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Case 3:16-cv-00141-BR

Document 1

Filed 01/26/16

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Steven M. Wilker, OSB #911882
Direct Dial: 503.802.2040
Direct Fax: 503.972.3740
E-Mail: steven.wilker@tonkon.com
Eric Beach, OSB #105783
Direct Dial: 503.802.2182
Fax: 503.972.3882
E-Mail: eric.beach@tonkon.com
TONKON TORP LLP
1600 Pioneer Tower
888 SW Fifth Avenue
Portland, OR 97204
Attorneys for Plaintiff House Spirits Distillery LLC

UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
(PORTLAND DIVISION)

HOUSE SPIRITS DISTILLERY LLC, a
Delaware limited liability company,
Plaintiff,
v.

Civil No. 3:16-cv-141
COMPLAINT
(Trademark Infringement)
JURY TRIAL DEMANDED

PILOT HOUSE SPIRITS LLC, an Oregon
limited liability company,
Defendant.
Plaintiff House Spirits Distillery LLC ("Plaintiff" or "House Spirits") alleges as
follows:
PARTIES
1.

Plaintiff House Spirits is a limited liability company duly organized and

existing under the laws of the State of Delaware and authorized to do business in the State of
Oregon, with its corporate offices and principal place of business in Portland, Oregon.
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2.

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Defendant Pilot House Spirits LLC ("Defendant" or "Pilot House") is a

limited liability company duly organized and existing under the laws of the State of Oregon, with
its corporate offices and principal place of business in Astoria, Oregon.
JURISDICTION AND VENUE
3.

This Court has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) because

this case involves claims arising under the Lanham Act of 1946, 15 U.S.C. § 1051 et seq., for the
remedies set forth in 15 U.S.C. §§ 1114, 1116, and 1117.
4.

Venue is proper in this judicial district under 28 U.S.C. § 1391.
NATURE OF THE CASE

5.

This is an action for trademark infringement under federal law.

6.

Plaintiff is the owner of a trademark registration in the United States for

HOUSE SPIRITS for goods in International Class 33, namely Distilled Spirits.
7.

The HOUSE SPIRITS mark has been used in commerce at least since

December 20, 2008. Plaintiff has actively promoted and sold distilled spirits, including Aviation
Gin, Krogstad Aquavit, Volstead Vodka, House Spirits Coffee Liqueur, and a series of limited
release small batch spirits. Through its use of the HOUSE SPIRITS mark, Plaintiff has
established valuable trademark rights and goodwill throughout the United States.
8.

On October 9, 2015, Defendant filed an intent-to-use application with the

United States Patent and Trademark Office ("USPTO") (Serial Number 86783472) to register the
name "PILOT HOUSE SPIRITS" as a trademark on an intent-to- use basis in the same class
(International Class 33) and for the same kinds of goods (Blended spirits; Brandy spirits;
Distilled Spirits; Distilled spirits of agave nectar; Potable spirits; Prepared cocktails consisting
primarily of distilled spirits and also including beer; Spirits; Spirits and liqueurs; Whiskey
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spirits) for which Plaintiff's HOUSE SPIRITS mark is registered. No action has been taken by
the USPTO with respect to the application. On information and belief, at or about the time of
Defendant's application for registration, Defendant began using the name PILOT HOUSE
SPIRITS to promote and sell distilled spirits in violation of Plaintiff's rights in the HOUSE
SPIRITS mark.
9.

Plaintiff brings this action to enjoin Defendant from using the name

"PILOT HOUSE SPIRITS" or any other name that is confusingly similar to the HOUSE
SPIRITS mark. Plaintiff also seeks damages and attorney fees for Defendant's acts of
infringement.
FACTUAL ALLEGATIONS
10.

U.S. Reg. No. 3,584,839, issued March 3, 2009 for the HOUSE SPIRITS

mark, was assigned by original registrant House Spirits LLC to Plaintiff House Spirits Distillery
LLC effective June 20, 2011.
11.

Plaintiff House Spirits Distillery LLC currently holds U.S. Reg.

No. 3,584,839, issued March 3, 2009, for the HOUSE SPIRITS mark, which is published on the
Principal Register.
12.

Plaintiff's registration in HOUSE SPIRITS has become incontestable

pursuant to Sections 15 and 33(b) of the Lanham Act, 15 U.S.C. §§ 1065 and 1115(b).
13.

At least since December 20, 2008, Plaintiff and its predecessor House

Spirits LLC have continuously used the HOUSE SPIRITS mark to promote Plaintiff's distilled
spirits products. Plaintiff has sold and continues to sell its products under the HOUSE SPIRITS
mark throughout the United States and internationally and has promoted, and continues to

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promote, the HOUSE SPIRITS mark through the advertising and sale of its products and
services.
14.

As a result of Plaintiff's significant use and promotion of the HOUSE

SPIRITS mark, the mark has acquired a distinctiveness and secondary meaning among
consumers throughout the United States. Plaintiff now owns valuable goodwill in the HOUSE
SPIRITS mark.
15.

Defendant has been marketing and selling its products in interstate

commerce, including using the name "PILOT HOUSE SPIRITS."
16.

By virtue of Plaintiff's U.S. Registration, Defendant was put on

constructive notice of Plaintiff's rights in the HOUSE SPIRITS mark prior to Defendant's use of
the "PILOT HOUSE SPIRITS" name.
17.

Defendant has refused to cease using the name "PILOT HOUSE

SPIRITS" despite Plaintiff's demands that it do so.
CLAIM FOR RELIEF
(Violation of the Lanham Act ― 15 U.S.C. § 1114(1))
18.

Plaintiff realleges all of the preceding paragraphs.

19.

Defendant's use of the name "PILOT HOUSE SPIRITS" is likely to cause

confusion, mistake, or deception in that persons are likely to believe that the products Defendant
markets and sells are in some way connected with, sponsored by, approved by, or endorsed by
Plaintiff. Defendant's use of the name "PILOT HOUSE SPIRITS" violates 15 U.S.C. § 1114(1).
20.

Plaintiff has been and will continue to be irreparably harmed by

Defendant's acts of infringement. Plaintiff is entitled to a preliminary and permanent injunction
prohibiting Defendant from further acts of infringement under 15 U.S.C. § 1116.
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Under 15 U.S.C. § 1117(a), Plaintiff is entitled to recover all damages it

has sustained, all damages it continues to sustain, and any benefit or profit that Defendant has
derived from its infringement. Alternatively, Plaintiff is entitled to recover a reasonable royalty
on any and all infringing sales.
22.

Defendant's acts of infringement are willful, at least with respect to its

continued use of the infringing mark after receiving and rejecting Plaintiff's demands to cease
and desist from using the infringing mark.
23.

Plaintiff is thus entitled to an award of treble damages under 15 U.S.C.

§ 1117(a), at least with respect to damages resulting from Defendant's continued use of the
infringing mark after receiving and rejecting Plaintiff's demands to cease and desist from using
the infringing mark.
24.

Plaintiff is entitled to recover its attorney fees because this is an

exceptional case pursuant to 15 U.S.C. § 1117(a).
WHEREFORE, Plaintiff prays for judgment in its favor and against Defendant as
follows:
A.

Permanently and preliminarily enjoining Defendant and all others in active

concert or participation with Defendant from:
(i)

selling, offering for sale, advertising, or promoting for sale any

goods or services using the name "PILOT HOUSE SPIRITS" or any other name that is
confusingly similar to the HOUSE SPIRITS mark;
(ii)

filing or continuing to prosecute any applications for state or

federal trademark, service mark, or trade name registration for any mark or trade name

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for "PILOT HOUSE SPIRITS" or any other name that is confusingly similar to the
HOUSE SPIRITS mark;
(iii)

doing any other act or thing that is likely to induce the belief that

Defendant's products are in some way connected with Plaintiff or that is likely to
diminish the distinctiveness of the HOUSE SPIRITS mark.
B.

Ordering Defendant to destroy all advertising, brochures, and other material in

its possession or under its control which contains the term "PILOT HOUSE SPIRITS";
C.

Ordering Defendant to account for and pay over to Plaintiff all profits

derived from Defendant's use of the name "PILOT HOUSE SPIRITS";
D.

Awarding Plaintiff actual damages caused by Defendant's infringement,

along with treble damages pursuant to 15 U.S.C. § 1117;
E.

Awarding Plaintiff its costs and disbursements incurred in this action,

together with reasonable attorney fees;
F.

Awarding Plaintiff prejudgment interest on any damages awarded; and

G.

Granting such other and further relief as the Court deems is just and

equitable.
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DEMAND FOR JURY TRIAL
Plaintiff demands trial by jury on all issues set forth in this Complaint.
DATED: January 26, 2016.
TONKON TORP LLP
By /s/ Steven M. Wilker
Steven M. Wilker, OSB #911882
Direct Dial: 503.802.2040
Direct Fax: 503.972.3740
E-Mail: steven.wilker@tonkon.com
Eric Beach, OSB #105783
Direct Dial: 503.802.2182
Direct Fax: 503.972.3882
Email: eric.beach@tonkon.com
Attorneys for Plaintiff House Spirits Distillery, LLC

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