DWT 24122141v2 0086500-000038

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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
DAVIS WRIGHT TREMAINE LLP
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
DAVIS WRIGHT TREMAINE LLP
1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
Telephone: (503) 778-5311
Facsimile: (503) 778-5299

Attorneys for Plaintiff iovation, Inc.




IN THE UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
AT PORTLAND

IOVATION, INC., a Delaware corporation,

Plaintiff,

v.

IOVATIONS, INC, a Massachusetts
corporation,

Defendant.

Case No.

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

DEMAND FOR JURY TRIAL

Plaintiff, iovation, Inc. (“iovation”), by and through its undersigned counsel, makes the
following allegations for its Complaint against Defendant, IOvations, Inc. (“IOvations”). These
allegations are made upon knowledge with respect to iovation and its own acts, and upon
information and belief as to all other matters.
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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
I. PARTIES
1. iovation is a corporation duly organized and existing under the laws of the State
of Delaware and having its principal place of business at 111 SW Fifth Avenue, Suite 3200,
Portland, Oregon. iovation is a leader in online security and fraud prevention.
2. IOvations is a corporation organized under the laws of the State of Massachusetts.
Upon information and belief, its principal place of business is 26 Ray Avenue, Burlington,
Massachusetts.
II. JURISDICTION AND VENUE
3. This is an action for trademark infringement, false designation of origin, and
unfair competition 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), 1338(b) (related claims of unfair competition),
and 1367 (supplemental jurisdiction), and 15 U.S.C. § 1121 (Lanham Act actions).
4. IOvations is subject to personal jurisdiction in this judicial district because, with
knowledge of iovation’s superior trademark rights, it has committed acts of trademark
infringement, false designation of origin, and unfair competition that it knows or should
reasonably foresee will cause harm to iovation in this judicial district.
5. Venue is proper in this district under 28 U.S.C. § 1391.
III. IOVATION’S RIGHTS IN THE IOVATION TRADE NAME AND TRADEMARKS
6. iovation is a leader in online security and fraud prevention services. iovation sells
computer security and fraud prevention services to customers nationwide and throughout the
world.
7. iovation has used the term IOVATION as a trade name and trademark since at
least as early as June 1, 2004 and has spent considerable amounts promoting and protecting the
IOVATION mark. iovation owns U.S. Trademark Registration No. 3,313,470, for IOVATION
for “fraud detection software” and for “computer services, namely acting as an application
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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
service provider by hosting computer software applications for fraud detection; computer
software development; and installation and maintenance of fraud detection software” in
International Classes 9 and 42, respectively. This registration is valid, subsisting, and
incontestable under the provisions of the Lanham Act, 15 U.S.C. § 1065 and, together with
iovation’s common law rights in the IOVATION mark, is referred to as the “IOVATION
Trademark.” A copy of U.S. Trademark Registration No. 3,313,470 is attached as Exhibit A.
8. iovation owns the domain <iovation.com> and has a website at
www.iovation.com that promotes iovation’s goods and services.
9. IOVATION is an arbitrary or fanciful mark with respect to the goods and services
with which iovation uses it, and thus is a strong mark.
10. As a result of iovation’s long history—as well as the quality of the computer
security and fraud prevention services iovation sells—the IOVATION Trademark is widely
recognized throughout the United States, and elsewhere in the world. The consuming public has
come to rely upon and look for the IOVATION Trademark to identify computer security and
fraud prevention services originating from iovation. As a consequence, the IOVATION
Trademark symbolizes valuable goodwill and reputation.
IV. IOVATIONS’ INFRINGING ACTIVITIES
11. Upon information and belief, IOvations was organized on July 12, 2004. Upon
information and belief, IOvations first limited the services it offered under the IOVATIONS
mark to digital data storage solutions. More recently, however, IOvations has expanded the
services it offers under the mark to include computer “network and security solutions.”
12. IOvations promotes its products and services through its website at
www.iovations.com, the name of which mimics that of iovation’s website, www.iovation.com.
13. IOvations offers computer security services and products in interstate commerce
under the IOVATIONS mark that are identical or closely related to the computer security and
fraud prevention services that iovation offers under the IOVATION Trademark. Consumers
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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
would reasonably expect the goods and services that iovation and IOvations offer under the
IOVATION and IOVATIONS marks to come from the same source.
14. IOvations sells its goods and services through marketing channels that are the
same as or closely similar to the marketing channels through which iovation sells its goods and
services. IOvations sells its goods and services to the same classes of consumers to which
iovation sells its goods and services. The individuals employed by customers and prospective
customers who are likely to make decisions as to whether to purchase IOvations’ goods and
services are the same individuals who are likely to make decisions as to whether to purchase
iovation’s goods and services.
15. IOvation’s use of the IOVATIONS marks has already caused actual confusion
with iovation and its IOVATION Trademark. Given the similarity, both visually and aurally,
between the IOVATION and IOVATIONS trademarks, the closely-related goods and services
that iovation and IOvations sell, 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.
16. On August 22, 2013, counsel for iovation wrote to IOvations demanding that it
immediately cease using the infringing IOVATIONS mark and take down its website at
www.iovations.com. IOvations has refused to do so, and continues to engage in its infringing
conduct.
V. THE HARM TO IOVATION AND THE PUBLIC CAUSED BY IOVATIONS
17. IOvations’ unlawful infringement of the IOVATION Trademark has caused
irreparable harm to iovation’s reputation and goodwill. iovation will continue to suffer
irreparable injury to its reputation and goodwill unless IOvations is enjoined from continuing the
conduct complained of, which injury cannot be adequately compensated monetarily. As long as
IOvations is allowed to continue the acts complained of, iovation’s reputation will continue to be
damaged.
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DWT 24122141v2 0086500-000038
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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
18. Upon learning of IOvations’ infringing activity, iovation took immediate steps to
notify IOvations of its infringement and to seek IOvations’ help in mitigating damages.
IOvations refused to cooperate with iovation’s requests, and instead continued to market
computer security services under its confusingly-similar IOVATIONS mark.
COUNT 1
FEDERAL TRADEMARK INFRINGEMENT
19. iovation realleges all preceding allegations of this Complaint as if stated herein.
20. IOvations’ actions described herein constitute infringement of iovation’s
federally-registered IOVATION Trademark, in violation of the Lanham Act, 15 U.S.C. §§ 1114
through 1118.
21. IOvations’ actions have been willful and intentional, making this an exceptional
case pursuant to 15 U.S.C. § 1117.
COUNT 2
FALSE DESIGNATION OF ORIGIN UNDER THE LANHAM ACT
22. iovation realleges all preceding allegations of this Complaint as if stated herein.
23. IOvations’ actions described above are likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation, connection, or association of IOvations with iovation,
or as to the origin, sponsorship, or approval of IOvations’ goods, services, or commercial
activities by iovation, in violation of the Lanham Act, 15 U.S.C. § 1125(a).
24. IOvations’ 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
25. iovation realleges all preceding allegations of this Complaint as if stated herein.
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DWT 24122141v2 0086500-000038
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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
26. IOvations’ 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 iovation prays for relief against Defendant IOvations as follows:
1. Entry of preliminary and permanent injunctions enjoining IOvations and its
servants, agents, employees, successors and assigns, and all persons acting in concert with them,
from using in any manner the IOVATION trade name or trademark or any other trade name or
trademark confusingly similar to the IOVATION Trademark, including but not limited to use of
the domain <iovations.com>;
2. Ordering IOvations to transfer to iovation the registration for the domain
<iovations.com>;
3. Ordering IOvations to deliver up to iovation 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 IOVATION trade name or trademark; the IOVATION
Trademark, any colorable imitations thereof, or any marks or trade dress confusingly similar to
the IOVATION Trademark; or which contain any false or misleading representation of fact;
4. Ordering IOvations to file with this Court and serve on iovation’s counsel within
thirty (30) days after the Court’s issuance of a judgment, a report setting forth in detail the
manner and form in which IOvations has complied with Paragraphs 1 through 3 of iovation’s
Prayer for Relief;
5. Awarding compensatory damages sustained by iovation and profits generated by
IOvations 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;
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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
6. Awarding iovation its attorneys’ fees pursuant to 15 U.S.C. § 1117, and other
applicable federal and state laws;
7. Awarding iovation interest, costs, and such other relief as the Court may deem
just and equitable.
JURY DEMAND
iovation hereby demands a trial by a jury of all issues so triable.
DATED this 22
nd
day of May, 2014.
DAVIS WRIGHT TREMAINE LLP



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 iovation, Inc.
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