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Case 3:15-cv-01346-HZ

Document 1

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J. SCOTT MOEDE, Oregon State Bar ID Number 934816
Chief Deputy City Attorney
Email: scott.moede@portlandoregon.gov
SIMON WHANG, Oregon State Bar ID Number 035282
Deputy City Attorney
Email: simon.whang@portlandoregon.gov
Office of City Attorney
1221 SW 4th Avenue, Suite 430
Portland, OR 97204
Telephone: (503) 823-4047
Facsimile: (503) 823-3089
SHAWN KOLITCH, ESQ., Oregon State Bar ID Number 063980
Email: shawn@khpatent.com
Kolisch Hartwell, P.C.
200 Pacific Building
520 SW Yamhill Street
Portland, OR 97204
Telephone: (503) 224-6655
Facsimile: (503) 295-6679
Attorneys for Defendant
UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION
VINTAGE ROADSIDE, LLC,
PLAINTIFF,
NOTICE OF REMOVAL
v.
CITY OF PORTLAND,
DEFENDANT.

TO:

THE JUDGES OF THE UNITED STATES DISTRICT COURT FOR THE DISTRICT
OF OREGON:
Removing party, City of Portland, by its undersigned attorney, respectfully shows this

Court:
1.

The removing party, City of Portland, is the defendant in the above-entitled

action.
Page 1 – NOTICE OF REMOVAL

PORTLAND CITY ATTORNEY’S OFFICE
1221 SW 4TH AVENUE, RM 430
PORTLAND, OREGON 97204
(503) 823-4047

Case 3:15-cv-01346-HZ

2.

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On June 25, 2015, the above-entitled action was commenced against the City of

Portland in the Circuit Court of the State of Oregon for the County of Multnomah and is now
pending in such court, with the court number 15CV16552.
3.

On June 26, 2015, a copy of the Summons and Complaint in the above-entitled

state action was served upon the Portland City Attorney at the Offices of the City Attorney in
Portland, Oregon.
4.

No further proceedings have been had in this action in state court.

5.

This notice of removal is filed within 30 days after service of process.

6.

This Court has original jurisdiction of the above-entitled action pursuant to

28 U.S.C. §§ 1331 and 1338(a) because it is a suit involving a declaration of the City’s federal
and state trademark rights and the enforceability thereof, including the City’s ability to enforce
its trademark rights under the Lanham Act, 15 U.S.C. 1051 et seq. This action is removable
under 28 U.S.C. § 1441(a) and (b).
8.

Copies of the Complaint and Summons served on defendant City of Portland is

attached to this Notice.
9.

On the date set forth below, a copy of this notice was served on plaintiff’s

attorney. On the same date, a copy of this notice was filed with the clerk of the Multnomah
County Circuit Court in which the action was commenced.
WHEREFORE, the City of Portland requests that the above-entitled action be removed
from the Circuit Court of the State of Oregon for the County of Multnomah to the United States
District Court for the District of Oregon.
Dated: July 20, 2015
/s/ J. Scott Moede
J. Scott Moede, OSB #934816
Chief Deputy City Attorney
Telephone: (503) 823-4047
Attorney for Defendant
Page 2 – NOTICE OF REMOVAL

PORTLAND CITY ATTORNEY’S OFFICE
1221 SW 4TH AVENUE, RM 430
PORTLAND, OREGON 97204
(503) 823-4047

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RECE VED
IN THE CIRCUIT COURT OF THE STATE OF OREGON
COUNTY OF MULTNOMAH
Vintage Roadside, LLC,
an Oregon Limited Liability Company,

Case No. 15CV16552
SUMMONS

Plaintiff,
v.
The City of Portland,
Defendants.

TO:

The City of Portland
Tracy Reeve, City Attorney
1221 SW 4th Avenue Suite 430
Portland, OR 97204

YOU ARE HEREBY REQUIRED to appear and defend the complaint filed against you in the above-entitled action within thirty
(30) days from the date of service of this summons upon you and in case of your failure to do so,for want thereof, Plaintiff will apply to the
court for the relief demanded in the complaint.
NOTICE TO THE DEFENDANT:
READ THESE PAPERS CAREFULLY!
You must "appear" in this case or the other side will win
automatically. To "appear" you must file with the court a legal paper
called a "motion" or "answer." The "motion" or "answer" must be
given to the court clerk or administrator within 30 days along with the
required filing fee. It must be in proper form and have proof of
service on the plaintiff's attorney or, if the plaintiff does not have an
attorney, proof of service upon the plaintiff.

ROBERT • S IIDER
Attorney of Record for Plaintiff & Trial Attorney
Robert A. Swider OSB #82127
Swider Haver, LLP
621 SW Morrison Street, Suite 1420
Portland OR 97205-3867
(503)241-9577

If you have any questions, you should see an attorney immediately. If
you need help finding an attorney, you may contact the Oregon State
Bar's Lawyer Referral Service online at ww.oregonstatebar.org or by
calling at(503)684-3763 (in the Portland metropolitan area) or tollfree elsewhere in Oregon at(800)452-7636.

STATE OF OREGON, County of Multnomah )ss.
1, the undersigned attorney of record for the Plaintiff, certify that the foregoing is an exact and completexopy of the original
summons in the above-entitled action.
ROBERT A. SWIDER
Attorney of record for Plaintiff

TO THE OFFICER OR OTHER PERSON SERVING THIS SUMMONS: You are hereby directed to serve a true copy ofthis summons,
together with a true copy of the complaint mentioned therein, upon the individual(s) or other legal entity (ies) to whom or which this
summons is directed, and to make your proof of service upon a separate document which you shall attach here

IIAR
ROBERT A. SWC
Attorney of record for Plaintiff

Case 3:15-cv-01346-HZ

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IN THE CIRCUIT COURT OF THE STATE OF OREGON

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MULTNOMAH COUNTY

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Vintage Roadside,LLC,
an Oregon Limited Liability Company

Case No. 15CV16552

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PLAINTIFF'S COMPLAINT FOR
DECLARATORY JUDGMENT
AND RELIEF PURSUANT TO
ORS 28.010

Plaintiff,
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v.
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The City of Portland,
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Defendant.
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Plaintiff alleges as follows:

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NATURE OF THE ACTION

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1.

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Plaintiff seeks declaratory judgment of non-infringement of alleged trademarks

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asserted against Plaintiff by Defendant the City of Portland. Plaintiff further seeks

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declaratory judgment that any alleged trademark asserted by the City of Portland in the

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Portland Sign is invalid and unenforceable.

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PARTIES TO THE ACTION

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2.
Plaintiff Vintage Roadside, LLC, is an Oregon Limited Liability Company.

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3.

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Defendant is the City of Portland.

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/1/

I//
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Page 1 — PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
5W1DER HAVER LLP
ATTORNEYS AT LAW
621 S.W. MORRIsON,SUITE 1420
PORTLAND,OR 97205
TELEPHONE'.(503)2264122• FAX: (503)273-0042
RODERT@SWIDERHAVER.coM

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FACTUAL BACKGROUND
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4.

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The City of Portland acquired the Portland Oregon Sign pursuant to a Donation

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Agreement and other Agreements as ratified by Portland Ordinance 184120 adopted on

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September 15, 2011.

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5.

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In July 2011 a Deputy City Attorney on behalf ofthe City ofPortland Bureau of

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Internal Business Services filed a Trade and Service Mark Registration with the Oregon

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Secretary of State. A copy of that application is attached as Exhibit 1. The Specimen

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attached is a drawing by Ramsey Signs of the Portland Oregon Sign.
6.

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The Explanation in the Registration Of the Manner in which the mark is used is "[a]n
historical landmark of Portland, Oregon."
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ORS 647.005(8) provides:

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Trademark means a word, name,symbol or device or a combination of words,
names,symbols or devices that a person uses to identify and distinguish the
persons goods, including a unique product, from another persons goods and to
indicate the source ofthe goods,even ifthe source is unknown.

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8.

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ORS 647.017(1)indicates

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a mark is in use:
(a) On goods that are sold or transported in commerce in this state when the
mark is placed in any manner on:
(A)Goods, other containers or displays associated with the goods or tags or
labels affixed to the goods; or
(B)Documents associated with the goods or the sale of the goods, if the nature
of the goods makes placing the mark on the items identified in subparagraph
(A)of this paragraph impractical.
(b)On services that are rendered in this state when the mark is used or
displayed in selling or advertising the services.

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Page 2 — PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
SWIDER HAVER LLP
ATTORNEYS AT LAW
621 S.W. MORRISON,SUITE 1420
PORTLAND,OR 97205
TELEPHONE:(503)226-8122•FAR: (503)273-8542
ROBERT@SWIDERHAVER_COM

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9.
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On information and belief Plaintiffs allege that the City of Portland at the time of

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filing the Trademark Registration with the Secretary of State was not using the mark in

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connection with the sale of goods or services and falsely certified that the mark was in use.

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DEFENDANT'S ACTS COMPRISING ACTUAL CONTROVERSY

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10.

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In May ofthis year Defendant the City ofPortland through one of its City Attorneys

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contacted a member of the Plaintiff LLC through the e-commerce website Etsy and asserted

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that the photographs of the Portland Oregon sign advertised for sale by the Plaintiff on Etsy

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violate the Trademark of the City of Portland in the Portland Oregon Sign.
11.

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On the City Web Site for Portland Oregon Sign Licensing

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http://www.portlandoregon.gov/bibs/article/430664 the City indicates "[i]f you'd like to use

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an image ofthe sign for any sort of commercial purpose, such as licensing, filming, or

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photography, please contact the Bureau of Internal Business Services. Contact and fee

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information is listed below."
12.

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The City of Portland charges a fee for licensing the Portland Oregon sign trademark,

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the Fee schedule is on the City Website at:

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http://www.portlandoregon.gov/bibs/article/529081

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FIRST CLAIM FOR RELIEF

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(Unenforceability of Trademark)

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13.

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Plaintiff reallages paragraphs 1 through 12.
14.

This is a declaratory judgment action under the Trademark Laws of the State of
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Page 3 — PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
SWIDER HAVER LLP
ATTORNEYS AT Law
621 S,W. MORRISON,Sum 1420,
PORTLAND,OR 97205
TELEPHONE:(503)226-8122•Fax: (503)273.8842
ROBERT@SWIDERHAVER COM

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Oregon ORS 647.005 et seq, and the Uniform Declaratory Judgments Act ORS 28.010 et seq.
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As an actual justiciable controversy exists by way of the credible threat of immediate

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litigation and demand to cease and desist the sale of the Plaintiff's products without obtaining

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a license from the City and paying a licensing fee.

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15.

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Pursuant to ORS 28.100 the court may make such award of costs as may seem

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equitable and just.

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SECOND CLAIM FOR RELIEF

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(Non-Infringement of Trademark)

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16.
Plaintiff reallages paragraphs 1 through 12.

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17.

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Plaintiff is entitled to declaratory judgment that it is not infringing, has not infringed,

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and is not liable for infringing any enforceable trademark owned by the City of Portland

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relating to the sale of products incorporating all or part of images ofthe Portland Oregon

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Sign.
18.

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Pursuant to ORS 28.100 the court may make such award of costs as may seem

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equitable and just.

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WHEREFORE Plaintiff Prays for Relief as Follows:

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On its FIRST CLAIM FOR RELIEF a Declaration that the alleged Trademark is

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unenforceable and for an award of costs as may seem just and equitable; and
On its SECOND CLAIM FOR RELIEF a Declaration that the Plaintiff it is not

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infringing, has not infringed, and is not liable for infringing any enforceable trademark owned

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//

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Page 4 — PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
SWIDER HAVER LLP
ATTORNEYS AT LAW
621 S,W. MORRISON,SUITE 1420
PORTLAND, OR 97205
TELEPHONE:(503)226-8122•FAX: (503)273-8842
ROBERT@SWIDERHAVERCOM

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by the City ofPortland relating to the sale of products incorporating all or part of images of
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the Portland Oregon Sign and for an award of costs as may seem just and equitable.
DATED June 25, 2015.
Swider Haver LLP by

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/s Robert Swider
Robert A. Swider
OSB #82127
of Attorneys for Plaintiff
and Trial Attorney

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Page 5 — PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
SWIDER HAVER LLP
ATTORNEYS AT LAW
621 S.W. MORRISON,SUITE 1420
PORTLAND,OR 97203
TELEPHONE:(503)226-8122•FAX: (503)273-8842
EOBERT@SWIDERHAVER.COM

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Trade and Service Marks - Registration
- MtplAw.w.FillnglnOregon.com - Phone:(603)986-2200
Secretary ofStale - Corporation Division•255 Capitol SL NE, Suite 161 - Seism, OR 97310.1327

FILED

JUL -1 9. 2011

411?-1

REGISTRY NUMBER:

OREGON
SECRETARY OF STATE

For office use only


Information on this application Is public record.
In accordance with Oregon Revised Statute 192.410-192.490, the
We must release this Information to all parties upon request.
Sheets If Necessary.
Please Type or Print Legibly In Black Ink. Attach additional

MAILING ADDRESS:
1) CORRESPONDENT NAME:

For office use only

1221 SW 4th Ave., Rm 430, Portland OR • 97204 Attn: Kalel Taylor

City of Portland Attorney's Office

ADDRESS:

0Entity)
2) APPLICANT'S NAME:(Owner: ❑ Individual or

City of Portland Bureau of Internal Business Services
OF FORMATION:
3) IF THE APPLICANT 13 AN ENTITY,ENTER THE STATE

1120 SW 5th Ave., Rm 750, Portland OR 97204 Attn: Jeffrey Baer

MunicipalCorPoratIon State of Oregon
4) IF ENTITY IS A PARTNERSHIP, LIST NAMES OF GENERAL PARTNERS:
(Include all words, designs end borders that comprise the mark)(Attach additional page If needed.)
5) DESCRIPTION OF TRADE OR SERVICE MARK:
In downtown Portland,•formerly known as the'Made In Oregon" sign.
The "Portland Oregon" sign Is a lighted neon-and-bulb sign located
es it Is actually used to this application.
6) SPECIMEN OF MARK IS REQUIRED: El Aftedh a drawing or photocopy of the mark
are pizzas,shirty, examples of services ere serving food and selling clothing.)'
7) GOODS OR SERVICES WITH WHICH THE MARK IS USED:(Examples of goods
all over the world when malor events come to Portland.
The sign Is a visual Icon associated with Portland,and is seen
etc.)
8) EXPLAIN MODE OR MANNER IN WHICH THE MARK IS USED:(Example:on goods,lags, labels, containers,

An historical landmark of Portland,Oregon.
(See form 60-e)
9) CLASS NUMBER(5)OF GOODS OR SERVICES:

116.

125, 126. 135, 138. 141, 142

APPLICANT OR APPLICANT'S PREDECESSOR IN INTEREST:
10) DATE MARK WAS FIRST USED ANYWHERE BY

November 2010
OR IN INTEREST:
11) DATE'MARK WAS FIRST USED IN OREGON BY APPLICANT OR APPLICANT'S PREDECESS

November 2010
12) EXECUTION:

with the federal government or In Oregon or has the light
I, the applicant, own the mark, the mark Is In use, and no other person has registered theormark
confusion mistake or deceive when applied to the goods or services of
to use the mark or a mark that so resembles the mark as to be likely to cause
Is true, correct and complete.
the other person. I declare under penalties of perjury that this application

(If applicant Is en entity, a member of a firm, officer of the corporation, officer of the limited liability

company, or officer of an association must sign.).
Date:

Deputy City Attorney

0014PIRMATION
PY
CONTACT NAME:(To resolve questions with this filing.)

Kalei Taylor
PHONE NUMBER:(Include area code.)

503-823-4047
290 -Trade and Service Marks - Registration (01/10)

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CERTIFICATE OF SERVICE

I hereby certify that I served the foregoing NOTICE OF REMOVAL on:
Robert A. Swider
Swider Haver LLP
621 SW Morrison St #1420
Portland, OR 97205
Attorney for Plaintiff
Shawn Kolitch
Kolisch Hartwell PC
520 SW Yamhill St Ste 200
Portland OR 97204
Attorney for Defendant
on July 20, 2015, by causing a full, true and correct copy thereof, addressed to the last-known
address (or fax number) of said attorney, to be sent by the following method(s):
by mail in a sealed envelope, with postage paid, and deposited with the U.S. Postal
Service in Portland, Oregon.
by hand delivery.
by facsimile transmission.
by email.

/s/ J. Scott Moede
J. SCOTT MOEDE, OSB #934816
Chief Deputy City Attorney
Email: scott.moede@portlandoregon.gov
Fax: (503) 823-3089
Attorney for Defendant

Page 1 – CERTIFICATE OF SERVICE

PORTLAND CITY ATTORNEY’S OFFICE
1221 SW 4TH AVENUE, RM 430
PORTLAND, OREGON 97204
(503) 823-4047