Case 3:13-cv-00451-HU

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CHARLES H. DEVOE, OSB No. 932531 E-mail: chuck@khpatent.com THOMAS J. ROMANO, OSB No. 053661 E-mail: tromano@khpatent.com KOLISCH HARTWELL, P.C. 520 S.W. Yamhill Street, Suite 200 Portland, Oregon 97204 Telephone: (503) 224-6655 Facsimile: (503) 972-9115 Attorneys for Plaintiff

UNITED STATES DISTRICT COURT DISTRICT OF OREGON PORTLAND DIVISION THE COAST DISTRIBUTION SYSTEM INC., a Delaware corporation, Plaintiff, v. EZRA DISTRIBUTING, INC., an Indiana corporation, and EZRA RETAIL LLC, an Indiana limited liability company, Defendants. Case No. 3:13-cv-00451 COMPLAINT FOR TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1121 DEMAND FOR JURY TRIAL

For its complaint, Plaintiff The Coast Distribution System Inc. (“COAST”) alleges as follows: NATURE OF THE CASE 1. This is a civil action pursuant to 15 U.S.C. § 1121 for Trademark Infringement,

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2.

COAST seeks relief for violations of the Lanham Act, as well as state common

law trademark infringement, unfair competition, and dilution. 3. COAST brings this lawsuit to protect the substantial good will that it and its

predecessors in interest have developed since at least as early as 1988 in its distinctive HUSKY and related marks, for trailer hitches and trailer-related goods. JURISDICTION AND VENUE 4. This court has subject matter jurisdiction over this action under 15 U.S.C. § 1121

and 28 U.S.C. §§ 1331 and 1338 because it involves substantial claims arising under the Lanham Act. 5. The court has supplemental jurisdiction over COAST’s state law claims under 28

U.S.C. § 1367. 6. Upon information and belief, the defendants have been marketing products within

this district, and are therefore subject to personal jurisdiction in this district. 7. Venue is proper in this court pursuant to 28 U.S.C. § 1391 as the defendants

may be found or transact affairs in this district and the claims alleged arose and are continuing to occur in this district. THE PARTIES 8. Plaintiff The Coast Distribution System, Inc. (“COAST”) is a Delaware corporation

having its corporate headquarters at 350 Woodview Avenue, Morgan Hill, California 95037. 9. Plaintiff COAST is one of North America’s largest wholesale aftermarket

suppliers of replacement parts, supplies and accessories for the recreational vehicle (RV), pleasure boat and outdoor recreation markets.

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Plaintiff COAST has a major operations center, including research and

development facilities, and a regional warehouse and distribution center, at 7930 SW Burns Way, Wilsonville, Oregon 97070. 11. Plaintiff COAST has a major operations center, including design, testing and

training facilities at 524 Pine Creek Court, Elkhart, Indiana 46516, and a regional warehouse and distribution center, at 3002 Coast Court, Elkhart, Indiana 46514. 12. Upon information and belief, Defendant Ezra Distributing, Inc. is an Indiana

corporation having its corporate headquarters at 3495 Kent Avenue Suite L100, West Lafayette, Indiana 47906. 13. Upon information and belief, Defendant Ezra Distributing, Inc. operates an

Internet website at http://www.bdawgcarriers.com/. 14. Upon information and belief, Defendant Ezra Retail LLC is an Indiana limited

liability company having its corporate headquarters at 3495 Kent Avenue Suite L100, West Lafayette, Indiana 47906. 15. Upon information and belief, HITCHCARRIERS.COM is an assumed business

name for Defendant Ezra Retail LLC. 16. Upon information and belief, Defendant Ezra Retail LLC operates an Internet

website at http://www.hitchcarriers.com/. 17. The defendants are referred to in this complaint collectively as EZRA. FEDERAL TRADEMARK REGISTRATIONS 18. Plaintiff COAST owns registered U.S. Trademark Registration Nos. 1,474,896;

3,511,762; 1,474,895; and 3,511,763.

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19.

U.S. Trademark Registration No. 1,474,896 is shown in Exhibit 1, along with a

copy of renewal information, for the mark HUSKY for us use e on trailer hitches. 20. U.S. Trademark Registration No. 3,511,762 is shown in Exhibit 2, for the mark

HUSKY for use on trailer electrical accessories, namely, electronic brake controls, electrical trailer connectors, electrical adapters for trailers, electri electric c tail light converters, tail light isolators, and trailer wiring harnesses. 21. U.S. Trademark Registration No. 1,474,895 is shown in Exhibit 3, along with a , for use on

copy of renewal information, for a design mark showing a husky dog, trailer hitches. 22.

U.S. S. Trademark Registration No. 3,511,763 is shown in Exhibit 4, for a design , for use on trailer electrical accessories, namely,

mark showing a husky dog,

electronic brake controls, electrical trailer connectors, electrical adapters for trailers, electric tail light converters, tail light isolators, and trailer wiring harnesses. FACTUAL BACKGROUND 23. Since at least as early as 1988, COAST (through its predecessor in interest, EazEaz

lift Spring Corporation) has been continuously engaged in selling and offering to t sell its trailer hitches and trailer-related related goods under the distinctive trademark HUSKY, and design mark showing a husky dog, 24. .

Upon information and belief, EZRA markets and sells hitch hitch-mounted mounted carriers and

hitch-mounted mounted carriers that include a trailer hitch, as shown collectively in Exhibit 5, under one or more marks including HUSKY, HUSKEE, and HUSKEEBEE.

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25.

The good will and reputation for quality that COAST has worked so hard to

cultivate has been threatened by EZRA’s actions. 26. Upon information and bel belief, EZRA has used and continues to use the marks

HUSKY, HUSKEE, and HUSKEEBEE to sell related and competing goods to many of the same consumer markets served by COAST. 27. Upon information and belief, u unless nless EZRA is enjoined from using any of the

marks HUSKY, , HUSKEE, and HUSKEEBEE, such use will continue to cause consumer confusion and will continue to cause irreparable harm to COAST. 28. This action seeks injunctive relief, damages, and other appropriate relief arising

from EZRA’s willful acts of trademark infri infringement, ngement, unfair competition, and dilution. COUNT 1: FEDERAL TRA TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION IN VIOLA VIOLATION OF THE LANHAM ACT 29. COAST repeats and realleges each of the allegations set forth in the preceding

paragraphs as if fully set forth herein herein. 30. 31. EZRA has no license or authority from COAST to use the HUSKY mark. The HUSKY, HUSKEE, and HUSKEEBEE marks are confusingly similar to

Plaintiff’s HUSKY marks. 32. The HUSKY, HUSKEE, and HUSKEEBEE marks are confusingly similar to .

Plaintiff’s design marks showi showing a husky dog, 33.

By reason of the foregoing, EZRA is using the HUSKY, HUSKEE, and

HUSKEEBEE marks in connection with the sale, offering for sale, distribution, and advertising of goods in commerce in a manner likely to cause confusion, mistake, or deception.

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34.

By reason of the foregoing, EZRA has violated sections 32(1) and 43(a) of the

Lanham Act (15 U.S.C. §§ 1114(1) and 1125(a)). 35. Plaintiff’s HUSKY marks and design marks showing a husky dog, , are

inherently distinctive as applied to COAST’s goods that b bear ear those marks. 36. Notwithstanding COAST’s established rights, upon information and belief, EZRA

adopted and used the confusingly similar HUSKY, HUSKEE, and HUSKEEBEE marks in interstate commerce in connection with the sale and offering for sale of hitch-mounted carriers and hitch-mounted mounted carriers that include a trailer hitch. 37. Upon information and belief, EZRA promotes its goods in some of the same

channels, and to some of the same consumers as does COAST. 38. Without COAST’s consent, EZRA has used the HUSKY, HUSKEE, HUS and

HUSKEEBEE marks in connection with the sale, offering for sale, distribution, or advertising of its goods. 39. Upon information and belief, EZRA has engaged in this infringing activity despite

having actual knowledge of COAST’s use of the HUSKY marks and the design marks showing a husky dog, 40. .

EZRA’s actions are likely to lead the public to conclude incorrectly that its goods

originate with or are authorized by COAST, which will damage both COAST and the public. 41. 42. Upon information and belief, EZRA’s act actions ions are intended to enrich EZRA. Upon information and belief, EZRA has advertised and offered its goods for sale

using the HUSKY, HUSKEE, and HUSKEEBEE marks with the intention of misleading,

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deceiving, or confusing consumers as to the origin of its goods and of trading on COAST’s reputation and good will. 43. EZRA’s unauthorized use of the HUSKY, HUSKEE, and HUSKEEBEE marks in

interstate commerce as described above constitutes trademark infringement and unfair competition under 15 U.S.C. §§ 1114(1) and 1125(a) and is likely to cause consumer confusion, mistake, or deception. 44. EZRA’s unauthorized marketing and sale of its goods in interstate commerce

using its HUSKY, HUSKEE, and HUSKEEBEE constitutes use of a false designation of origin or false representation that wrongfully and falsely designates EZRA’s goods as originating from or connected with COAST, and constitutes the use of false descriptions or representations in interstate commerce in violation of 15 U.S.C. §§ 1114(1) and 1125(a). 45. As a direct and proximate result of EZRA’s trademark infringement and acts of

unfair competition, COAST has suffered irreparable harm to its business and reputation, and also has suffered and continues to suffer damages in an amount to be determined by the trier of fact. 46. As a direct and proximate result of EZRA’s trademark infringement and acts of

unfair competition, EZRA has unjustly profited from those acts. 47. EZRA’s trademark infringement and acts of unfair competition will cause further

irreparable injury to COAST if EZRA is not restrained by this Court from further violation of COAST’s rights. 48. COAST has no adequate remedy at law.

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49.

EZRA’s activities have caused confusion or are likely to cause confusion among

COAST’s customers and potential customers. 50. Upon information and bel belief, ief, EZRA’s activities are deliberate and willful. COUNT 2: COMMON LAW TRADEMARK INFRINGEMENT, NT, UNFAIR COMPETITION, AND DIL DILUTION 51. COAST repeats and realleges each of the allegations set forth in the preceding

paragraphs as if fully set forth herein. 52. EZRA’s use of the HUSKY, HUSKEE, and HUSKEEBEE marks for its goods

constitutes infringement of COAST’s common law HUSKY marks and design marks showing a husky dog, States. 53. EZRA’s use of the HUSKY, HUSKEE, and HUSKEEBEE marks for its goods under the law laws of Oregon, California, Indiana and other

constitutes unfair competition under the law laws of Oregon, , California, Indiana and other States. 54. EZRA’s use of the HUSKY, HUSKEE, and HUSKEEBEE marks for its goods

constitutes dilution of the distinctive quality of COAST’s registered egistered and common law HUSKY marks and design marks showing a husky dog, PRAYER FOR RELIEF In view of the foregoing, plaintiff COAST respectfully requests that this Court grant relief as follows: A. That, pursuant to Rule 65 of the Federal Rules of Civil Procedure and 15 .

U.S.C. § 1116, EZRA, its officers, agents, servants, employees, attorneys, successors, and/or assigns, and all other persons in active concert or participation with any of them

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be preliminarily and permanently enjoined from (1) using the words HUSKY, HUSKEE, and HUSKEEBEE in connection with hitch-mounted carriers and hitch-mounted carriers that include a trailer hitch, including but not limited to any use as all or part of the trademark or name for hitch-mounted carriers and hitch-mounted carriers that include a trailer hitch and (2) continuing any and all acts of unfair competition as herein alleged. B. That EZRA be ordered pursuant to Rule 65 of the Federal Rules of Civil

Procedure and 15 U.S.C. § 1118, to recall from all retailers and distributors and to deliver up for impounding all goods or materials bearing the words HUSKY, HUSKEE, and HUSKEEBEE as all or part of a name or mark. C. That, pursuant to 15 U.S.C. § 1116(a), EZRA be required to file with the Court

and serve on COAST within thirty (30) days after entry of the injunction a report in writing under oath setting forth in detail the manner and form in which EZRA has complied with the injunction. E. That, pursuant to 15 U.S.C. § 1119, the Director of the U.S. Patent and

Trademark Office be enjoined from issuing to EZRA any registration for the HUSKY, HUSKEE, and HUSKEEBEE mark or any combination of words or symbols that would create a likelihood of confusion, mistake, or deception with COAST’s marks. F. That, pursuant to 15 U.S.C. § 1117, COAST be awarded up to three times

EZRA’s profits or COAST’s damages, in an amount to be determined at trial, together with prejudgment interest. G. That COAST be awarded its damages pursuant to the common law.

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H.

That this be declared to be an "exceptional case" under Section 35(a) of the

Lanham Act, 15 U.S.C. § 1117, and that COAST be awarded its reasonable attorneys’ fees and full costs. I. That COAST be awarded any other remedy to which it may be entitled pursuant

to the Lanham Act and Oregon, California, and Indiana statutory and common law. J. For such other and further relief as the Court deems just and proper. DEMAND FOR JURY TRIAL Plaintiff COAST hereby demands a trial by jury.

DATED this 15th day of March, 2013. Respectfully submitted, KOLISCH HARTWELL, P.C. By s/ Charles H. DeVoe CHARLES H. DEVOE, OSB No. 932531 E-mail: chuck@khpatent.com 520 S.W. Yamhill Street, Suite 200 Portland, Oregon 97204 Telephone: (503) 224-6655 Facsimile: (503) 972-9115 Of Attorneys for Plaintiff

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