Legit Organics Complaint

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DAVIS WRIGHT TREMAINE LLP
1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
(503) 241-2300 main (503) 778-5299 fax
STUART R. DUNWOODY, OSB #126084
stuartdunwoody@dwt.com
1201 Third Avenue, Suite 2200
Seattle, WA 98101-3045
Telephone: (206) 757-8034
Facsimile: (206) 757-7034

SHEILA FOX MORRISON, OSB #032626
sheilafoxmorrison@dwt.com
Telephone: (503) 778-5311
Facsimile: (503) 778-5299

Attorneys for Plaintiff Legit Organics, LLC

IN THE UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION

LEGIT ORGANICS, LLC, an Oregon limited
liability company,

Plaintiff,

v.

CELISAC, LLC, an Oregon limited liability
company,

Defendant.

Case No.

COMPLAINT FOR TRADEMARK
INFRINGEMENT, FALSE
DESIGNATION OF ORIGIN AND
UNFAIR COMPETITION

DEMAND FOR JURY TRIAL

Plaintiff, Legit Organics, LLC (Legit), by and through its undersigned counsel, makes
the following allegations for its Complaint against Defendant, Celisac, LLC (Celisac). These
allegations are made upon knowledge with respect to Legit and its own acts, and upon
information and belief as to all other matters.
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I. PARTIES
1. Legit is a limited liability company duly organized and existing under the laws of
the State of Oregon and having its principal place of business at 180 Lithia Way, Suite 103,
Ashland, Oregon. Legit produces, markets and sells organic snack food products made with
high-quality and natural ingredients.
2. Celisac is a limited liability company organized under the laws of the State of
Oregon. On information and belief, its principal place of business is 4604 Southwest Idaho
Drive, Portland, Oregon.
II. JURISDICTION AND VENUE
3. This is an action for trademark infringement arising under the Lanham Act,
15 U.S.C. 1051 et seq., and the common law of Oregon and other states. This Court has subject
matter jurisdiction under 28 U.S.C. 1331 (federal question), 1338(a) (trademark claims), and
1367 (supplemental jurisdiction), and 15 U.S.C. 1121 (Lanham Act actions).
4. Celisac is subject to personal jurisdiction in this judicial district because Celisac is
located and regularly does business in this judicial district; and because Celisac, with knowledge
of Legits superior trademark rights, has committed acts of trademark infringement and unfair
competition by selling, distributing, advertising, and marketing food products in this judicial
district.
5. Venue is proper in this district under 28 U.S.C. 1391.
III. LEGITS RIGHTS IN THE LEGIT TRADE NAME AND TRADEMARKS
6. Legit produces, markets and sells a line of organic candy and snack foods made
with high-quality and natural ingredients under the trademark LEGIT throughout the Western
United States for now and plans to sell throughout the United States.
7. In May 2011, Jeff Roberts, the founder of Legit, came up with the idea to create
an organic food company that makes delicious candy, cookies, donuts, chips, and other sweet
and salty snacks with fun and unique branding inspired by music and pop culture.
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8. After considering many possibilities, Mr. Roberts chose Legit as the name for
his company and a trademark for the products it would sell, and formed Legit Organics, LLC on
December 13, 2011.
9. Legit then turned to protecting its planned LEGIT trademark, so that it could be
sure that the trademark would still be available for it to use once the lengthy process of
developing and marketing a new line of organic candies and snacks had been completed and
Legit was ready to sell its products. Therefore, on February 13, 2012, Legit filed a trademark
application with the United States Patent and Trademark Office (PTO) pursuant to
Section 1(b) of the Lanham Act, 15 U.S.C. 1051(b), seeking to register the trademark LEGIT
for Candies; Candy bars; Marshmallows; Petits fours in International Class 30. A copy of
Legits February 13, 2012, trademark application is attached as Exhibit A.
10. On February 15, 2012, Legit registered the domain <legitorganics.com>. It
launched a website at that domain promoting its products on January 16, 2014.
11. On May 29, 2012, the PTO published Legits application to register LEGIT in the
Trademark Official Gazette. Under the Lanham Act, any party who believed that it would be
damaged by the registration of the LEGIT mark as applied for by Legit had the opportunity to
object to Legits application by filing a Notice of Opposition with the Trademark Trial and
Appeal Board of the PTO within 30 days of publication. No one filed a Notice of Opposition in
response to Legits application to register LEGIT.
12. On July 24, 2012, the PTO issued a Notice of Allowance pursuant to 15 U.S.C.
1063(b)(2) for Legits application to register LEGIT. The Notice of Allowance in effect
informed Legit (and the rest of the world) that the PTO would register LEGIT as a trademark
once Legit submitted proof that it was using the mark in commerce. Legit had six months from
the date of the Notice of Allowance to submit a statement of use showing use of the mark in
commerce, or to request an extension of time to file a statement of use.

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13. After the Notice of Allowance issued on July 24, 2012, Legit continued its efforts
to develop and market the candy and salty snacks, including snack mixes, chips and pizza, that it
planned to sell under the LEGIT mark, expending considerable sums on developing, branding,
and marketing those goods. Legit therefore requested and received from the PTO three
extensions of time in which to file a statement of use showing use of the LEGIT in commerce.
14. On February 27, 2013, Legit filed a second intent to use trademark application
with the PTO for the LEGIT trademark in International Class 30 for Frozen pizza; pizza; snack
mixes consisting primarily of processed nuts, seeds, dried fruit and also including chocolate;
snack foods, namely, potato chips, vegetable-based snack foods, and dried vegetables; raw nuts;
corn chips, multi-grain chips, packaged soups, and frozen desserts.
15. On April 7, 2014, Legit created a Facebook page at
www.facebook.com/LegitOrganics that promotes its products.
16. Legit first sold candies and candy bars in connection with the LEGIT mark on
July 30, 2013, and first sold candies and candy bars in interstate commerce in connection with
the LEGIT mark on July 2, 2014. The candies and candy bars that it sells prominently feature the
LEGIT mark on their wrappers:


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17. On July 2, 2014, Legit filed a Statement of Use with the PTO stating its dates of
use of the LEGIT mark in connection with its products.
18. On August 12, 2014, the PTO issued U.S. Trademark Registration No. 4,584,875
to Legit for the trademark LEGIT for Candies; Candy bars
1
in International Class 30. This
registration is valid and subsisting under the provisions of the Lanham Act, 15 U.S.C. 1065
and, together with Legits common law rights in the LEGIT mark, is referred to as the LEGIT
Trademark. A copy of U.S. Trademark Registration No. 4,584,875 is attached as Exhibit B.
19. Pursuant to 15 U.S.C. 1057(c), now that U.S. Trademark Reg. No. 4,584,875
has issued, Legits February 13, 2012, filing of the application that resulted in that registration
constitutes:
constructive use of the mark, conferring a right of priority,
nationwide in effect, on or in connection with the goods or services
specified in the registration against any other person except for a
person whose mark has not been abandoned and who, prior to such
filing

(1) has used the mark;

(2) has filed an application to register the mark which is pending or
has resulted in registration of the mark; or

(3) has filed a foreign application to register the mark on the basis
of which he or she has acquired a right of priority, and timely files

1
The registration certificate as issued also includes Marshmallows, Petits Fours but these
goods were removed from the application. A corrected registration certificate has been requested.

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an application under section 1126(d) to register the mark which is
pending or has resulted in registration of the mark.
20. Legit has spent considerable amounts developing, promoting and protecting the
LEGIT Trademark, and the products that it sells under the LEGIT Trademark.
21. The LEGIT Trademark is an arbitrary or fanciful mark with respect to the
products with which Legit uses it, and thus is a strong mark.
22. Legit has plans to expand products sold in connection with the LEGIT trademark
beyond candy and candy bars. It has already begun selling organic trail mix in connection with
the LEGIT Trademark. Legit plans to sell at least the following in connection with the LEGIT
Trademark: frozen pizza, pizza, potato chips, vegetable-based snack foods, dried vegetables, raw
nuts, corn chips, multi-grain chips, packaged soups, and frozen desserts.
IV. CELISACS INFRINGING ACTIVITIES
23. Upon information and belief, Celisac was organized on January 17, 2012. Upon
information and belief, in or about May of 2012, approximately three months after Legit filed its
application to register LEGIT, Celisac began selling a gluten-free pizza dough mix under the
trademark LEGIT PIZZA.
24. LEGIT PIZZA is very similar to Legits LEGIT mark: it is identical to LEGIT
except for the addition of the term PIZZA, which is descriptive of the goods that Celisac sells
in connection with the mark.
25. On March 12, 2013, Legits attorney wrote to Celisac, informing it that Legit had
two pending trademark applications for its LEGIT mark, including the February 13, 2012
application that has now resulted in the issuance of U.S. Trademark Reg. No. 4,584,875, and that
Legit was planning to launch an entire line of food products, including a frozen pizza, under the
LEGIT mark. Legits attorney also warned Celisac that Legits right to the exclusive use of the
LEGIT mark for food items would date back to the February 13, 2012 filing date of its initial
trademark application and demanded that Celisac immediately cease using the LEGIT PIZZA
mark. Celisac refused to do so, and continues to engage in its infringing conduct.

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26. Celisac promotes its pizza dough mix through its website at celisac.com by
emphasizing that it is made with high quality ingredients and promot[es] whole body health.
27. Celisac maintains a Facebook page at www.facebook.com/legitpizza that
promotes its pizza dough mix.
28. Celisac offers food products in interstate commerce under the LEGIT PIZZA
mark that are closely related to the food products that Legit offers under the LEGIT Trademark.
In particular, Celisacs gluten-free pizza dough mix and Legits candies and candy bars are both
food products that are made with high quality ingredients and are marketed as natural
alternatives to conventional foods. Consumers would reasonably expect the goods that Legit
offers under the LEGIT mark and the foods that Celisac offers under the LEGIT PIZZA mark to
come from the same source.
29. Celisac sells its goods under the LEGIT PIZZA mark through the same marketing
channels through which Legit sells its goods under the LEGIT mark. Celisac sells its goods to
the same classes of consumers to which Legit sells its goods. In particular, Celisac and Legit
both direct a significant amount of their marketing and sell their products to natural food stores
and to customers interested in natural and organic foods. Customers and prospective customers
who are likely to make decisions as to whether to purchase Celisacs food products are the same
individuals who are likely to make decisions as to whether to purchase Legits food products.
30. Celisacs use of the LEGIT PIZZA mark has already caused actual confusion with
Legit and its LEGIT Trademark. Given the similarity, both visually and aurally, between the
LEGIT Trademark and the LEGIT PIZZA mark, the closely-related goods that Legit and Celisac
sell under those marks, and the parties overlapping channels of trade and classes of consumers,
actual confusion between the parties and their respective marks is likely to continue and increase.
V. THE HARM TO LEGIT AND THE PUBLIC CAUSED BY CELISAC
31. Celisacs unlawful infringement of the LEGIT Trademark has caused irreparable
harm to Legits reputation and goodwill. Legit will continue to suffer irreparable injury to its

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reputation and goodwill unless Celisac is enjoined from continuing the conduct complained of,
which injury cannot be adequately compensated monetarily. As long as Celisac is allowed to
continue the acts complained of, Legits reputation will continue to be damaged.
32. Upon learning of Celisacs infringing activity, Legit took immediate steps to
notify Celisac of its infringement and to seek Celisacs help in mitigating damages. Celisac
refused to cooperate with Legits requests, and instead continued to market food products under
its confusingly-similar LEGIT PIZZA mark.
COUNT 1
FEDERAL TRADEMARK INFRINGEMENT
33. Legit realleges all preceding allegations of this Complaint as if stated herein.
34. Celisacs actions described herein constitute infringement of Legits federally-
registered LEGIT Trademark, in violation of the Lanham Act, 15 U.S.C. 1114 through 1118.
35. Celisacs actions have been willful and intentional, making this an exceptional
case pursuant to 15 U.S.C. 1117.
COUNT 2
FALSE DESIGNATION OF ORIGIN
37. Celisacs actions described herein constitute false designation of origin in
violation of the Lanham Act, 15 U.S.C. 1125(a).
38. Celisacs actions have been willful and intentional, making this an exceptional
case pursuant to 15 U.S.C. 1117.
COUNT 3
COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

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40. Celisacs actions described herein constitute common law trademark infringement
and unfair competition in violation of the laws of the State of Oregon and the laws of the other
states of the United States.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Legit prays for relief against Defendant Celisac as follows:
1. Entry of preliminary and permanent injunctions enjoining Celisac and its servants,
agents, employees, successors and assigns, and all persons acting in concert with them, from
using in any manner the LEGIT PIZZA trade name or trademark or any other trade name or
trademark confusingly similar to the LEGIT Trademark, including use of the LEGIT PIZZA
mark in connection with the sale of food products or promotion of food products on its website at
celisac.com and its Facebook page at www.facebook.com/legitpizza;
2. Ordering Celisac to deliver up to Legit for destruction all goods, signs,
advertisements, literature, business forms, cards, labels, packages, wrappers, pamphlets,
brochures, receptacles, and any other written or printed material in their possession or under their
control which contain or encompass the LEGIT PIZZA trade name or trademark; the LEGIT
Trademark, any colorable imitations thereof, or any marks or trade dress confusingly similar to
the LEGIT Trademark; or which contain any false or misleading representation of fact;
3. Ordering Celisac to file with this Court and serve on Legits counsel within thirty
(30) days after the Courts issuance of a judgment, a report setting forth in detail the manner and
form in which Celisac has complied with Paragraphs 1 through 2 of Legits Prayer for Relief;
4. Awarding compensatory damages sustained by Legit and profits generated by
Celisac as a result of the acts complained of herein pursuant to federal and state law, to be
trebled in accordance with 15 U.S.C. 1117;
5. Awarding Legit its attorneys fees pursuant to 15 U.S.C. 1117, and other
applicable federal and state laws; and

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6. Awarding Legit interest, costs, and such other relief as the Court may deem just
and equitable.
JURY DEMAND
Legit hereby demands a trial by a jury of all issues so triable.
DATED this 13th day of August, 2014.

By /s/Stuart R. Dunwoody
Stuart R. Dunwoody, OSB #126084
stuartdunwoody@dwt.com
1201 Third Avenue, Suite 2200
Seattle, WA 98101-3045
Telephone: (206) 757-8034
Facsimile: (206) 757-7034

Sheila Fox Morrison, OSB #032626
sheilafoxmorrison@dwt.com
1300 SW Fifth Avenue, Suite 2400
Portland, OR 97201-5630
Telephone: (503) 778-5311
Facsimile: (503) 778-5299

Attorneys for Plaintiff Legit Organics, LLC
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