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Complaint For Federal Trademark Infringement

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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

Kenneth L. Wilton (pro hac vice to be filed)
Email: kwilton@seyfarth.com
SEYFARTH SHAW LLP
2029 Century Park East, Suite 3500
Los Angeles, California 90067
Telephone: (310) 277-7200
Facsimile: (310) 201-5219

Attorneys for Plaintiff
RUDY’S BARBER SHOP, L.L.C.



IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

PORTLAND DIVISION

RUDY’S BARBER SHOP, L.L.C., a
Washington limited liability company,

Plaintiff,

v.

RUDY’S BARBER SHOP LLC, an Oregon
limited liability company, and RUDOLPH
VALENTINO MARTINEZ, an individual,

Defendants.

Civil No. _________
COMPLAINT FOR FEDERAL
TRADEMARK INFRINGEMENT,
FEDERAL UNFAIR COMPETITION, AND
TORTIOUS INTERFERENCE WITH
BUSINESS RELATIONS
DEMAND FOR JURY TRIAL


PLAINTIFF RUDY’S BARBER SHOP, L.L.C. (“Plaintiff”), through its attorneys,
complains of Defendants RUDY’S BARBER SHOP LLC and RUDOLPH VALENTINO
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MARTINEZ (collectively “Defendants”) 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 “RUDY’S” MARK AND THE NATURE OF THE ACTION
1. In or about 1992, Plaintiff began use of the mark “RUDY’S” in connection with
hairdressing salons and haircutting services. Since opening its first location under the RUDY’S
mark in Seattle, Washington, Plaintiff has opened fifteen (15) additional locations in Seattle,
Portland, Oregon, Los Angeles, California and New York, New York. Because of the nature of
the services Plaintiff offers under the RUDY’S mark, and substantial positive publicity in the
local and national press, the RUDY’S mark has become very well known in the United States.
2. Since in or about 1998, Plaintiff has operated a website at the URL
WWW.RUDYSBARBERSHOP.COM (“Plaintiff’s Website”) that includes, among other features, the
prominent display of the RUDY’s mark. In 2011, Plaintiff added a feature to Plaintiff’s Website
that it labeled “Shop” which includes links to products sold under the RUDY’s mark. In 2012,
Plaintiff added a feature to Plaintiff’s Website that it labeled “Photo Booth” which includes
photographs of customers of Plaintiff and interiors of some of Plaintiff’s stores.
3. Plaintiff owns Federal Trademark Registration No. 2,651,510, issued on
November 19, 2002, for the RUDY’S mark for “Hairdressing Salons, Beauty Salons and
Haircutting Services.” A copy of the certificate of registration for Registration No. 2,651,510 is
attached hereto as Exhibit A. Registration No. 2,651,510 is now incontestable under Section 15
of the United States Trademark Act (15 U.S.C. § 1065), providing Plaintiff with the conclusive
and exclusive right to use the RUDY’S mark in connection with the listed services throughout
the United States, including within this judicial district.
4. Notwithstanding Plaintiff’s exclusive right to use the RUDY’S mark in
connection with hairdressing salons, beauty salons and haircutting services, in or about 2009
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Defendants commenced using the mark “RUDY’S” in connection with providing virtually
identical services (“Defendants’ Services”) at a location in Portland, Oregon, that is less than 12
miles from the two locations that had long previously been operated by Plaintiff under the
“RUDY’S” mark.
5. In addition, in or about 2013, Defendants commenced operating a website located
at the URL WWW.RUDYTHEBARBER.COM (“Defendants’ Website”). Like Plaintiff’s Website,
Defendants’ Website includes references to and photographs of “RUDY’S BARBER SHOP”,
includes portions of the site labeled “Photo Booth” and “Shop”, and includes an email address
for contact information that incorporates the domain name owned by Plaintiff, namely
“Rudy@rudysbarbershop.com.”
6. Defendants have intentionally attempted to divert customers from Plaintiff’s
locations in Portland by the use of a confusingly similar name for their store, by using elements
of Plaintiff’s website and domain name on Defendants’ website, and, as set forth below, by
intentionally making verbal misrepresentations regarding Plaintiff’s employees.
7. Plaintiff therefore brings this suit to stop Defendants from causing further
confusion with Plaintiff’s senior RUDY’S mark, thereby resulting in the diversion of customers
and the diminishing of the goodwill associated with Plaintiff’s RUDY’S mark.
II. THE PARTIES
8. Plaintiff Rudy’s Barbershop L.L.C. is a limited liability corporation organized
under the laws of the State of Washington, with its principal place of business in Seattle,
Washington. Plaintiff operates two stores in Portland, Oregon, within this judicial district.
9. Defendant Rudy’s Barber Shop LLC is a limited liability corporation organized
under the laws of the State of Oregon, with a principal place of business located at 12555 SW
Main St., Portland, Oregon 97223, within this judicial district.
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10. Defendant Rudolph Valentino Martinez is an individual, a Manager of Defendant
Rudy’s Barber Shop LLC, and has a business address of at 12555 SW Main St., Portland,
Oregon, within this judicial district.
III. JURISDICTION AND VENUE
11. 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 claims under Oregon state law is proper as those claims are substantially
related to the claims over which the Court has original jurisdiction, pursuant to 28 U.S.C.
§§ 1338(b) and 1367.
12. Venue is proper under 28 U.S.C. §§ 1391(b) in that Defendants are doing and
transacting business within this judicial district and have committed acts complained of herein in
this judicial district.
IV. CLAIMS
A. Infringement of Federally-Registered Trademark
13. Plaintiff repeats and re-alleges each and every allegation contained in the above
paragraphs of this Complaint as though fully set forth herein.
14. Defendants’ use of the RUDY’S mark as aforesaid constitutes the use in
commerce of a reproduction, copy, or colorable imitation of the registered RUDY’S Mark in
connection with the sale, offering for sale, distribution, and advertisement of Defendants’
Services, which use is likely to cause confusion, to cause mistake, or to deceive as to the source
or origin of Defendants’ Services, in violation of 15 U.S.C. § 1114(1).
15. Defendants’ use of a copy of Plaintiff’s registered RUDY’S mark was made with
actual or constructive knowledge of Plaintiff’s rights in Plaintiff’s registered RUDY’S mark.
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16. Defendants’ use of a copy of Plaintiff’s registered RUDY’S mark is without
Plaintiff’s consent or permission.
17. Defendants’ acts of trademark infringement, unless enjoined, will cause Plaintiff
to sustain monetary damages, loss, and injury.
18. Plaintiff is without an adequate remedy at law because Defendants use of a copy
of Plaintiff’s registered RUDY’S mark is causing irreparable injury to Plaintiff, and unless said
acts are enjoined by this Court, they will continue and Plaintiff will continue to suffer irreparable
injury.
B. Federal Unfair Competition
19. Plaintiff repeats and re-alleges each and every allegation contained in the above
paragraphs of this Complaint as though fully set forth herein.
20. Defendants’ use of the RUDY’S mark in connection with Defendants’ Services
constitutes the use in commerce of a word, term, name, symbol, or device, which use is likely to
cause confusion, or to cause mistake, or to deceive, as to the affiliation, connection, or
association of Defendants with Plaintiff, or as to the origin, sponsorship, or approval of
Defendants’ Services or Defendants’ commercial activities by Plaintiff, in violation of 15 U.S.C.
§ 1125(a)(1).
21. Defendants’ unfair competition as aforesaid has caused and continues to cause
irreparable harm to Plaintiff.
22. Unless restrained and enjoined by this Court, Defendants will persist in their
unfair competition, thereby causing Plaintiff further irreparable harm.
23. Plaintiff has no adequate remedy at law.
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C. Intentional Interference With Business Relations
24. Plaintiff repeats and realleges each and every allegation contained in the above
paragraphs of this Complaint as though fully set forth herein.
25. Defendants have, on at least one occasion, received a telephone call from a
customer of one of Plaintiff’s two Portland, Oregon locations seeking to make an appointment
for services. Instead of re-directing the call to Plaintiff, Defendants informed Plaintiff’s
customer that the specific stylist no longer worked at the store and, further, that the stylist was
currently in a rehabilitation facility due to an abuse of drugs or alcohol.
26. Defendants’ comments as set forth above were made without privilege and with
the specific intent to induce Plaintiff’s customer not to enter into or continue a business
relationship with Plaintiff, in violation of Oregon law.
27. Plaintiff is informed and believes that the actions described above have been
repeated with other of Plaintiff’s customers who have been misdirected to Defendants through
Defendants’ unauthorized use of Plaintiff’s RUDY’S mark.
28. As a result of Defendants’ action, Plaintiff has been damaged both monetarily and
through a lessening of the goodwill associated with the RUDY’S mark.
29. Defendants’ intentional interference with Plaintiff’s business relations as
aforesaid has caused and continues to cause irreparable harm to Plaintiff.
30. Unless restrained and enjoined by this Court, Defendants will persist in their
intentional interference with Plaintiff’s business relations, thereby causing Plaintiff further
irreparable harm.
31. Plaintiff has no adequate remedy at law.
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PRAYER FOR RELIEF
WHEREFORE, Plaintiff Rudy’s Barber Shop, L.L.C. prays that, pursuant to 15 U.S.C.
§§ 1116 to §1125 and Oregon state common law:
A. The Court finds that Plaintiff owns valid and subsisting trademark rights in the
RUDY’S mark.
B. Defendants be held liable under each claim for relief set forth in this Complaint.
C. The Court grant an injunction that Defendants and their agents, servants,
employees, and attorneys, and all other persons in active concert or participation with them, be
enjoined from using “RUDY’S” (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 the
RUDY’S mark, as a trademark or service mark, trade name or domain name, or in advertising,
distribution, sale, or offering for sale of haircutting and related services.
D. The Court order as part of the injunction and pursuant to 15 U.S.C. § 1116(a) that
Defendants file with the Court and serve on Plaintiff within thirty days after the service on the
Defendants of the injunction, a report in writing under oath setting forth in detail the manner and
form in which the Defendants have complied with the injunction.
E. Defendant be required to pay to Plaintiff profits made in connection with its use
of the RUDY’S mark, pursuant to 15 U.S.C. § 1117 and the equity powers of this Court.
F. Defendant be required to pay to Plaintiff its reasonable attorneys’ fees and
disbursements incurred herein, pursuant to 15 U.S.C. § 1117 and the equity powers of this Court.
G. Defendant be required to pay to Plaintiff the costs of this action.
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H. The Court award Plaintiff such other and further relief as this Court deems just
and equitable.
JURY DEMAND
Pursuant to Federal Rule of Civil Procedure 38(b), Rudy’s Barber Shop, L.L.C., hereby
demands a jury trial as to all issues so triable in this action.

Respectfully submitted,

Dated: September 17, 2014 By: s/ Kevin M. Hayes

Associated counsel:

Kenneth L. Wilton (pro hac vice to be filed)
Email: kwilton@seyfarth.com
SEYFARTH SHAW LLP
2029 Century Park East, Suite 3500
Los Angeles, California 90067
Telephone: (310) 277-7200
Facsimile: (310) 201-5219
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
RUDY’S BARBER SHOP, L.L.C.


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