complaint icebreak v ice and iceberg

8/7/2019 Complaint Icebreak v Ice and Iceberg

1/7

Scott D. Eads, OSB No. 910400 FlLEIfll tIPR [email protected] COIE l lp1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128Telephone: 503.727.2000Facsimile: 503.727.2222Attorneys for PlaintiffIcebreaker Limited

UNITED STATES DISTRICT COURTDISTRICT OF OREGONPORTLAND DIVISION

ICEBREAKER LIMITED, a NewZealand corporation,Plaintiff,

v.

GILMAR S.P.A., an Italian corporation,D e f e n d a n t .

Plaintiff, Icebreaker Limited ("Plaintiff'), for itsComplaint against defendant GilmarS.P.A. ("Defendant"), states and alleges as follows:

N A T U R E OF T H E A C T I O N1. This isan action fordeclaratory judgment pursuant to 28U.S.C. 2201 and

2202. This action arises under the trademark laws of the United States, including 15U.S.C. 1114 and 1125.

2. Plaintiffoffers a variety ofmerino wool-based apparel products ("PlaintiffsApparel Goods") and operates retail stores selling such products ("Plaintiffs Retail Services").

^VH- 30 9 BRCOMPLAINT FOR DECLARATORYJUDGMENT OF NO TRADEMARKINFRINGEMENT

1- COMPLAINT FOR DECLARATORY JUDGMENT Perkins Coie llp1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Case 3:11-cv-00309-BR Document 1 Filed 03/11/11 Page 1 of 7 Page ID#: 1


2/7

Plaintiff seeks a declaratory judgment thatit hasnot infringed and willnot infringe anytrademark purportedly owned by Defendant, a seller offashion apparel. There isa need for suchreliefbecause Defendant has asserted thatPlaintiffis infringing andwill infringe its rights inseveral trademarks containing the term ICE, and because Defendant has formally opposedregistration ofPlaintiffs ICEBREAKER trademark, for apparel goods and retail store services,with the United States Patent & Trademark Office ("USPTO").

P A R T I E S3. PlaintiffIcebreaker Limitedis a NewZealandcorporationwith itsUnitedStates

headquarters at 1330 NW14thStreet, Portland, Oregon.4. On information andbelief,DefendantGilmarS.P.A.,is an Italiancorporation

with its principal place ofbusiness atVia Malpasso 723-725 S.Giovanni, Italy.JURI SD ICT ION AND VENUE

5. The Court has subject matter jurisdiction over the claims pursuant to 28 U.S.C. 2201 et seq., 28 U.S.C. 1331 (federal question), 1338(a) (trademark action), and 28 U.S.C. 1332. Venue is proper under 28 U.S.C. 1391(b) because, on information and belief, plaintiffresides inthisdistrict, defendant hasno business residence intheUnited States, defendant sellsits products throughout the United States including in this judicial district, and a substantial partof the events giving riseto the claim occurred here.

BACKGROUND F A C T S6. Plaintiffoffers a variety ofmerino wool-based apparel products, andoperates

retail stores featuring such products, under theICEBREAKER trademark and trade name.7. Plaintiffhas offeredPlaintiffs ApparelGoodsunder the ICEBREAKER

trademarkand trade name in the United States since at least as early as 2004, and has offeredPlaintiffs Retail Services under the ICEBREAKER trademark and trade name in the UnitedStates since at least as early as 2007.


91004-0005/LEGAL20400899.1Portland, OR 97209-4128Phone: 503.727.2000Fax: 503.727.2222



3/7

8. Plaintiffowns incontestable federal registration no. 1362030 forthemarkICEBREAKER &Design, covering insulated footwear, with rights dating back to 1984. SeeExhibit A attachedhereto. Thatmark is currently used by Plaintiffs licensee.

9. Plaintiffis the owner of pending applications Serial No. 78683696,76528102,78683671, 77212963 and 77212966 (collectively, Plaintiffs ICEBREAKER Applications"). SeeExhibit B attached hereto.

10. Defendant is,on information andbelief, a seller of fashion apparel products, andclaims use and ownership ofnumerous trademarks containing the term ICE with such products.

11. Defendant has asserted that Plaint iff s use of the trademark and trade nameICEBREAKER infringes trademark rights owned by Defendant. Attached hereto asExhibit Cisa letter dated September 1,2005 from Defendant asserting such infringement.

12. Beginning in2005 and continuing through 2009, Defendant has filed with theUSPTO's Trademark Trial andAppeal Board (the "TTAB") oppositions No. 91167875,91190574,91190567,91192163 and 91192164 (collectively, the "Oppositions") to opposePlaintiffs ICEBREAKER Applications, onpriority and likelihood ofconfusion grounds.

13. Plaintiff has filed petition No. 92053414 (the "Cancellation") to cancel thefollowing registrations (collectively, the "Cancellation Registrations") for ICE marks owned byDefendant on non-use abandonment grounds:

Reg. No. Mark Ree. No. Ma r k Res . No. Ma r k1850734 ICE 1477299 ICEBERG

JEANS1477298 ICEBERG

SPORT ICE3029399 ICEB 2909353 SPORT ICE 2518973 HISTORY

ICEBERG3303328 I CE ICE

BABYICEBERG

3029400 ICEBICEBERG

3- COMPLAINT FOR DECLARATORY JUDGMENT

91004-0005/LEGAL20400899.1

P e r k i n s Coie l l p1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128Phone: 503 .727 .2000Fax: 503.727.2222



4/7

14. The Oppositions and the Cancellation have been consolidated by the TTAB (withOpposition No. 91167875 as the parent case), and are currently in the discovery period. A copyof the Board'sMarch 1,2011 scheduling order is attachedas ExhibitD hereto.

15. Defendant has asserted that Plaintiff's use of its ICEBREAKER trademark andtrade name infringes Defendant's purported rights inat least the following trademark

Ree. No. M a r k R e e . No. M a r k Ree . No. M a r k1850734 ICE 1477299 ICEBERG

JEANS1477298 ICEBERG

SPORT ICE3029399 ICEB 2909353 SPORT ICE 2518973 HISTORY

ICEBERG3303328 ICE ICE

BABYICEBERG

3029400 ICEBICEBERG

1269297 ICEBERG

16. OnJanuary 18,2011, in ameeting between counsel fortheparties, counsel forDefendant stated unequivocally that Plaintiffmust change its ICEBREAKERmark and tradename.

17. Defendant's recent demandthat Plaintiff stopusingits valuableICEBREAKERtrademark and trade name as created anobjective threat thatDefendant intends to take additionaland further legal action against Plaintiff unless Plaintiff accedes toDefendant's demand.

CLAIMS FOR DECLARATORY RELIEFC O U N T 1

(No Trademark Infringement)18. The allegations of paragraphs 1-17 above arehereby incorporated by reference as

if fully set forth herein.19. There is a justiciable dispute between the parties astowhether Plaintiffs useof

the ICEBREAKERtrademark and trade namewith Plaintiffs Apparel Goods and Plaintiffs

4- COMPLAINT FOR DECLARATORY JUDGMENT

91004-0005/LEGAL20400899.1

P e r k i n s C o i e l l p1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128Phone: 503.727.2000Fax: 503.727.2222



5/7

Retail Services will infringe any rights owned byDefendant inDefendant's ICE Marks, orconstitute unfair competition under federal or state lawwith respect to such marks.

20. There arenumerous thirdpartytrademarks containing the termICEusedandfederally registered withapparel products in theUnitedStates.

21. Noentity has a right tomonopolize the term "ICE" in connection with apparelproducts.

22. There has beenno confusioncreatedbyPlaintiffs use of the ICEBREAKERtrademark and tradenamein connectionwithPlaintiffsApparel Goods andPlaintiffs RetailServices and any ofDefendant's ICE marks, despite several years ofoverlap in the marketplace.

23. There is no likelihood of confusion between Plaintiffs trademark and trade nameICEBREAKER, asused with Plaintiffs Apparel Goods and Plaintiffs Retail Services, and any ofDefendant's ICE Marks, as used with Defendant's apparel products.

24. Plaintiffhasnotviolated Defendant's rights in anyofDefendant's ICEMarks, orcommitted unfair competition with respect to any such marks, byitsuse of the ICEBREAKERtrademark and trade name withPlaintiffsApparel Goods andPlaintiffsRetail Services.

25. Plaintiffwillnot violate Defendant's rightsin any ofDefendant's ICEMarks, orcommit unfair competition with respect to any such marks, byitsuse ofthe ICEBREAKERtrademark and trade name withPlaintiffsApparel Goods andPlaintiffsRetail Services.

26. Plaintiffis entitled to declaratory judgmentthat it has not infringed any ofDefendant's ICEMarks, or committed unfair competition withrespect to anysuchmarks, byreason of its use of the trademark and trade name ICEBREAKER with Plaintiffs Apparel Goodsan d Plaintiffs Retail Services.

5- COMPLAINT FOR DECLARATORY JUDGMENT Perkins Coie ll p1120 N.W. Couch Street, Tenth Floor




6/7

COUNT2(Abandonment)

27. The allegations ofparagraphs 1-26 above are hereby incorporated by reference asif fully set forth herein.

28. Oninformation and belief, Defendant has ceaseduse of eachof the marks in theCancellation Registrations.

29. On information andbelief,Defendanthas an intent not to resumeuse of each ofthe marks in the Cancellation Registrations.

30. Oninformation andbelief, Defendant has ceaseduse of eachof the marks in theCancellation Registrations for at least three consecutive years following the correspondingregistration datefor eachsuchmark.

31. Themarks in theCancellationRegistrations havebeenabandoned, andthoseregistrations shouldbe canceled.

P R A Y E R F O R R E L I E FWHEREFORE, Plaintiffprays for the following relief:A. A declaratory judgment that:1. No likelihood of confusion has been, or will be, created with any ofDefendant's

ICE Marks byPlaintiffs use of ICEBREAKER asa trademark or trade name inconnection withPlaintiffs Apparel Goods andPlaintiffs RetailServices;

2. Plaintiffhas not committed, andwillnot commit,unfaircompetitionwith respectto any ofDefendant's ICE Marks byreason ofPlaintiffs use of ICEBREAKER asa trademarkor trade name in connectionwith Plaintiffs Apparel Goods andPlaintiffs Retail Services; and

3. Themarks listedin the Cancellation Registrations havebeenabandoned, and theCancellation Registrations shouldbe canceled.





7/7

B. Apreliminary and permanent injunction prohibiting Defendant, itsaffiliates,agents, servants, employees and attorneys, and any and all other persons inactive concert orparticipation with them, from improperly interfering with Plaintiffs business, including fromasserting that Plaintiffs use or registration ofthe term "ICEBREAKER" with Plaintiffs ApparelGoodsand Plaintiffs RetailServices violatesDefendant's rights in anyofDefendant's ICEMarks or constitutes unfair competition withrespect to anysuchmarks;

C. Foranaward of attorneys' fees and costs toPlaintiff to theextent permitted bylaw; and

D. For such further and other reliefas the Court deems just and proper.DATED: March 11,2011 s/ Scott P. Eads, OSBNo. [email protected]

Perkins Coie l l p1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128Telephone: 503.727.2000Facsimile: 503.727.2222Attorneys for PlaintiffIcebreaker Limited

7- COMPLAINT FOR DECLARATORY JUDGMENT P e r k i n s C o i e llp1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128Phone: 503.727.200091004-0005/LEGAL20400899.1


complaint icebreak v ice and iceberg

Documents