Pelican Brewing Company Complaint

Case 3:16-cv-00486-BR
Document 1
Filed 03/22/16
Page 1 of 19
Michael A. Cohen, OSB #965776

Email: mcohen@schwabe.com
Nicholas (Nika) F. Aldrich, Jr., OSB #160306
Email: naldrich@schwabe.com
Alexandra J. Bodnar, OSB #133058
Email: abodnar@schwabe.com
SCHWABE, WILLIAMSON & WYATT, P.C.
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Facsimile: 503.796.2900
Attorneys for Plaintiff Pelican Brewing Company
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
PORTLAND DIVISION
PELICAN BREWING COMPANY, an

Oregon corporation,
No. _____________
COMPLAINT
Plaintiff,
v.
PELICANS WAITING ROOM, LLC
d/b/a PELICANS WAITING ROOM, an
Oregon limited liability company; NO
COMPLY FOOD GROUP, LLC, an
Oregon limited liability company; and
KYLE ROURKE, an individual,
(Federal Trademark Infringement, Federal

Unfair Competition, and Common Law
Trademark Infringement and Unfair
Competition)
DEMAND FOR JURY TRIAL
Defendants.
For its Complaint, Plaintiff Pelican Brewing Company (Plaintiff) states and alleges as
follows:
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
Document 1
Filed 03/22/16
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NATURE OF THE CASE

1.
This is a trademark infringement and unfair competition case arising from the
deliberate use by Defendants Pelicans Waiting Room LLC d/b/a Pelicans Waiting Room and
its managing members No Comply Food Group LLC and Kyle Rourke (collectively
Defendants) of a name and logo for a new restaurant and bar that is confusingly similar to
Plaintiffs PELICAN-formative trademarks and logos, including without limitation, Plaintiffs
federally-registered PELICAN PUB & BREWERY, PELICAN BREWERY COMPANY,
PELICAN PUB & BREWERY & Design, INDIA PELICAN, IMPERIAL PELICAN, and
MACPELICANS trademarks. As further detailed herein, Plaintiff, Pelican Brewing Company,
uses its PELICAN-formative marks in Oregon in association with bar and restaurant services and
the manufacture and sale of beer, coffee, and unique foods throughout the Pacific Northwest.
2.
Defendants are infringing upon Plaintiffs PELICAN-formative marks by opening
a bar and restaurant in Portland, Oregon that serves beer, coffee, and foods under the confusingly
similar name Pelicans Waiting Room and a similar logo, as well as food and beverages
branded Pelican including an alcoholic beverage called Pelicans Punch.
3.
By way of this lawsuit, Plaintiff seeks: (i) an injunction enjoining Defendants
from further use of any trademark consisting of or including the term PELICAN, or any other
trademark or logo confusingly similar to Plaintiffs trademarks and logos, in connection with the
marketing, promotion, sale, and provision of bar and restaurant services and/or related food and
beverage products; and (ii) an award of damages as a result of Defendants infringement and
unfair competition to date.
THE PARTIES
4.
Plaintiff Pelican Brewing Company is a corporation duly organized and existing
under the laws of the State of Oregon, with its principal place of business at 9005 Nestucca
Ridge Road, Pacific City, Oregon 97135. Plaintiff is in the business of, among other things, the
marketing, promotion, sale, and/or provision of bar and restaurants services; beer, ale and lager;
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
Document 1
Filed 03/22/16
Page 3 of 19
coffee; and other food products, including salad dressing, chowder, and various meat, fish,
poultry, and vegetable-based products.
5.
Upon information and belief, Defendant Pelicans Waiting Room, LLC d/b/a
Pelicans Waiting Room (Pelicans Waiting Room) is a limited liability company duly
organized and existing under the laws of the State of Oregon, with an address at 2327 NW
Kearney Street, Portland, Oregon 97203.
6.
Upon information and belief, Defendant No Comply Food Group, LLC is a
limited liability company duly organized and existing under the laws of the State of Oregon, with
an address at 7328 N. Central Street, Portland, Oregon 97203. Upon information and belief,
Defendant No Comply Food Group, LLC is the managing member of Defendant Pelicans
Waiting Room.
7.
Upon information and belief, Defendant Kyle Rourke is an individual residing in
or around Portland, Oregon, and is a member of Defendant No Comply Food Group, LLC,
8.
Upon information and belief, Defendants are in the business of, among other
things, the marketing, promotion, sale, and provision of bar and restaurant services in Portland,
Oregon.
JURISDICTION AND VENUE
9.
This Court has original subject-matter jurisdiction over this action pursuant to 28
U.S.C. 1331 and 1338, and 15 U.S.C. 1121 because the action arises, in part, under 15
U.S.C. 1114 and 1125.
10.
This Court has jurisdiction over Plaintiffs related common law claims pursuant to
28 U.S.C. 1338, because these claims are joined with substantial and related claims under
federal trademark law, and pursuant to the doctrine of supplemental jurisdiction, 28 U.S.C.
1367.
11.
This Court has personal jurisdiction over Defendants because, on information and
belief, Defendants Pelicans Waiting Room and No Comply Food Group, LLC are limited
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
Document 1
Filed 03/22/16
Page 4 of 19
liability companies duly organized and validly existing under the laws of the State of Oregon,
and Defendants principal places of business are located in Portland, Oregon, and Defendant
Kyle Rourke registered the domain name www.pelicanswaitingroom.com, as discussed below,
using a Portland, Oregon address, and on information and believe Defendant Kyle Rourke
resides in Portland, Oregon.
12.
Venue is proper in this judicial district under 28 U.S.C. 1391(b)(2) because a
substantial part of the events or omissions giving rise to Plaintiffs claims occurred in this
judicial district.
13.
Venue is also proper in this judicial district under 28 U.S.C. 1391(b)(1),
because, upon information and belief, all defendants reside in this judicial district.
FACTS COMMON TO ALL CLAIMS FOR RELIEF
Plaintiffs Ownership and Use of the PELICAN Marks
14.
Founded in 1995, Plaintiff is in the business of providing bar and restaurant
services, and selling its signature beers, coffees, and unique food products throughout the United
States. Plaintiff operates its Pelican Pub & Brewery restaurant in Pacific City, Oregon and its
Tap Room in Tillamook, Oregon, and is opening the Pelican Brewing Pub in Cannon Beach,
Oregon in late Spring 2016. Plaintiff also has plans to open a PELICAN-branded bar and
restaurant in Portland, Oregon.
15.
Plaintiffs customers include individuals from across the United States and around
the world who visit Plaintiffs iconic bar and restaurant to sample its award-winning beers and
enjoy its unique beer cuisine and seafood. Plaintiffs beer is also distributed and sold throughout
Oregon, Washington, and Idaho, and Plaintiff has won numerous national and international
awards for its signature brews.
16.
In addition to marketing, advertising, and/or selling its goods and services
throughout the United States, Plaintiff also markets and promotes its bar and restaurant and tap
room through its website, http://pelicanbrewing.com, and generates a significant portion of its
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
Document 1
Filed 03/22/16
Page 5 of 19
business through word-of-mouth, its Facebook page, located at

http://www.facebook.com/PelicanBrewery, and tourist guidebooks and industry publications.
17.
Since at least as early as 1995 and continuing through the present date, Plaintiff
has provided its bar and restaurant services and sold its beer, ale, and lager under its PELICAN
PUB & BREWERY and PELICAN PUB & BREWERY & Design marks, and since that time
has begun using numerous other PELICAN-formative marks to promote and offer its bar and
restaurant services, beers, and food products.
18.
Plaintiff owns numerous federal trademark registrations for its marks, including
without limitation, the following:

Mark
Class
U.S. App. No.
Application Date
PELICAN PUB &

BREWERY
32, 43
U.S. Reg. No.

85/213,110
Registration Date
January 7, 2011
PELICAN PUB &

BREWERY
29, 30
4,098,067
85/323,378
February 14, 2012

May 17, 2011
PELICAN PUB &

BREWERY
30
4,298,773
85/806,996
March 5, 2013
December 19, 2012
PELICAN BREWING
COMPANY
32
4,376,242
85/662,215
July 30, 2013

June 26, 2012
MACPELICANS
32
4,333,936
85/323,396
May 14, 2013

May 17, 2011
INDIA PELICAN
32
4,104,710
85/323,409
February 28, 2012

May 17, 2011
32
4,104,711
86/010,763
February 28, 2012

July 15, 2013
4,494,513
March 11, 2014
IMPERIAL PELICAN
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
Document 1
32, 43
29, 30
30
32
Filed 03/22/16
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85/214,115
January 10, 2011
4,104,207
February 28, 2012
85/323,364
May 17, 2011
4,298,772
March 5, 2013
85/807,029
December 19, 2012
4,379,714
August 6, 2013
85/863,585
February 28, 2013
4,384,065
August 13, 2013
A true and correct copy of the certificates of registration for Plaintiffs federally-registered
PELICAN-formative trademarks are attached hereto as Exhibit A.
19.
Plaintiff has also developed common law rights in its federally-registered marks
(the PELICAN Registered Marks) based on its use of the marks in commerce.
20.
Plaintiff has also used logos in the promotion of its bar and restaurant services and
in the sale of its craft beers and other goods. Plaintiffs logos are circular, with the head of a
pelican facing left, and with the pelicans beak extending beyond the inner circles perimeter.
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Attorneys at Law
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Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
21.
Document 1
Filed 03/22/16
Page 7 of 19
Plaintiff also uses a neon sign to promote its bar and restaurant services that
embodies Plaintiffs circular pelican logo. Plaintiffs neon pelican sign features a colorful,
cartoonish line drawing of a pelicans head facing left, positioned inside a bold, contrastinglycolored circle.
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
22.
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Filed 03/22/16
Page 8 of 19
Plaintiff has also used the term PELICAN in connection with the sale of
alcoholic beverages, including beers named Pelican Noir, Golden Pelican, Imperial Pelican
Ale, Macpelicans Ale, and Macpelicans Wee Heavy Ale, and it refers to these and its
other craft beers as the Pelican Brews. Plaintiff has won several awards for its beers sold
under its PELICAN-formative Marks. Plaintiff also frequently sells food items bearing the word
PELICAN, including The Pelican Caesar, and Pelican in a Blanket, in furtherance of its
consistent branding of its establishments and its products with the term PELICAN.
23.
Plaintiff has developed common law rights in the non-registered marks shown in
paragraphs 20 and 21 and discussed in paragraph 22 (the PELICAN Unregistered Marks, and,
collectively with the PELICAN Registered Marks, the PELICAN Marks) based on its actual
use of the marks.
24.
Over the last twenty years, Plaintiff has spent substantial sums promoting its bar
and restaurant services and related goods offered under the PELICAN Marks, and, as a result, a
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
Document 1
Filed 03/22/16
Page 9 of 19
significant portion of Plaintiffs relevant consumer demographic, and especially consumers in the
Pacific Northwest, have come to associate the PELICAN Marks with Plaintiff.
25.
As a result of Plaintiffs continuous and substantially exclusive use of its
PELICAN Marks, and its sales, advertising, and promotional efforts under the PELICAN Marks,
the PELICAN Marks have become closely associated with Plaintiff and are recognized favorably
by Plaintiffs relevant consumer demographic, and especially among consumers in the Pacific
Northwest, as an indicator of source for Plaintiffs bar and restaurant services, craft beers, and
related goods. Accordingly, Plaintiff owns valuable goodwill in connection with its PELICAN
Marks.
Defendants Infringing Use of the PELICAN Marks
26.
On information and belief, Defendants began temporarily operating a pop-up or
traveling restaurant under the name Pelicans Waiting Room (the Infringing Mark) in
Portland, Oregon during the Summer of 2015.
27.
On information and belief, Defendant Pelicans Waiting Room applied for a
Liquor License with the Oregon Liquor Control Commission on or about February 9, 2016, using
the Infringing Mark.
28.
Upon information and belief, Defendants are in the process of opening a bar and
restaurant called Pelicans Waiting Room at 2327 NW Kearney Street, Portland, Oregon
97210. On information and belief, Defendants held a soft opening for their bar and restaurant
featuring the Infringing Mark on or about March 19, 2016. On information and belief,
Defendants plan to hold a grand opening for their bar and restaurant featuring the Infringing
Mark on or about March 22, 2016.
29.
On information and belief, Defendants have also begun using a circular logo,
with the head of a pelican facing left, and with the pelicans beak extending beyond the circles
perimeter in connection with their bar and restaurant services, as shown below:
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
30.
Document 1
Filed 03/22/16
Page 10 of 19
On information and belief, Defendants are using (or plan to use) a neon sign to
promote their bar and restaurant services that embodies (or will embody) the Infringing Logo.
On information and belief, Defendants neon pelican sign features (or will feature) a colorful,
cartoonish line drawing of a pelicans head facing left, positioned inside a bold, contrastinglycolored circle. Defendants neon pelican sign and logo are collectively referred to as the
Infringing Logo.
31.
On information and belief, Defendants bar and restaurant features (or will
feature) alcoholic beverages sold using PELICAN-formative marks confusingly similar to

Plaintiffs PELICAN Marks. Those alcoholic beverages are sold alongside seafood, as well as
other food and beverage items commonly offered in a bar and restaurant, all offered and sold
under the Infringing Mark and/or the Infringing Logo.
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
32.
Document 1
Filed 03/22/16
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On or about February 4, 2016, Defendant Kyle Rourke registered the domain
name www.pelicanswaitingroom.com in his capacity as an individual, and not as an

organization. Upon information and belief, Rourke acquired the domain name to promote the
Pelicans Waiting Room bar and restaurant using PELICAN-formative marks confusingly
similar to Plaintiffs PELICAN Marks. The website associated with the
www.pelicanswaitingroom.com domain name states that it is for Pelicans Waiting Room
located at 2327 Northwest Kearney Street, Northwest District, OR 97210, which is the address of
Defendants bar and restaurant in Portland, Oregon.
33.
Defendant No Comply Food Group, LLC is advertising the Pelicans Waiting
Room bar and restaurant using PELICAN-formative marks confusingly similar to Plaintiffs
PELICAN Marks. For example, on the Instagram webpage for nocomplypdx, an entry reads
nocomplypdx Putting the finishing touches on the menu for our Pelicans #popup. Were getting
excited! Email info@nocomplypdx.com for reservations.
#pdxchefs #portlandnw #pdxnow#localfood #portlandisawesome #cheflife
#thisisgoingtobefun #friedchicken #oysters#bubbly #champagneofbeers #nocomply. The
Instagram webpage for noncomplypdx also displays a photograph of a menu for Pelicans
Waiting Room with No Comply water-marked on the page. It also has menu items for an
alcoholic beverage called Pelicans Punch and a menu item for Pelicans Shooter. A copy of
the nocomplypdx Instagram webpage is attached as Exhibit B.
34.
On or about March 11, 2016, Plaintiff was contacted by the director of the Oregon
Brewers Guild, who indicated that people in the beer and restaurant industries may be
experiencing and/or may be likely to experience confusion between Plaintiffs PELICAN Marks
and Defendants use of the Infringing Mark.
35.
Beginning on or about March 11, 2016, trademark counsel for Plaintiff, Stuart J.
Ford, began contacting Defendants, and later Defendants counsel, via phone to inform them of
Plaintiffs rights in its PELICAN Marks and of Defendants infringement of Plaintiffs rights as a
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Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
Document 1
Filed 03/22/16
Page 12 of 19
result of their use of the Infringing Mark. Despite Plaintiffs requests that Defendants cease and
desist from all further use of the Infringing Mark, Defendants have persisted in their use of the
Infringing Mark, including at the soft opening of their bar and restaurant on March 19, 2016,
notwithstanding their knowledge of Plaintiffs rights in its PELICAN Marks and Plaintiffs
claims that the Infringing Mark infringes the PELICAN Marks.
36.
Plaintiff has senior rights in its PELICAN Marks based on its first use of the
marks in commerce in Oregon and in interstate commerce. Having commenced use of its
PELICAN PUB & BREWERY and PELICAN PUB & BREWERY & Design marks for bar and
restaurant services in Oregon in May 1996, and in U.S. commerce in September 1998, Plaintiffs
use of its PELICAN-formative marks for its bar and restaurant services predates Defendants use
of the Infringing Mark and Infringing Logo by more than 19 years.
37.
The PELICAN Marks and the Infringing Mark are identical and/or nearly
identical in sight, sound, meaning and commercial impression in that the dominant portion of
both marks is the identical and arbitrary term PELICAN. The other visual and phonetic
differences between the PELICAN Marks and the Infringing Mark are not sufficient to avoid a
likelihood of confusion among consumers. Further, given that the dominant portion of the
PELICAN Marks and the Infringing Mark is the identical and arbitrary term PELICAN,
consumers encountering the parties respective marks in the marketplace are likely to deem the
marks as creating an identical commercial impression.
38.
The Infringing Logo is also highly similar in appearance and commercial
impression to the design portion of the PELICAN Marks, as the marks all feature a circular logo
with the head of a pelican facing left, and with the pelicans beak extending beyond the circles
perimeter. As a result, the design portion of the PELICAN Marks and the Infringing Logo look
highly-similar and create the identical commercial impression of a pelican.
39.
Plaintiffs and Defendants bar and restaurant services offered under their
respective marks and logos are identical. Further, the coffee, beer, ale and lager, seafood, and
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Attorneys at Law
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Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
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Page 13 of 19
other items sold under Plaintiffs PELICAN Marks, on information and belief, are identical
and/or closely related to the food and beverage products offered by Defendants at their bar and
restaurant. Accordingly, Plaintiffs goods and services and Defendants goods and services are
identical and/or closely related.
40.
Plaintiff and Defendants market, promote, and/or sell their respective goods
and/or services to the same classes of consumers and in overlapping marketing and trade
channels. For example, both Plaintiff and Defendants advertise, market, and promote their bar
and restaurant services directly to prospective customers through their respective social media
pages, https://www.instagram.com/nocomplypdx/ (Defendants Instagram page) and
https://www.facebook.com/PelicanBrewery (Plaintiffs Facebook page). Likewise, Plaintiffs
establishments and Defendants bar and restaurant have been featured in similar, Portland-based
industry publications. See Exhibits C & D.
41.
Defendants are not authorized licensees of Plaintiff, and Plaintiff has never
authorized or otherwise given Defendants permission to use any form of Plaintiffs PELICAN
Marks.
FIRST CLAIM FOR RELIEF
(Federal Trademark Infringement, 15 U.S.C. 1114(1))
42.
Plaintiff incorporates by reference paragraphs 1 through 41 set forth above.
43.
The U.S. Patent and Trademark Office has granted Plaintiff federal trademark
registrations for the PELICAN Registered Marks. See Exhibit A. Plaintiff owns the exclusive
trademark rights and privileges in and to the PELICAN Marks. Plaintiff uses the PELICAN
Marks as a designation of source and quality for its goods and services.
44.
Defendants have used and are using the Infringing Mark and Infringing Logo in
connection with goods and services in a manner that is likely to confuse, deceive, and cause
mistake among consumers, and therefore infringes Plaintiffs rights in the PELICAN Marks in
violation of 15 U.S.C. 1114.
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Attorneys at Law
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Case 3:16-cv-00486-BR
45.
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Plaintiff has no adequate remedy at law for Defendants infringement of the
PELICAN Marks, in that: (i) the PELICAN Marks are unique and valuable property, injury to
which cannot adequately be compensated by monetary damages; (ii) the infringement injures and
threatens to continue to injure Plaintiffs reputation and goodwill; and (iii) the injury resulting to
Plaintiff from Defendants wrongful conduct, and the conduct itself, are continuing, and Plaintiff
would be required to bring a multiplicity of suits to achieve full redress for the injuries caused
thereby.
46.
Unless restrained, Defendants infringement of the PELICAN Marks will
continue to cause irreparable injury to Plaintiff, both during the pendency of this action and
thereafter. Plaintiff is therefore entitled to an order from this Court under 15 U.S.C. 1116
preliminarily and permanently enjoining Defendants and their agents, employees, and others
acting in concert with them, from directly or indirectly infringing the PELICAN Marks in any
manner, including by using any mark, design, or logo that is confusingly similar to the
PELICAN Marks in connection with the sale, offer for sale, advertising, and/or promotion of bar
and restaurant services, and related goods.
47.
As a direct and proximate result of Defendants conduct, Plaintiff is also entitled
to recover three (3) times its actual damages and the profits wrongfully obtained by Defendants
attributable to the infringement of the PELICAN Marks in an amount to be proven at trial,
pursuant to 15 U.S.C. 1117.
48.
Defendants actions in adopting and using the Infringing Mark and Infringing
Logo in connection with bar and restaurant services which are identical to the bar and restaurant
services offered by Plaintiff under its PELICAN Marks give rise to an inference of intentional,
willful, and malicious intent on the part of Defendants to trade on the goodwill associated with
Plaintiffs PELICAN Marks and to cause confusion, to cause mistake, and to deceive the public
about the source or affiliation of Defendants services, especially in light of the fact that Plaintiff
has previously warned Defendants of its infringing conduct. Accordingly, this is an exceptional
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Attorneys at Law
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Portland, OR 97204
Telephone: 503.222.9981
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Case 3:16-cv-00486-BR
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case under 15 U.S.C. 1117 justifying an award of Plaintiffs reasonable attorneys fees and
costs.
SECOND CLAIM FOR RELIEF
(Federal Unfair Competition, 15 U.S.C. 1125(a))
49.
50.
Defendants use of the Infringing Mark and Infringing Logo in commerce in
connection with the marketing, promotion, sale, and provision of its bar and restaurant services is
likely to cause confusion, mistake, and deception as to the affiliation, connection, or association
of Defendants with Plaintiff, or vice versa, or as to the origin, sponsorship, or approval of
Defendants bar and restaurant services by Plaintiff, or vice versa. Defendants actions therefore
constitute infringement of Plaintiffs PELICAN Marks in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. 1125(a). Defendants actions misrepresent the nature, characteristics,
qualities, and/or origin of Defendants services and commercial activities in violation of 15
U.S.C. 1125(a).
51.
Plaintiff has no adequate remedy at law for the foregoing wrongful conduct of
Defendants, in that: (i) Defendants actions injure and threaten to continue to injure Plaintiffs
unique and valuable property, injury to which cannot adequately be compensated by monetary
damages; (ii) the wrongful acts of Defendants injure and threaten to continue to injure Plaintiff's
reputation and goodwill; and (iii) the injury resulting to Plaintiff from Defendants wrongful
conduct, and the conduct itself, are continuing, and Plaintiff would be required to bring a
multiplicity of suits to achieve full compensation for the injuries caused thereby.
52.
Unless restrained, the foregoing wrongful acts of Defendants will continue to
cause irreparable injury to Plaintiff, both during the pendency of this action and thereafter.
Plaintiff is therefore entitled to an order from this Court under 15 U.S.C. 1116 preliminarily
and permanently enjoining Defendant and their agents, employees, and others acting in concert
with them, from directly or indirectly: (i) selling, offering for sale, advertising, promoting or
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Attorneys at Law
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Portland, OR 97204
Telephone: 503.222.9981
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Case 3:16-cv-00486-BR
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Page 16 of 19
providing any product or service that tends to relate or connect such product or service in any
way to Plaintiff or to any goods or services offered, provided, sold, manufactured, sponsored,
approved by or connected with Plaintiff; or (ii) making any false description or representation of
origin concerning any goods or services offered for sale by Defendants.
53.
As a direct and proximate result of Defendants conduct, Plaintiff is also entitled
to recover three (3) times its actual damages and the profits wrongfully obtained by Defendants
attributable to the infringement in an amount to be proven at trial, pursuant to 15 U.S.C. 1117.
54.
Logo in connection with bar and restaurant services that are identical or nearly identical to the
bar and restaurant services offered by Plaintiff under its PELICAN Marks give rise to an
inference of intentional, willful and malicious intent on the part of Defendants to trade on the
goodwill associated with Plaintiffs PELICAN Marks and to cause confusion, to cause mistake,
and to deceive the public about the source or affiliation of Defendants services, especially in
light of the fact that Plaintiff has previously warned Defendants of its infringing conduct.
Accordingly, this is an exceptional case under 15 U.S.C. 1117 justifying an award of Plaintiffs
reasonable attorneys fees and costs.
THIRD CLAIM FOR RELIEF
(Common Law Trademark Infringement and Unfair Competition)
55.
56.
Defendants are using the Infringing Mark and Infringing Logo in a manner that is
likely to cause confusion, to cause mistake, and to deceive consumers, industry experts, and the
public at large as to the affiliation, connection, or association of Defendants with Plaintiff, or
vice versa, or as to the origin, sponsorship, or approval of Defendants bar and restaurant
services by Plaintiff, or vice versa.
57.
Defendants acts constitute common law trademark infringement and unfair
competition and have created and will continue to create a likelihood of confusion, thereby
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COMPLAINT
PDX\124870\186352\ABO\17882954.5

Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
Document 1
Filed 03/22/16
Page 17 of 19
causing irreparable harm to Plaintiff, including without limitation, injury to its reputation and
business identity, resulting in lost revenue and profits and diminished goodwill and reputation.
Plaintiff has no adequate remedy at law for this injury.
58.
Logo in connection with bar and restaurant services which are identical to the bar and restaurant
services offered by Plaintiff under its PELICAN Marks give rise to an inference of intentional,
willful and malicious intent on the part of Defendants to trade on the goodwill associated with
Plaintiffs PELICAN Marks and to cause confusion, to cause mistake, and to deceive the public
about the source or affiliation of Defendants services, especially in light of the fact that Plaintiff
has previously warned Defendants of its infringing conduct. Accordingly, this is an exceptional
case under 15 U.S.C. 1117 justifying an award of Plaintiffs reasonable attorneys fees and
costs.
59.
As a result of Defendants acts, Plaintiff has been damaged in an amount not yet
determined or ascertainable. At a minimum, Plaintiff is entitled to injunctive relief, to an

accounting of Defendants profits, actual damages, punitive damages, and its costs.
JURY DEMAND
60.
Pursuant to Fed. R. Civ. P. 38(b), Plaintiff hereby demands a trial by jury of all
issues so triable that are raised herein or which hereinafter may be raised in this action.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for judgment against Defendants as follows:
1.
That Defendants, their officers, directors, agents, servants, affiliates, employees,
successors, assigns, parent and subsidiary companies, and representatives, and all those acting in
privity or in concert or participation with Defendants, be preliminarily and permanently enjoined
and restrained from directly or indirectly:
a.
Affixing, applying, annexing, or using in connection with the advertising,
promotion, sale, or offering of bar or restaurant services, and/or related goods, the Infringing
Page 17 -
COMPLAINT
PDX\124870\186352\ABO\17882954.5

Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
Document 1
Filed 03/22/16
Page 18 of 19
Mark, the Infringing Logo, any mark consisting of or including the term PELICAN, any mark
consisting of or including the image of a pelican, any mark confusingly similar to Plaintiffs
PELICAN Marks, or any other marks that might tend to falsely describe or represent such goods
or services as being those of Plaintiff;
b.
Performing any actions or using any trademarks, service marks, or other
words, names, titles, designs, or logos that are likely to cause confusion, to cause mistake, to
deceive, or to otherwise mislead the trade or public into believing that Defendants bar and
restaurant services are sponsored by, affiliated with, or in any way connected to Plaintiff and/or
vice versa;
c.
Using any trademarks, service marks, or other words, names, titles,
designs, or logos or engaging in any other conduct that creates a likelihood of injury to the
business reputation of Plaintiff or a likelihood of misappropriating Plaintiffs distinctive
trademarks and the goodwill associated therewith;
d.
Further infringing Plaintiffs PELICAN Marks, and/or damaging
Plaintiffs goodwill; and

e.
Engaging in any business practices, including those complained of herein,
which unfairly compete with or injure Plaintiff, its business, or the goodwill appertaining thereto.
2.
An award of compensatory damages, including consequential, and incidental
damages, in favor of Plaintiff and against Defendants in an amount to be proven at trial.

3.
An award of enhanced damages or lost profits, whichever is proven to be greater,
in favor of Plaintiff and against Defendants, pursuant to 15 U.S.C. 1117, Oregon State common
law, and as otherwise provided by law.
4.
An accounting and award to Plaintiff and against Defendants of all Defendants
profits, gains, or unjust enrichment in an amount to be proven at trial.
Page 18 -
COMPLAINT
PDX\124870\186352\ABO\17882954.5

Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
Case 3:16-cv-00486-BR
5.
Document 1
Filed 03/22/16
Page 19 of 19
An accounting of all of Defendants receipts and disbursements, profit and loss
statements, and other financial materials, statements, and books relating to Defendants
marketing, distribution, sale, and provision of its bar and restaurant services.
6.
An award of Plaintiffs litigation expenses, including reasonable attorneys fees
and costs, pursuant to 15 U.S.C. 1117.

7.
An award of pre- and post-judgment interest at the maximum rate allowed by law.
8.
That Defendants be directed to file with the Court and serve upon Plaintiff within
thirty (30) days after the issuance of any injunction a written report, under oath, setting forth in
detail the manner and form in which Defendants have complied with the injunction
9.
That the Court grants Plaintiff such other relief as it deems just and proper.
DATED: March 22, 2016

Respectfully submitted,
By:
/s/ Michael A. Cohen __________________

Michael A. Cohen, OSB #965776
Email: mcohen@schwabe.com
Nicholas (Nika) F. Aldrich, Jr., OSB
#160306
Email: naldrich@schwabe.com
Alexandra J. Bodnar, OSB #133058
Email: abodnar@schwabe.com
SCHWABE, WILLIAMSON & WYATT,
P.C.
Portland, OR 97204
Telephone: 503.222.9981
Facsimile: 503.796.2900
Attorneys for Plaintiff Pelican Brewing
Company
Page 19 -
COMPLAINT
PDX\124870\186352\ABO\17882954.5

Attorneys at Law
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Pelican Brewing Company Complaint

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Pelican Brewing Company Complaint

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Case 3:16-cv-00486-BR

Michael A. Cohen, OSB #965776

PELICAN BREWING COMPANY, an

(Federal Trademark Infringement, Federal

SCHWABE, WILLIAMSON & WYATT, P.C.

NATURE OF THE CASE

Defendants are infringing upon Plaintiffs PELICAN-formative marks by opening

By way of this lawsuit, Plaintiff seeks: (i) an injunction enjoining Defendants

Plaintiff Pelican Brewing Company is a corporation duly organized and existing

SCHWABE, WILLIAMSON & WYATT, P.C.

Upon information and belief, Defendant No Comply Food Group, LLC is a

Upon information and belief, Defendant Kyle Rourke is an individual residing in

SCHWABE, WILLIAMSON & WYATT, P.C.

Venue is proper in this judicial district under 28 U.S.C. 1391(b)(2) because a

Venue is also proper in this judicial district under 28 U.S.C. 1391(b)(1),

Founded in 1995, Plaintiff is in the business of providing bar and restaurant

In addition to marketing, advertising, and/or selling its goods and services

SCHWABE, WILLIAMSON & WYATT, P.C.

business through word-of-mouth, its Facebook page, located at

without limitation, the following:

U.S. App. No.

PELICAN PUB &

U.S. Reg. No.

PELICAN PUB &

February 14, 2012

PELICAN PUB &

July 30, 2013

May 14, 2013

February 28, 2012

February 28, 2012

March 11, 2014

SCHWABE, WILLIAMSON & WYATT, P.C.

January 10, 2011

February 28, 2012

May 17, 2011

December 19, 2012

February 28, 2013

August 13, 2013

SCHWABE, WILLIAMSON & WYATT, P.C.

SCHWABE, WILLIAMSON & WYATT, P.C.

SCHWABE, WILLIAMSON & WYATT, P.C.

As a result of Plaintiffs continuous and substantially exclusive use of its

On information and belief, Defendants began temporarily operating a pop-up or

On information and belief, Defendant Pelicans Waiting Room applied for a

SCHWABE, WILLIAMSON & WYATT, P.C.

feature) alcoholic beverages sold using PELICAN-formative marks confusingly similar to

SCHWABE, WILLIAMSON & WYATT, P.C.

On or about February 4, 2016, Defendant Kyle Rourke registered the domain

name www.pelicanswaitingroom.com in his capacity as an individual, and not as an

Defendant No Comply Food Group, LLC is advertising the Pelicans Waiting

SCHWABE, WILLIAMSON & WYATT, P.C.

The Infringing Logo is also highly similar in appearance and commercial

SCHWABE, WILLIAMSON & WYATT, P.C.

Plaintiff incorporates by reference paragraphs 1 through 41 set forth above.

SCHWABE, WILLIAMSON & WYATT, P.C.

Plaintiff has no adequate remedy at law for Defendants infringement of the

Unless restrained, Defendants infringement of the PELICAN Marks will

As a direct and proximate result of Defendants conduct, Plaintiff is also entitled

SCHWABE, WILLIAMSON & WYATT, P.C.

Plaintiff incorporates by reference paragraphs 1 through 48 set forth above.

Defendants use of the Infringing Mark and Infringing Logo in commerce in

Unless restrained, the foregoing wrongful acts of Defendants will continue to

SCHWABE, WILLIAMSON & WYATT, P.C.

As a direct and proximate result of Defendants conduct, Plaintiff is also entitled