Download - Complaint Grenade Ice Cream Grenade

8/6/2019 Complaint Grenade Ice Cream Grenade

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Todd Mitchell, OSB No. 980287E-mail: [email protected] P. Larsen, OSB No. 943645E-mail: [email protected] W YN NE L LP1331NW Lovejoy Street, Suite 900Portland, OR 97209-3280Tel: 503/226-1191; Fax: 503/226-0079Attorneys for Grenade, Inc.

-? Jul. 111554USDC'-orp

UNITED STATES D I STR ICT COURT

DISTR ICT OF OREGON

PORTLAND DIV IS ION

GRENADE, INC., an Oregon corporation,Plaintiff,

m%a- 904 HU

ICE CREAM GRENADE CLOTHING CO.,an entity ofunknown form, andANDREW ACEVADA, an individual,

Defendants.

COMPLAINT (TRADEMARKINFRINGEMENT, DILUTION,INTENT IONAL INTERFERENCE

WITH BUSINESS RELATIONS, ANDUNFAIR COMPETITION)

JURY TR IAL DEMANDED

PlaintiffGrenade, Inc.,manufacturer of the well-known GRENADE familyof products,including youth-oriented, outdoorand leisureclothingand related accessories, brings this suitagainst Defendants Ice Cream Grenade Clothing Co. and AndrewAcevada based on Defendants'

COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, INTENTIONALINTERFERENCEWITH BUSINESS RELATIONS, AND UNFAIR COMPETITION41^1 ATER WYNNE LL P1331 NW LOVEJOY STREET, SUITE 90 0PORTLAND, OR 97209-3280

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(2009) (the "Lanham Act"), the fair business practices and unfair and deceptive trade practicesacts of several states; and the common law.

6. This Court has original subject matterjurisdiction overthe LanhamAct claimsunder 15U.S.C. 1121(a) and 28U.S.C. 1331 and 1338(a) and (b), and original jurisdictionover the state law claims under 28 U.S.C. 1332(a) (1), in that the controversy involves adispute between citizens of different states and, on information and belief, the amount incontroversy exceeds the sum of $75,000. This Court also has supplemental jurisdiction over thestate law claims.

7. This Court has personal jurisdiction overthe Defendants by virtue of the fact thatDefendants have purposefully directed their conduct at Grenade in the State ofOregon, knowingthat Grenade would be harmed in Oregon and have otherwise made or established contacts withOregon sufficient to permit the exercise ofpersonal jurisdiction.

8. Venue is proper in this district pursuant to 28 U.S.C. 1391(b).III . BACKGROUND

A . The GRENADE Mark s

9. PlaintiffGrenade has been selling youth-oriented outdoor and leisure apparel andrelated items since at least 2001, and has become well known for its action sports clothing andaccessories promoted under its GRENADE trademarks. Grenade has continuously promotedand sold its high quality sports clothing and accessories, including without limitation T-shirts andhooded sweatshirts ("hoodies"), under its mark GRENADE, as well as its GRENADE logoscomposed of stylized images of a hand grenade ("GRENADE LOGO") (collectively the

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"GRENADE MARKS"), since at least August 2001. The GRENADE LOGO is depictedbelow:

10. Grenade owns federal trademark registrations for its GRENADE MARKS foruse on clothing, including t-shirts, sweatshirts, sweaters, tank tops, tops and jackets. Thesefederally registered marks include U.S. Trademark Registrations Nos. 2686122,2848695, and2744587. See Exhibits 1,2, and 3 hereto. These marks have become incontestable and thereforeconstitute conclusive evidence ofPlaintiffGrenade's ownership of the marks and its exclusiveright to license use of the marks in connection with the goods specified in the relatedregistrations under 15 U.S.C. 1115(b).

11. Grenade's clothing products are promoted by top athletes in action sports such assnowboarding, skateboarding, and motocross. Grenade's clothing products are widely promotedand sold throughout the United States and the world in various ways, including by prominentlydisplaying the GRENADE MARKS at various sporting events, on its clothing items, point ofpurchase displays, and to consumers on the Grenade websites www,grenadegloves.com andwww,grenadearmy.com.

COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, INTENTIONAL Page 4INTERFERENCEWITH BUSINESS RELATIONS, AND UNFAIR COMPETITION

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12. Grenade implements strict quality controls on its clothing products to insure thatits customers alwayspurchase high quality, cutting edge products. As a result ofGrenade'slongstanding and widespread use and promotion of its marks, the GRENADE MARKS havebecome famous andhave becomeexclusivelyidentifiedwith Grenadeand its high qualityclothing products.

13. Plaintiff Grenade has not authorizedthe transfer, assignmentor licensing of anyof its intellectual property rights to Defendants, including without limitation, the GRENADEMARK S .

A. Defendant 's Use o f Confus ingly S imilar Grenade Marks14. On information and belief, Defendant ICG is engaged in the manufacture, sale

and promotion of clothing including, without limitation T-shirts and hooded sweatshirts, underthe wordmark ICE CREAM GRENADE, and using an ICE CREAM GRENADE logoconsistingof a stylized image ofa grenade on top of an ice cream cone (collectively, the "ICGMARKS"). A copyof the ICG MARKS appearing on ICG's website,www.icecreamgrenade.com, is set forth below: /


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15. The ICG MARKS are used and prominently displayed at Defendants' website,and, on information and belief, in printed catalogs and other promotional materials provided toconsumers, distributors and others. A copy ofone catalog is attached as Exhibit 4. The ICGMARKS are also prominently used and displayed on clothing, including T-shirts andsweatshirts, offered, promoted, advertised and sold fromDefendants' website and throughdistributors.

16. The ICG MARKS are confusingly similar to theGRENADE MARKS. TheICG MARKS are used on related, ifnot identical, products. The clothing being offered,promoted, advertised and sold by Defendants under the ICG MARKS competes with Grenade'sproducts and is marketed to the substantially the same target consumers. Furthermore, theclothing offered, promoted, advertised and sold by Defendants is offered and sold in the samechannels of trade and to the same customers, and is promoted and advertised in the same media,as those in which Grenade's products are offered, promoted, advertised and sold.

17. On information and belief, ICG's use of the confusingly similar ICG MARKS islikely to cause, and on information and belief, already has caused, confusion on the part of theconsuming public by creating a false impression that the products are made, sponsored,approved, or otherwise associated with Grenade. Furthermore, ICG's use of the ICG MARKStrades on Grenade's reputation and good will, and as a result of the similarity between the marksand the confusion they have caused or will likely cause, has the capacity and likelihood oflessening the ability of the GRENADE MARKS to identify the Grenade products in the mindsof consumers and indicate Grenade's high standards ofquality and performance.


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18. On information and belief, given the close similarity between Defendants' ICGMARKS and Grenade's famousGRENADE MARKS, together with the overlap in customerbase, ICG's adoption of the highly and confusingly similar ICG MARKS was intentional anddone to trade on Grenade's goodwill. Furthermore, given the reputation for high quality thatGrenade's clothing products have attained, any confusion between ICG's T-shirts andsweatshirts and Grenade's products will result in great injury to Grenade.

19. By letter, dated January 7,2011, to Acevada, Grenade demanded, among otherthings, that ICG cease and desist from using the GRENADE MARKS and GRENADE ("Ceaseand Desist Letter"). Grenade also warned ICG that it would file a lawsuit to prevent ICG fromcontinuing to infringe the GRENADE MARKS and GRENADE LOGO. A copy of this letteris attached as Exhibit 5. ICG refused to stop using and infringing the GRENADE MARKS andGRENADE LOGO .

IV . PLAINTIFF 'S CLA IMS FOR REL IEF

F IR ST C AU SE OF ACT ION

(Federal Trademark Infringement)20. Plaintiffrepeats and realleges each of the foregoing allegations as if separately

s ta ted here in.

21. The ICG MARKS, which incorporate the GRENADE MARKS and theGRENADE LOGO, which Defendants have placed on similar or identical goods, and arepromoting and advertising in the same youth-oriented market segment, are confusingly similar toth e senior GRENADE MARKS .


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22. Defendants' unauthorized use of the ICG MARKS, which incorporate theGRENADE MARKS and the GRENADE LOGO, in commerce and in connection with thesale, offering for sale, distribution, or advertising ofproducts made by Defendants is likely tocause confusion or mistake, or to deceive, and constitutes trademark infringement a federalregistered trademark in violation of 15 U.S.C. 1114.

23. By virtue of the federal registration of the GRENADE MARKS, their broadpromotion and use, and otherwise, and the Cease and Desist Letter, Defendants were on notice ofPlaintiffs rights in the GRENADE MARKS and GRENADE LOGOS. Accordingly,Defendants' unauthorized use of the confusingly similar ICG MARKS is and was knowing,willful, and deliberate, qualifying this as an exceptional case within the meaning of 15U.S.C. 1117(a).

24. Defendants' actions have caused and will continue to cause irreparable harm toPlaintiff. Likewise, Defendants' actions are causing and will continue to cause Plaintiffmonetary damages in an amount presently unknown but to be proven at trial. Defendants havealso profited, and will continue to profit, from its unlawful infringement ofPlaintiffs mark.Accordingly, Plaintiff is entitled to injunctive relief and to recover Defendant's profits, actualdamages, enhanced profits and damages, costs, and reasonable attorney fees under 15U.S.C.1114,1116, and 1117.

SECOND CAUSE OF ACT ION

(Federal Unfair Competition)25. Plaintiffrepeats and realleges each of the foregoing allegations as if separately

stated herein.

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26. Defendants' use of the ICG MARKS, which are confusingly similar to theGRENADE MARKS and GRENADE LOGO, has caused and is likely to cause confusion,deception, and mistake by creating the false and misleading impression that Defendants' goodsare manufactured or distributed by Grenade, are affiliated, connect, or associated with Grenade,or have the sponsorship, endorsement, or approval ofGrenade in violation of 15 U.S.C. 1125(a).

27. Defendants' activities have caused and, unless enjoined by this Court, willcontinue to cause a likelihood ofconfusion and deception ofmembers of the trade and public, aswell as injury to Grenade's goodwill and reputation as symbolized by the GRENADE MARKSand GRENADE LOGO, for which Grenade has no adequate remedy at law.

28. Defendants' intentional, malicious and willful conduct has caused, and is likely tocontinue causing, substantial injury to the public and Grenade. Grenade is therefore entitled toinjunctive relief and to recoverDefendants' profits, actual damages, enhanced profits anddamages, costs, and reasonable attorneys' fees under 15U.S.C. 1125(a), 1116, and 1117.

TH IRD CAU SE OF ACT ION

(Federal Trademark Dilution)29. Plaintiffrepeats and realleges each of the foregoing allegations as if separately

stated herein.

30. PlaintiffGrenade's GRENADE MARKS are inherently distinctive and famous,and Defendants' unauthorized use of a substantially and confusingly similarmark in connectionwith its own products diminishes the inherent distinctiveness and fame ofPlaintiffs GRENADEMARKS.

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31. Furthermore, by using substantially and confusingly similar marks in promoting,advertising and selling Defendants' products, Defendant is "free-riding" on the valuable goodwill developed and rigorouslymaintained by PlaintiffGrenade.

32 . Defendants' conduct const itutes di lution o f Plaintiff s famous and distinctiveGRENADE MARKS in violation of 15 U.S.C. 1125(c).

33. Plaintiffis therefore entitled to injunctive reliefand to Defendants' profits, actualdamages, enhanced profits and damages, costs, and reasonable attorneys' fees under 15U.S.C. 1125(c), 1116, and 1117.

F OURTH C AU SE OF ACT ION

(State Trademark Dilution)34. Plaintiffrepeats and reallege each of the foregoing allegations as if separately

stated herein.

35. Grenade has extensively and continuously promoted and used the registeredGRENADE MARKS and GRENADE LOGO throughout the United States, and the markshave thereby become distinctive, famous, and well-known symbols ofGrenade's goods andserviceswell before Defendants marketed, promoted and offered for sale the clothing and goodsidentified in this Complaint.

36. Defendants ' unauthorized use or imitation o fGrenade's GRENADE MARKSand GRENADE LOGO dilutes and is likely to dilute the distinctiveness of these famous andwell-knownmarks, thereby tarnishing and degrading the positive associations of the marks, andotherwise diminish the capacity of the marks to identify and distinguish Grenade's goods andservices.


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37. Defendants are causing and will continue to cause irreparable injury to Grenade'sgoodwill and business reputation, and dilution of the distinctiveness and value ofGrenade'sfamousmarks in violation of the Oregon anti-dilution statute, O.R.S. 647.107 (2009), as well asthe anti-dilution laws of several other states, including Alabama, ALA. CODE 8-12-17 (2009);Alaska, ALASKA STAT. 45.50.180 (Michie 2009); Arizona, ARIZ. REV. STAT. ANN. 44-1448.01 (West 2009); Arkansas, ARK. CODE ANN. 4-71"213 (2009); California, CAL. BUS.& PROF. CODE 14247 (West 2009); Connecticut, CONN. GEN. STAT. ANN 35-1 li(c)(West 2009); Delaware, DEL. CODE ANN. tit. 6, 3313 (2009); Florida, FLA. STAT. ANN. 495.151 (West 2007); Georgia, GA. CODE ANN. 10-1-451 (2009); Hawaii, HAW. REV.STAT. ANN. 482-32 (Michie 2009); Idaho, IDAHO CODE 48-513 (Michie 2009); Illinois,765 ILL. COMP. STAT. ANN. 1036/65 (2009); Iowa, IOWA CODE ANN. 548.113 (West2009); Indiana, IN. CODE 24-2-13.5 (West 2009); Kansas, KAN. STAT. ANN. 81-214(2009); Louisiana, LA. REV. STAT. ANN. 51:223.1 (West 2009); Maine, ME. REV. STAT.ANN. tit. 10, 1530 (West 2000); Massachusetts, MASS. GEN. LAWS. ANN. ch. 110H, 13(West 2009); Minnesota, MINN. STAT. ANN. 333.285 (West 2009); Mississippi, MISS.CODE. ANN. 75-25-25 (2009); Missouri, MO. ANN. STAT. 417.061 (1) (West 2009);Montana, MONT. CODE ANN. 30-13-334 (2009); Nebraska, NEB. REV. STAT. ANN. 87-140 (Michie 2009); Nevada, NEV. REV. STAT. 600.435 (2007); New Hampshire, N.H. REV.STAT. ANN. 350-A:12 (2009); New Jersey, N.J. STAT. ANN. 56:3-13.20 (West 2009); NewMexico, N.M. STAT. ANN. 57-3B-15 (Michie 2009); New York, N.Y. GEN. BUS. Law 360-1 (2009); Pennsylvania, 54 PA. CONS. STAT. ANN. 1124 (West 2009); Rhode Island,R.I. GEN. LAWS 6-2-12 (2009); South Carolina, S. C. CODE ANN. 39-15-1165 (2009);COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, INTENTIONAL Page 11INTERFERENCEWITH BUSINESS RELATIONS, AND UNFAIR COMPETITION

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Tennessee, TENN. CODE ANN. 47-25-513 (2009); Texas, TEX. BUS. & COM. CODE ANN. 16.29 (Vernon 2009); Utah, VT. CODE ANN. 70-3a-403 (2009); Washington, WASH. REV.CODE ANN. 19.77.160 (West 2009); West Virginia, W.V. STAT. ANN. 47-2-13 (Michie2009); and Wyoming, WYO. STAT. ANN. 40-1-115 (Michie 2009). Grenade, therefore, isentitled to injunctive relief, damages, and costs, as well as, if appropriate, enhanced damages andreasonable attorneys' fees.

FIFTH C AU SE OF ACT ION

(Common Law Unfair Competition)38. Plaintiffrepeats and realleges each of the foregoing allegations as if separately

stated herein.

39. By virtue of their unauthorized and unlawful use of the ICG MARKS, which areconfusingly similar to the GRENADE MARKS and GRENADE LOGO marks, Defendantshave engaged in unlawful, unfair and fraudulent business practices constituting unfaircompetition.

40. Defendants' actions have caused and will continue to cause irreparable harm toPlaintiff unless enjoined.

41. Defendants have been unjustly enriched by their unfair competition and havecaused damage to Grenade in amounts to be proven at trial.

PRA YE R FOR REL IEF

WHEREFORE, PlaintiffGrenade prays for an order and judgment:1. Preliminarily and permanently enjoining and restraining Defendants, ICG's

officers, agents, servants, employees, licensees, distributors, attorneys, successors and assigns,COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, INTENTIONAL Page 12INTERFERENCE WITH BUSINESS RELATIONS, AND UNFAIR COMPETITION

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and all persons or entities acting in concert therewith or any of them from:a. Using the GRENADE MARKS and GRENADE LOGO or any other

copy, reproduction or colorable imitation, or simulation of the GRENADE MARKS andGRENADE LOGO on or in connection with Defendants' goods, its website, and itsdomain name;

b. Using the word "Grenade" on or in connection with clothing and/or shoes,its website, and its domain name;

c. Using a picture of a grenade on or in connection with clothing and/orshoes, its website, and it s domain name;

d. Advertising, promoting, marketing, offering for sale, any clothing and/orshoes using any mark which is confusingly similar to the GRENADE MARKS andGRENADE LOGO, including without limitation, any mark using the term "Grenade" orwhich includes any depiction of a grenade; and,

e. Using any trademark, logo, design, or source designation of any kind on orin connectionwith Defendants' goods, that dilutes or is likely to dilute the distinctivenessof the trademarks or logos ofGrenade;2. Directing Defendants to destroy all goods, promotional materials, and marketing

literature containing the ICG MARKS, as well as any other confusingly similar variation of theGRENADE MARKS and GRENADE LOGO, or in the alternative, ifpossible, remove theICG MARKS, and any other confusingly similar variation of the GRENADE MARKS andGRENADE LOGO, from goods containing them;///


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3. Directing Defendants to account for and pay over their profits to Grenade derivedfromtheir infringingactivity, and/or to disgorge their profits acquired as a result of their unfaircompetition;

4. AwardingPlaintiffall damages caused by the acts alleged in the Complaint;5. Based on Defendants' knowing, intentional, and willful use ofconfusingly similar

marks to the GRENADE MARKS and GRENADE LOGO, awarding Plaintiff treble damagesand Defendants' profits enhanced as provided for by 15U.S.C. 1117(a) and (b);

6. Awarding Plaintiffs attorney fees and costs pursuant to 15U.S.C. 1117(a) andthe state statutes cited in this Complaint;

7. Awarding Plaintiffpunitive and exemplary damages in an amount necessary todeter Defendants' willful and malicious conduct;

8. Awarding Plaintiffprejudgment and postjudgment interest at the legal rate;9. Awarding Plaintiffsuch other and further reliefthe Court deems just and proper.DATED this A / day of July, 2011.

A T E R WYNNE LLP

)aniel P. Larsen, OSB No. 943645E-mail: [email protected], OSB No. 980287E-mail: [email protected]: 503/226-1191; Fax: 503/226-0079Attorneys for Grenade, Inc.


ATERWYNNE LLP1331 NWLOVEJOY STREET, SUITE 900 1232710/1/DPL/105562-0041


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