Case 3:13-cv-01784-BR

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Kevin M. Hayes, OSB #012801 Email: kevin.hayes@klarquist.com KLARQUIST SPARKMAN, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 Telephone: 503-595-5300 Facsimile: 503-595-5301 Attorneys for Plaintiff HINRICHS, PROUDFOOT AND SKOV, INC.

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON EUGENE DIVISION

HINRICHS, PROUDFOOT AND SKOV, INC., a Delaware Corporation Plaintiff, v. MCBASSI AND COMPANY, INC., a Maryland Corporation, Defendant.

Civil No. _________

COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION JURY TRIAL DEMANDED

COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

Case 3:13-cv-01784-BR

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Plaintiff Hinrichs, Proudfoot and Skov, Inc., doing business as Good Company, through its attorneys, complains of Defendant McBassi & Company, Inc. (“McBassi”) and alleges as follows, upon knowledge with respect to itself and its own acts, and upon information and belief as to all other matters: I. THE GOOD COMPANY MARK AND THE NATURE OF THE ACTION 1. Good Company owns the mark GOOD COMPANY and has been using

the mark for over a decade for its business consultation services. 2. Good Company also owns the design mark shown below and has been

using that mark for over a decade for its business consultation services:

3.

Good Company owns Federal Trademark Registration No. 4294238 for

the GOOD COMPANY design mark shown in Paragraph 2 for “[b]usiness consultation services related to an organization's environmental planning performance and sustainable development performance.” 4. Defendant, McBassi, is using the mark GOOD COMPANY in connection

with providing business consultation services. 5. Defendant is selling GOOD COMPANY marked products in Eugene,

Oregon, as shown in the screen capture from the UO Bookstore copied below.

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6.

Defendant also is offering for sale GOOD COMPANY marked products

all over the country to any person with Internet access, including in Oregon and Eugene, Oregon, through its own bookstore at http://mcbassi.com/store-3/, as shown in the screen capture from the Defendant’s website at McBassi.com shown below:

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7.

Defendant is advertising its GOOD COMPANY services all over the

country on You Tube, as shown below

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8.

Defendant also is attempting to register with the United States Patent and

Trademark Office nationwide rights in the mark GOOD COMPANY INDEX in Application No. 85411715 for “[p]roviding independent ratings and reviews of other businesses for commercial purposes.” 9. Defendant advertises having presented at one or more conferences in

Oregon in its list of “Selected Past Presentation” on its website at www.mcbassi.com. 10. Good Company brings this suit to stop McBassi from causing confusion

with Good Company’s senior GOOD COMPANY trademark.

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II.

THE PARTIES 11. Plaintiff Good Company is a Delaware corporation operating in the state

of Oregon with its principal place of business at 65 Centennial Loop #B Eugene, Oregon, 97401. Good Company is located and does business within this judicial district. 12. Defendant McBassi is a Maryland corporation with a principal place of

business in Golden, Colorado. McBassi is doing business in this judicial district. III. JURISDICTION AND VENUE 13. This Court has jurisdiction over the subject matter of this action because

this action arises under the Federal Trademark Act, 15 U.S.C. §§ 1051-1127, jurisdiction being conferred in accordance with 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338. Supplemental jurisdiction over the causes of action under Oregon state law is proper as those causes of action are substantially related to the causes of action over which the Court has original jurisdiction, pursuant to 28 U.S.C. §§ 1338(b) and 1367. Venue is proper under 28 U.S.C. §§ 1391(b) in that Defendant is doing and transacting business within this judicial district and has committed acts complained of herein in this judicial district (or those acts have been aimed at and felt within this judicial district). IV. THE FACTS 14. McBassi uses GOOD COMPANY for its business consultation services

as shown in the screen capture below from McBassi’s website at http://www.goodcompanyindex.com/services/:

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15.

McBassi uses the mark GOOD COMPANY in connection with offering

business consultation services to third parties. 16. McBassi also uses the mark GOOD COMPANY INDEX for providing

independent ratings and reviews of other businesses for commercial purposes. 17. McBassi’s trademark application for GOOD COMPANY INDEX has

been refused by the United States Patent and Trademark Office over Good Company’s Registration No. 4294238 for the GOOD COMPANY design mark. 18. On information and belief, McBassi is aware of Good Company’s GOOD

COMPANY trademark. 19. Despite being aware of Good Company’s GOOD COMPANY mark, and

even being refused registration by the United States Patent and Trademark Office in view COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION Page 6

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of Good Company’s GOOD COMPANY mark, McBassi continues to use GOOD COMPANY and GOOD COMPANY INDEX. 20. McBassi’s actions are knowing, willful, and without Plaintiff’s

authorization. Defendants are liable for the resulting acts of unfair competition, and trademark infringement. V. CAUSES OF ACTION A. 21. Unfair Competition Good Company repeats and re-alleges each and every allegation contained

in the above paragraphs of this Complaint as though fully set forth herein. 22. This cause of action for unfair competition arises under Section 43(a)(1) of

the Lanham Act, 15 U.S.C. § 1125 (a)(1), and Oregon state common law. 23. Defendant’s use of the GOOD COMPANY and GOOD COMPANY

INDEX in commerce as alleged hereinabove is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of Defendant with Plaintiff Good Company or as to the origin, sponsorship, or approval of the products and services of Defendant and those of Plaintiff Good Company, and misrepresents the nature, characteristics, and qualities of these products and services. 24. The acts of Defendant constitute unfair competition in violation of Section

43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a)(1), and unfair competition under Oregon common law. 25. Good Company is without an adequate remedy at law because Defendant’s

unfair competition is causing irreparable injury to Good Company, and unless said acts are

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enjoined by this Court, they will continue and Good Company will continue to suffer irreparable injury. 26. Defendant’s acts of unfair competition, if not enjoined, will cause Good

Company to sustain monetary damages, loss, and injury. B. 27. Trademark Infringement Good Company repeats and realleges each and every allegation contained

in the above paragraphs of this Complaint as though fully set forth herein. 28. The acts of Defendant constitute trademark infringement in violation of 15

U.S.C. § 1114(1)(a) and Oregon common law. 29. Defendant’s use of the GOOD COMPANY and GOOD COMPANY

INDEX as alleged hereinabove is likely to cause confusion, mistake, or deception as to the source, sponsorship, or approval of the products and services of Defendant in that others are likely to believe that Defendant’s services are in some way legitimately connected with, sponsored or licensed by, or otherwise related to Good Company. 30. Defendant’s use of the GOOD COMPANY and GOOD COMPANY

INDEX was made with actual or constructive knowledge of Good Company’s rights in GOOD COMPANY. 31. Defendant’s use of the GOOD COMPANY and GOOD COMPANY

INDEX is without Good Company’s consent or permission. 32. Defendants’ acts of trademark infringement, unless enjoined, will cause

Good Company to sustain monetary damages, loss, and injury.

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PRAYER FOR RELIEF WHEREFORE, Plaintiff Good Company prays that, pursuant to 15 U.S.C. §§ 1116 to 1125 and Oregon state law: A. The Court finds that Good Company owns valid and subsisting trademark

rights in GOOD COMPANY and

. B. Complaint. C. The Court grant an injunction that Defendant, its affiliated companies, and Defendant be held liable under each claim for relief set forth in this

its/their agents, servants, employees, and attorneys, and all other persons in active concert or participation with them, be enjoined from using GOOD COMPANY (however spelled or punctuated, whether capitalized, abbreviated, singular or plural, printed or stylized, whether alone or in combination with any word(s), punctuation or symbol(s), and whether used in caption, text, orally or otherwise), or any other reproduction, counterfeit, copy, colorable imitation or confusingly similar variation of GOOD COMPANY, as a trademark or service mark, trade name or domain name, or in advertising, distribution, sale, or offering for sale of consulting services. D. The Court order as part of the injunction that Defendant withdraw its

trademark application that comprises GOOD COMPANY.

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E.

The Court order as part of the injunction and pursuant to 15 U.S.C.

§ 1116(a) that Defendant file with the Court and serve on Plaintiff within thirty days after the service on the Defendant of the injunction, a report in writing under oath setting forth in detail the manner and form in which the Defendant has complied with the injunction. F. Defendant be required to pay to Good Company profits made in

connection with its use of GOOD COMPANY and/or GOOD COMPANY INDEX, pursuant to 15 U.S.C. § 1117 and the equity powers of this Court. G. Defendant be required to pay to Good Company its reasonable attorneys’

fees and disbursements incurred herein, pursuant to 15 U.S.C. § 1117 and the equity powers of this Court. H. I. Defendant be required to pay Good Company the costs of this action. The Court award Good Company such other and further relief as this

Court deems just and equitable. J. Jury trial is demanded. Respectfully submitted,

Dated: October 7, 2013

By:

_s/ Kevin M. Hayes______________ Kevin M. Hayes, OSB #012801 Email: kevin.hayes@klarquist.com 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 Telephone: 503-595-5300 Facsimile: 503-595-5301 Attorneys for Plaintiff HINRICHS, PROUDFOOT AND SKOV, INC.

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