunctive relief and to recover damages, costs, and
reasonable attorneys' fees.

SEVENTH CLAIM FOR RELIEF


(Declaratory Judgment Regarding Registration, 15 U.S.c. 1119,28 U.S.c. 2201)

54. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1
through 53 above as if fully set forth herein.
55. On July 15, 2010, Defendant fied an intent-to-use application in the USPTO to

register the mark PENDLETON ROUND-UP for "Fragrances" in International Class 3, and was
assigned application serial number 85/085,903.
56. Pendleton's registrations for the PENDLETON Marks have earlier fiing dates

than Defendant's application for PENDLETON ROUND-UP for use on fragrances, hence
Pendleton's registrations have priority over Defendant's application.

57. Pendleton's use of the mark PENDLETON in connection with scented lotions,
soaps, and other scented bath products, which are categorized in the same International

Classification as fragrances, predates the fiing date of Defendant's application to register


PENDLETON ROUND-UP for use on fragrances.
58. Prior to the Defendant's application fiing date of July 15, 2010, Pendleton had

been using the mark PENDLETON in interstate commerce in connection with candles, scented
lotions, scented soaps, and other scented bath products for several years. These goods are similar

or related to, and in the same International Classification as, fragrances. Hence, Pendleton's use
has priority over Defendant's application.

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59. The goods on which Defendant intends to use and is using its PENDLETON

ROUND-UP mark, as evidenced by Defendant's application, are similar and/or related to the

goods on which Pendleton uses its PENDLETON Marks, as evidenced by Pendleton's


registrations and common law uses described herein.

60. Defendant's mark PENDLETON ROUND-UP is nearly identical in sight and


sound and includes within it Pendleton's PENDLETON mark.

61. Defendant's PENDLETON ROUND-UP mark so resembles Pendleton's


PENDLETON Marks as to be likely to cause confusion, mistake, or deception, when used in
connection with related goods, within the meaning of 15 U.S.C. 1052(d).

62. During the examination of Defendant's PENDLETON ROUND-UP mark, the


USPTO issued two office actions refusing registration of the mark. In its second offce action,

the USPTO denied Defendant's claim of acquired distinctiveness based on prior registrations.

The USPTO indicated that Defendant could "submit evidence that the relevant purchasing

community would be likely to see the proposed mark, and more importantly the term
"PENDLETON", as (aJ trademark when used in connection with fragrances."

63. PENDLETON ROUND-UP for fragrances is incapable of acqulfng


distinctiveness because (a) of Pendleton's longstanding and continuous use of the various
PENDLETON marks for a wide variety of goods and services; (b) Pendleton has priority in the

International Class that includes fragrances; (c) Defendant's mark has not acquired
distinctiveness for the goods identified in Defendant's application because Defendant's use has
not been substantially exclusive or continuous; (d) the goods in Defendant's application are not

the same or related to the goods or services in its prior registrations on which it bases its claim of

acquired distinctiveness; and (e) any evidence submitted by Defendant showing consumers'
recognition of PENDLETON as a trademark for fragrances should be discounted or disregarded

based on Pendleton's various PENDLETON marks, which have priority and acquired
distinctiveness prior to Defendant's application filing date.

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64. Pendleton wil be damaged by the registration Defendant seeks because the
registration wil assist and support Defendant in the confusing and misleading use of the mark

PENDLETON ROUND-UP and wil give color of exclusive statutory rights to Defendant in
violation and derogation of

Pendleton's prior rights.

65. Accordingly, Defendant has no right to register the mark PENDLETON ROUND-

UP for use on fragrances.

DEMAND FOR JURY TRIAL


66. Plaintiff respectfully demands a trial by jury on all claims and issues so triable.

PRAYER FOR RELIEF


WHEREFORE, Plaintiff

Pendleton Woolen Mils, Inc. respectfully prays for judgment as

follows:

1. That Defendant and all of its agents, offcers, employees, representatives,


successors, assigns, attorneys, and all other persons acting for, with, by, through, or under
authority from Defendant, or in concert or paricipation with Defendant, and each of them, be
preliminarily and permanently enjoined from:

a. using the PENDLETON Marks, or any confusingly similar variations


thereof, in connection with Defendant's goods;
b. using any trademark, service mark, name, logo, design, or source

designation of any kind on or in connection with Defendant's goods that is a copy, reproduction,

colorable imitation, simulation of, confusing similar to, or in any way similar to the trademarks,
service marks, names, or logos of Pendleton;
c. using any trademark, service mark, name, logo, design, or source

designation of any kind on or in connection with Defendant's goods or services that is likely to
cause confusion, mistake, deception, or public misunderstanding that such goods or services are

produced or provided by Pendleton, or are sponsored or authorized by Pendleton or are in any


way connected or related to Pendleton;

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d. using any trademark, service mark, name, logo, design, or source

designation of any kind on or in connection with Defendant's goods that dilutes or is likely to

dilute the distinctiveness of the trademarks, service marks, names, or logos of Pendleton; and
e. passing off, palming off, or assisting in passing off or palming off,

Defendant's goods as those of Pendleton, or otherwise continuing any and all acts of unfair
competition as alleged in this Complaint.
2. That Defendant account for and pay over to Pendleton profits realized by

Defendant by reason of its unlawfl acts herein alleged and that the amount of damages for
trademark infringement of the PENDLETON Marks be increased by a sum not exceeding three
times the amount thereof as provided by law.
3. That Pendleton be awarded actual damages in an amount to be proven at trial and

punitive damages, and that such damages be increased by a sum not exceeding three times the
amount thereof as provided by law by reason of Defendant's wilful and intentional conduct.
4. That the Court declare that Defendant has no right to register the PENDLETON

ROUND-UP mark for use on "Fragrances," or on any goods similar or related to the goods and
services offered by Pendleton.
5. That the Court order Defendant to abandon the U.S. trademark application for

PENDLETON ROUND-UP for use on "Fragrances" in International Class 3, serial number


85/085,903.
6. That Pendleton be awarded reasonable attorneys' fees, costs, and disbursements

incurred herein.
7. That Pendleton be awarded prejudgment interest.

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8. That Pendleton be awarded such other and further relief as the Cour deems just

and equitable.

DATED: JuneZl,2011

By

icki L. Smith, OSB No. 854410


Para A. Mehrbani, OSB No. 053235 Telephone: 503.778.2100

Attorneys for Plaintiff Pendleton Woolen Mils, Inc.

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Int. Cl.: 33
Prior U.S. as.: 47 and 49

Reg. No. 3,574,742

United States Patent and Trademark Office

Regitered Feb. 17, 209

TREMAK
PRICIAL REGISTER

PENDLETON
PENDLETON WOOLEN MILLS, INC (OREGON
CORPORATION)
220 NW BROADWAY

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAI TO ANY PARTICULAR FONT, STYLE, SIZE, OR COLOR.
OWNER OF U.S. REG. NO. 2,953,861.

PORTLAND, OR 97209

SEC.2(F.
FOR: DISTILLED SPIRITS, IN CLAS 33 (U.S. CLS.
47 AND

49).

SER. NO. 77-336,487, FILED 11'26-2007.

FIRST USE 4-3-2003; IN COMMERCE 5-7-2003.

KAREN BRACEY, EXAillNG ATTORNEY

EXHIBIT I

PAGE =i

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 2 of 13

Page ID#: 51

Int. Cl.: 20
Prior U.S. as.: 2, 13, 22, 25, 32, and 50

Reg. No. 3,555,536

United States Patent and Trademark Office

Regired De. 30, 208

TRADEMA
SUPPLEMENTAL REGISTER

PENDLETON
PENDLETON WOOLEN MILLS, INC. (OREGON
CORPORATION) 220 NW BROADWAY PORTLAND, OR 97209
FOR: SOFAS; CHAIRS; TABLES; BEDS; OTTO-

THE MARK CONSISTS OF STANDARD CHAR-

ACTRS WIOUT CLAI TO ANY PARTICULAR


FONT, STYLE, SIZE, OR COLOR.
AND

OWNER OF U.S. REG. NOS. 2,713,136, 3,049,323, OTHERS.


SER. NO. 77-336,514, FILED P.R. 11-26-207; AM.

MANS; DRESSERS; CHESTS; NIGHTSTANDS; MIRRORS, IN CLASS 20 (U.S. CLS. 2, 13, 22, 25, 32 AND
50).

S.R. 11.17.2008.

FIRST USE 0-0-2001; IN COMMERCE 0-0-2001.

KAREN BRACEY, EXAillNG ATTORNEY

EXHIBIT d.

PAGE 1

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 3 of 13

Page ID#: 52

Int. Cl.: 21

Prior U.S. CIs.: 2, 13, 23, 29, 30, 33, 40 and 50

Reg. No. 3,574,743

United States Patent and Trademark Office


TRADEMAK
PRICIAL REGISTER

Regstered Feb. 17, 209

PENDLETON
PENDLETON WOOLEN MILLS, INC. (OREGON CORPORATION)
220 NW BROADWAY PORTLAND, OR 97209

THE MARK CONSISTS OF STANDARD CHARACTRS WITHOUT CLAI TO ANY PARTICULAR FONT, STYLE, SIZE, OR COLOR.
OWNER OF U.S. REG. NOS. 2,713,136, 3,049,323
AND

FOR: DINNERWARE, NAMELY, PLATTERS,


PITCHERS, PLATES, BOWLS, BEVERAGE GLASSES, MUGS; WASTE BASKETS; TOWEL HOLDERS

OTHERS. .

IN THE NATURE OF BARS, RALS AND RIGS;


SOAP DISPENSERS; TOOTHBRUSH HOLDERS; SOAP DISHES; CUPS; BASKETS OF WICKER, STRAW, WOOD OR CLOTH; VASES; COASTERS NOT OF PAPER AN NOT BEING TABLE LINEN,
IN CLASS 21 (U.S. CLS. 2, 13, 23, 29, 30, 33, 40 AND 50).

SEC.2(.
SER. NO.. 77336,531, FILED 11-26-2007.

FIRST USE 4-1.2002; IN COMMERCE 4-1-2002.

KAREN BRACEY, EXAMIl'lNG ATTORNEY

EXHIBIT J

PAGE I

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 4 of 13

Page ID#: 53

Int. Cl.: 25
Pror U.S. as.: 22 and 39
Reg. No. 3,568,773

United States Patent and Trademark Office


TRADEMARK
SUPPLEMENTAL REGISTER

Regtere Jan. 27, 20

PENDLETON
PENDLETON WOOLEN MILLS, INC. (OREGON CORPORATION)
220 NW BROADWAY

THE MARK CONSISTS OF STANDARD CHARACTRS WITHOUT CLAI TO ANY PARTICULAR


FONT, STYLE, SIZE, OR COLOR.

PORTLAND, OR 97209
FOR: FOOTWEAR, IN CLASS 25 (U.S. CLS. 22 AND
39).

OWNER OF U.S. REG. NOS. 913,742, 2,059,665,


AND

OTHERS.

SER. NO. 77531,405, PlLfm P.R. 7-25-2008; AM. S.R. 12-12-2008.

FIRST USE 8-0-206; IN COMMERCE 8-0-2006.

MICHAEL SOUDERS, EXANIG ATTORNEY

PAGE -r

EXHIBIT 4

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 5 of 13

Page ID#: 54

~\\\t~re ~~~!~a~ OJ~:~!!trcq

PENDLETON
Reg. No.3, 718,175 PENDLETON WOOLEN MILLS, INC. (OREGON CORPORATION)
Registered Dec. 1,2009 220 NW BROADWAY

PORTLAN, OR 97209
In t. CI.: 33 FOR: WINE, TN CLASS 33 (US. CLS 47 AND 49).

'TDEMARK FIRST USE 10-18-2005; IN COMMRCE 10-18-2005.


PRINCIPAL REGISTER 11m MARK CONSISTS OF STANARD CHARACTERS WITHOUT CLAIM

TO ANY PAR-

TICULAR FONT. STYLE, SIZE, OR COLOR.

OWNR OF U.S. REG. NOS. 2,953,861 AN 3,574,742.


SEC.2(F).
SER. NO. 77-725,073, FILED 4-29-2009.

CAROLIN WOOD, EXAMIG ATTORNEY

1),Yt-~
Dira.111T oftht! I.l1ilt!d Stiile~ l'lto:nt and I"radeinilrk om".:

EXHIBIT .~

PAGE --

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 6 of 13

Page ID#: 55

Int. Cl.: 30
Prior U.S. a.: 46

Reg. No. 3,297,528

United States Patent and Trademark Office


TRADEMAR
PRICIAL REGISTER

. Registered Sep. 25, 207

PENDLETON
PENDLETON WOOLEN MILLS, INC. (OREGON CORPORATION)
220 NW BROADWAY PORTLAND, OR 97209

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAI TO AN PARTICULAR


FONT, STYLE, SIZE, OR COLOR.
SER. NO. 78-842,174, FILED 3-21-2006.

FOR: BARBECUE SAUCE, IN CLASS 30 (U.S. CL.


, 46).

FIRST USE 3-18-2007; IN COMMERCE 3-18-2007.

GINA HAYES, EXAMJIlNG ATTORNEY

EXHIBIT (0

PAGE I

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 7 of 13

Page ID#: 56

Int. Cis.: 18, 24 and 35


Prior U.S. as.: 1, 2,3, 22, 41, 42, 50, 100, 101 and 102

Reg. No. 3,049,323

United States Patent and Trademark Office


SERVICE MAK
PRICIAL REGISTER

Regtere Jan. 24, 20

TRDEMA

PENDLETON

PENDLETON WOOLEN MILLS, INC. (OREGON CORPORATION)


220 NW BROADWAY

AS CLOTHING, FOOTWEAR, HEADGEAR, AND ACCESSORIES THEREFOR, JEWELRY, BLANKETS, BEDDING, LINENS, PILLOWS, FABRIC, FURNITURE, RUGS, HOME FURNISHINGS AND

PORTLAN, OR 972083030
FOR: TOTE BAGS, OVERNIGHT BAGS, BACKPACKS, DUFFEL BAGS, SATCHELS, SADDLE

ACCESSORIES FOR BATH, KITCHEN, OFFICE, AND HOUSEHOLD, HOUSEWARES AND KICHEN UTENSIL, LUGGAGE, BAGS, AND ACCES-

BAGS, COSMETC CASES SOLD EMPT, TOILETRY CASES SOLD EMPT, SHAVING,BAGS SOLD

EMP, LEATHER BLANKT CARRIRS, CANVAS WOOD CARRIERS, LEATHER KEY CHAINS, AND DOG APPAREL, IN CLASS 18 (U.S. CLS. 1,2,3,
22 AND

SORIES THEREFOR, TRAVEL ITEMS, BOOKS, PAPER GOODS, PRIED MATTER, ARTWORK, TOYS, HOUSEHOLD AND HOLIDAY DECORATIONS, COLLECTmLES, COMPACT DISCS AND DISC CASES, COMPUTER ACCESSORIES, AND PET PRODUCTS, IN CLASS 35 (U.s. CLS. 100, 101
AND 102).
FIRST USE 0-0-1995; IN COMMERCE 0-0-1995.

41).

FIRST USE 1-O-I981; IN COMMERCE 1-0-1981.

FOR: BLANKETS, NAMELY, BED BLANKETS,

CHLDREN'S BLANTS, BLANKTS FOR OUT.


DOOR USE AND WOOLEN BLANKETS; BLANKT THROWS, LINENS, TOWELS, PILLOWS, CURTAIS, WOOLEN FABRIC, TEXTILE WALL HANG-

THE MARK CONSISTS OF STANDARD CHARACTERS WIHOUT CLAI TO ANY PARTICULAR FONT, STYLE, SIZE, OR COLOR.
OWNER . OTHERS. OF U.S. REG. NOS. 514,710, 2,717,244

INGS, CLOTH COASTERS, TABLE RUNNERS, OVEN MITS, AND FIREPLACE MITT, IN CLASS 24 (U.S. CLS. 42 AN 50).
FIRST USE 0--1895; IN COMMERt?E 0-0-1895.

AND

SEC.2().
SER. NO. 78452,195, FILED 7-16-2004.

FOR: RETAIL STORE SERVICES, MAIL ORDER


CATALOG SERVICE, AND ONLINE RET AIL STORE

SERVICES FEATURING A WIDE VARIETY OF HOUSEHOLD AND CONSUMER GOODS, SUCH

MARIA-VICTORI SUAREZ, EXAMIG ATTORNEY

EXHIBIT l

PAGE I

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 8 of 13

Page ID#: 57

Int. cl.: 14

Prior U.S. as.: 2, 27, 28 and 50

Reg. No. 2,951,453

United States Patent and Trademark Office


TRADEMARK
PRlCIP AL REGISTER

Regred May 17, 20

PENDLETON

PENDLETON WOOLEN MILLS, INC. (OREGON


CORPORATION) 220 NW BROADWAY PORTLAND, OR 97208

OWNER OF U.S. REG. NOS. 514,710, 2,713,i~6 AND OTHERS.

SEC.2(F.
SER. NO. 78-310,260, FILED 10-7-2003.

FOR: JEWELRY AND WATCHES, IN CLASS 14 (U.S. CLS. 2,27,28 AND 50).
FIRST USE 7-13-2001; IN COMMERCE 7-13-2001.

ROBERT COGGINS, EXAIfolNG ATTORNEY

EXHIBIT

PAGE I

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 9 of 13

Page ID#: 58

Int. CI.: 25

TRADEMARK
PRINCIPAL REGISTER

PENDLETON

PENDLETON WOOLEN MILLS, INC.


(OREGON CORPORATION) 220 N.W. BROADWAY PORTLAND, OR 97209

AND SLIPPERS , IN CLASS 25 (U.S. CLS. 22


AND 39).

FIRST USE 0-0-1912; IN COMMERCE


0-0-1912. OWNER OF U.S. REG. NOS. 664,870, 1,351,761 AND OTHERS.

NAMELY COATS, JACKETS, SHIRTS,


BLOUSES, SWEATERS, SKIRTS, DRESSES, SHORTS, PANTS, SLACKS, TROUSERS,
ROBES, VESTS, CAPS, HATS, TIES; CLOTH-

FOR: MEN'S WEAR AND WOMEN'S WEAR,

SEC.2(F).
SER. NO. 74-684,919, FILED 6-5-1995.

KATHERINE STOIDES, EXAMINING ATTOR.


NEY

ING ACCESSORIES, NAMELY MUFFLERS

EXHIBIT g

PAGE I

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 10 of 13

Page ID#: 59

Int. CI.: 25

Prior U.S. Cis.: 22 and 39

Reg. No. 2,059,665

United States Patent and Trademark Office


TRADEMARK
PRINCIP AL REGISTER

Registered May 6, 1997

.p~.
PENDLETON WOOLEN MILLS (OREGON
CORPORATION) 220 N.W. BROADWAY PORTLAND, OR 97209

FIRST USE 5-U-1996; IN COMMERCE


5-0-1996.

OWNER OF U.S. REG. NOS. 664,870, 678,237,

THE LINING IN THE DRAWING is A FEATURE OF THE MARK AND is NOT INTEND.
ED TO INDICATE COLOR.

AND 777,908.

FOR: MEN'S WEAR, NAMELY SHIRTS,


JACKETS, COATS, TROUSERS, LOUNGING ROBES, MUFFLERS, SOCKS AND CAPS; AND WOMEN'S WEAR, NAMELY COATS, JACKETS,

SEC.2(F).
SN 74-568,276, FILED 8-31-1994.

SHIRTS, SHORTS, SLACKS, LOUNGING


ROBES, DRESSES, BLOUSES AND SWEATERS, IN CLASS 25 (U.S. CLS. 22 AND 39).

ROBERT C. CLARK JR., EXAMINING ATlOR.


NEY

PAGE I

EXHIBIT IQ

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 11 of 13

Page ID#: 60

~L .."f

--I

Int. Cl.: 24
Pror U.S. Q.: 42
Reg. No. 1,218,445 Registered Nov. 30, 1982

United States Patent and Trademark Office

TRADEMA
Pricipal Regster

Pendleton Woolen Mil (Oregon corpration)


. 218 SW. Jeffern St. portand, Oreg. 97201

For: BLANKS, in CLASS 24 (U.S. Cl. 42). Firt us 1963; in commer 1963.
Owner of U.S.

Reg. No. 778,253.

Ser. No. 333,249, fied Oct. 19, 1981.

PAUL F. GAST, Exaining Attorney

EXHIBIT-L PAGE \

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 12 of 13

Page ID#: 61

lnt. CI.: 25
Prior U.S. C1.: 39
Reg. No. 913,742

United States Patent and Trademark Office Regitered June 8, 1971

10 \lar Renewal Renewal Term Begins June 8, 1991


TRADEMARK PRINCIPAL REGISTER

PENDLETON
PENDLETON WOOLEN
(OREGON CORPORATION) 220 N.W. BROADWAY PORTLAND, OR 97209

MILLS

FOR, BOYS' OUTER SHIRTS AND


JACKETS, MEN'S OUTR SHIRTS AND

KNIT SHIRTS, ROBES, VESTS, JACKETS, SWEATERS AND SLACKS, IN


CLASS 39 ONT. CL. 25). FIRST USE 1-9-1968; IN COMMERCE 1-9-1968.

OWNER OF U.S. REG. NOS. 184,711,


778,253 AND OTHERS.

SER. NO. 72-334.116. FILED 7-31-1969.

In testimony whereof I haW! hereunto set my hand


and caused the seal of The Patent and Trademark Offce to be affixed on Oct. 8. 1991.

COMMISSIONER OF PATENTS AND TRDEMARKS

EXHIBIT
PAGE

JI

Case 3:11-cv-00592-AC

Document 4-1

Filed 06/22/11

Page 13 of 13

Page ID#: 62

Iit. a.: i4
Pror u.s. a.: 42

UDite Stte Patent and Traemk Ofce

Reg No. 514,710

im

Re Se. 6, 19

OG Da Se. ill. 1m

PRCIAL REIST

TREM

PENDLETON
PEDLEIN WOOLEN MIlJ
218 S.W. JERSN ST
PORTLND, OR 971
OWNER OF U.S. RE. NO. 184,711. SEC 2(.

(OREN CORPRA nON)

OF WOOL, . COlTN, SILK RAYON,


SYEIC FIBRE IN CLSS CL. 24).

FOR: PICE GODS AN BLANK NYN, AND Oll NATUL AND


42 (INT.

FIRS USE 12-ISoI90J; IN COMMECE 12-IS-I90J.


SER. NO. S35,994; FIED 9-27-1947.

~:.

"

In temony wherf I 1u herento se my h


an c the _I of The Patent and Trdemak
Ofce i. be ti on Sq. 19, 1989.

COMMISSIONE OF PATENT AND TREM

EXHIBIT \~

PAGE \

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