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Case 3:16-cv-00486-BR

Document 1

Filed 03/22/16

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Michael A. Cohen, OSB #965776
Email: mcohen@schwabe.com
Nicholas (Nika) F. Aldrich, Jr., OSB #160306
Email: naldrich@schwabe.com
Alexandra J. Bodnar, OSB #133058
Email: abodnar@schwabe.com
SCHWABE, WILLIAMSON & WYATT, P.C.
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Facsimile: 503.796.2900
Attorneys for Plaintiff Pelican Brewing Company
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
PORTLAND DIVISION

PELICAN BREWING COMPANY, an
Oregon corporation,

No. _____________
COMPLAINT

Plaintiff,
v.
PELICAN’S WAITING ROOM, LLC
d/b/a PELICAN’S WAITING ROOM, an
Oregon limited liability company; NO
COMPLY FOOD GROUP, LLC, an
Oregon limited liability company; and
KYLE ROURKE, an individual,

(Federal Trademark Infringement, Federal
Unfair Competition, and Common Law
Trademark Infringement and Unfair
Competition)
DEMAND FOR JURY TRIAL

Defendants.
For its Complaint, Plaintiff Pelican Brewing Company (“Plaintiff”) states and alleges as
follows:

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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

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NATURE OF THE CASE
1.

This is a trademark infringement and unfair competition case arising from the

deliberate use by Defendants Pelican’s Waiting Room LLC d/b/a Pelican’s Waiting Room and
its managing members No Comply Food Group LLC and Kyle Rourke (collectively
“Defendants”) of a name and logo for a new restaurant and bar that is confusingly similar to
Plaintiff’s PELICAN-formative trademarks and logos, including without limitation, Plaintiff’s
federally-registered PELICAN PUB & BREWERY, PELICAN BREWERY COMPANY,
PELICAN PUB & BREWERY & Design, INDIA PELICAN, IMPERIAL PELICAN, and
MACPELICAN’S trademarks. As further detailed herein, Plaintiff, Pelican Brewing Company,
uses its PELICAN-formative marks in Oregon in association with bar and restaurant services and
the manufacture and sale of beer, coffee, and unique foods throughout the Pacific Northwest.
2.

Defendants are infringing upon Plaintiff’s PELICAN-formative marks by opening

a bar and restaurant in Portland, Oregon that serves beer, coffee, and foods under the confusingly
similar name “Pelican’s Waiting Room” and a similar logo, as well as food and beverages
branded “Pelican” including an alcoholic beverage called “Pelican’s Punch.”
3.

By way of this lawsuit, Plaintiff seeks: (i) an injunction enjoining Defendants

from further use of any trademark consisting of or including the term “PELICAN,” or any other
trademark or logo confusingly similar to Plaintiff’s trademarks and logos, in connection with the
marketing, promotion, sale, and provision of bar and restaurant services and/or related food and
beverage products; and (ii) an award of damages as a result of Defendant’s infringement and
unfair competition to date.
THE PARTIES
4.

Plaintiff Pelican Brewing Company is a corporation duly organized and existing

under the laws of the State of Oregon, with its principal place of business at 9005 Nestucca
Ridge Road, Pacific City, Oregon 97135. Plaintiff is in the business of, among other things, the
marketing, promotion, sale, and/or provision of bar and restaurants services; beer, ale and lager;
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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

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coffee; and other food products, including salad dressing, chowder, and various meat, fish,
poultry, and vegetable-based products.
5.

Upon information and belief, Defendant Pelican’s Waiting Room, LLC d/b/a

Pelican’s Waiting Room (“Pelican’s Waiting Room”) is a limited liability company duly
organized and existing under the laws of the State of Oregon, with an address at 2327 NW
Kearney Street, Portland, Oregon 97203.
6.

Upon information and belief, Defendant No Comply Food Group, LLC is a

limited liability company duly organized and existing under the laws of the State of Oregon, with
an address at 7328 N. Central Street, Portland, Oregon 97203. Upon information and belief,
Defendant No Comply Food Group, LLC is the managing member of Defendant Pelican’s
Waiting Room.
7.

Upon information and belief, Defendant Kyle Rourke is an individual residing in

or around Portland, Oregon, and is a member of Defendant No Comply Food Group, LLC,
8.

Upon information and belief, Defendants are in the business of, among other

things, the marketing, promotion, sale, and provision of bar and restaurant services in Portland,
Oregon.
JURISDICTION AND VENUE
9.

This Court has original subject-matter jurisdiction over this action pursuant to 28

U.S.C. §§ 1331 and 1338, and 15 U.S.C. § 1121 because the action arises, in part, under 15
U.S.C. §§ 1114 and 1125.
10.

This Court has jurisdiction over Plaintiff’s related common law claims pursuant to

28 U.S.C. § 1338, because these claims are joined with substantial and related claims under
federal trademark law, and pursuant to the doctrine of supplemental jurisdiction, 28 U.S.C. §
1367.
11.

This Court has personal jurisdiction over Defendants because, on information and

belief, Defendants Pelican’s Waiting Room and No Comply Food Group, LLC are limited
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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

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liability companies duly organized and validly existing under the laws of the State of Oregon,
and Defendants’ principal places of business are located in Portland, Oregon, and Defendant
Kyle Rourke registered the domain name www.pelicanswaitingroom.com, as discussed below,
using a Portland, Oregon address, and on information and believe Defendant Kyle Rourke
resides in Portland, Oregon.
12.

Venue is proper in this judicial district under 28 U.S.C. § 1391(b)(2) because a

substantial part of the events or omissions giving rise to Plaintiff’s claims occurred in this
judicial district.
13.

Venue is also proper in this judicial district under 28 U.S.C. § 1391(b)(1),

because, upon information and belief, all defendants reside in this judicial district.
FACTS COMMON TO ALL CLAIMS FOR RELIEF
Plaintiff’s Ownership and Use of the PELICAN Marks
14.

Founded in 1995, Plaintiff is in the business of providing bar and restaurant

services, and selling its signature beers, coffees, and unique food products throughout the United
States. Plaintiff operates its Pelican Pub & Brewery restaurant in Pacific City, Oregon and its
Tap Room in Tillamook, Oregon, and is opening the Pelican Brewing Pub in Cannon Beach,
Oregon in late Spring 2016. Plaintiff also has plans to open a PELICAN-branded bar and
restaurant in Portland, Oregon.
15.

Plaintiff’s customers include individuals from across the United States and around

the world who visit Plaintiff’s iconic bar and restaurant to sample its award-winning beers and
enjoy its unique beer cuisine and seafood. Plaintiff’s beer is also distributed and sold throughout
Oregon, Washington, and Idaho, and Plaintiff has won numerous national and international
awards for its signature brews.
16.

In addition to marketing, advertising, and/or selling its goods and services

throughout the United States, Plaintiff also markets and promotes its bar and restaurant and tap
room through its website, http://pelicanbrewing.com, and generates a significant portion of its
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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

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Filed 03/22/16

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business through word-of-mouth, its Facebook page, located at
http://www.facebook.com/PelicanBrewery, and tourist guidebooks and industry publications.
17.

Since at least as early as 1995 and continuing through the present date, Plaintiff

has provided its bar and restaurant services and sold its beer, ale, and lager under its PELICAN
PUB & BREWERY and PELICAN PUB & BREWERY & Design marks, and since that time
has begun using numerous other PELICAN-formative marks to promote and offer its bar and
restaurant services, beers, and food products.
18.

Plaintiff owns numerous federal trademark registrations for its marks, including

without limitation, the following:
Mark

Class

U.S. App. No.

Application Date

PELICAN PUB &
BREWERY

32, 43

U.S. Reg. No.
85/213,110

Registration Date
January 7, 2011

PELICAN PUB &
BREWERY

29, 30

4,098,067
85/323,378

February 14, 2012
May 17, 2011

PELICAN PUB &
BREWERY

30

4,298,773
85/806,996

March 5, 2013
December 19, 2012

PELICAN BREWING
COMPANY

32

4,376,242
85/662,215

July 30, 2013
June 26, 2012

MACPELICAN’S

32

4,333,936
85/323,396

May 14, 2013
May 17, 2011

INDIA PELICAN

32

4,104,710
85/323,409

February 28, 2012
May 17, 2011

32

4,104,711
86/010,763

February 28, 2012
July 15, 2013

4,494,513

March 11, 2014

IMPERIAL PELICAN

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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

Document 1

32, 43

29, 30

30

32

Filed 03/22/16

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85/214,115

January 10, 2011

4,104,207

February 28, 2012

85/323,364

May 17, 2011

4,298,772

March 5, 2013

85/807,029

December 19, 2012

4,379,714

August 6, 2013

85/863,585

February 28, 2013

4,384,065

August 13, 2013

A true and correct copy of the certificates of registration for Plaintiff’s federally-registered
PELICAN-formative trademarks are attached hereto as Exhibit A.
19.

Plaintiff has also developed common law rights in its federally-registered marks

(the “PELICAN Registered Marks”) based on its use of the marks in commerce.
20.

Plaintiff has also used logos in the promotion of its bar and restaurant services and

in the sale of its craft beers and other goods. Plaintiff’s logos are circular, with the head of a
pelican facing left, and with the pelican’s beak extending beyond the inner circle’s perimeter.

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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

21.

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Plaintiff also uses a neon sign to promote its bar and restaurant services that

embodies Plaintiff’s circular pelican logo. Plaintiff’s neon pelican sign features a colorful,
cartoonish line drawing of a pelican’s head facing left, positioned inside a bold, contrastinglycolored circle.

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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

22.

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Plaintiff has also used the term “PELICAN” in connection with the sale of

alcoholic beverages, including beers named “Pelican Noir,” “Golden Pelican,” “Imperial Pelican
Ale,” “Macpelican’s Ale,” and “Macpelican’s Wee Heavy Ale,” and it refers to these and its
other craft beers as the “Pelican Brews.” Plaintiff has won several awards for its beers sold
under its PELICAN-formative Marks. Plaintiff also frequently sells food items bearing the word
“PELICAN,” including “The Pelican Caesar,” and “Pelican in a Blanket,” in furtherance of its
consistent branding of its establishments and its products with the term “PELICAN.”
23.

Plaintiff has developed common law rights in the non-registered marks shown in

paragraphs 20 and 21 and discussed in paragraph 22 (the “PELICAN Unregistered Marks,” and,
collectively with the PELICAN Registered Marks, the “PELICAN Marks”) based on its actual
use of the marks.
24.

Over the last twenty years, Plaintiff has spent substantial sums promoting its bar

and restaurant services and related goods offered under the PELICAN Marks, and, as a result, a

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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

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Filed 03/22/16

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significant portion of Plaintiff’s relevant consumer demographic, and especially consumers in the
Pacific Northwest, have come to associate the PELICAN Marks with Plaintiff.
25.

As a result of Plaintiff’s continuous and substantially exclusive use of its

PELICAN Marks, and its sales, advertising, and promotional efforts under the PELICAN Marks,
the PELICAN Marks have become closely associated with Plaintiff and are recognized favorably
by Plaintiff’s relevant consumer demographic, and especially among consumers in the Pacific
Northwest, as an indicator of source for Plaintiff’s bar and restaurant services, craft beers, and
related goods. Accordingly, Plaintiff owns valuable goodwill in connection with its PELICAN
Marks.
Defendants’ Infringing Use of the PELICAN Marks
26.

On information and belief, Defendants began temporarily operating a “pop-up” or

traveling restaurant under the name “Pelican’s Waiting Room” (the “Infringing Mark”) in
Portland, Oregon during the Summer of 2015.
27.

On information and belief, Defendant Pelican’s Waiting Room applied for a

Liquor License with the Oregon Liquor Control Commission on or about February 9, 2016, using
the Infringing Mark.
28.

Upon information and belief, Defendants are in the process of opening a bar and

restaurant called “Pelican’s Waiting Room” at 2327 NW Kearney Street, Portland, Oregon
97210. On information and belief, Defendants held a “soft” opening for their bar and restaurant
featuring the Infringing Mark on or about March 19, 2016. On information and belief,
Defendants plan to hold a grand opening for their bar and restaurant featuring the Infringing
Mark on or about March 22, 2016.
29.

On information and belief, Defendants’ have also begun using a circular logo,

with the head of a pelican facing left, and with the pelican’s beak extending beyond the circle’s
perimeter in connection with their bar and restaurant services, as shown below:

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COMPLAINT

PDX\124870\186352\ABO\17882954.5

SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

30.

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On information and belief, Defendants’ are using (or plan to use) a neon sign to

promote their bar and restaurant services that embodies (or will embody) the Infringing Logo.
On information and belief, Defendants’ neon pelican sign features (or will feature) a colorful,
cartoonish line drawing of a pelican’s head facing left, positioned inside a bold, contrastinglycolored circle. Defendants’ neon pelican sign and logo are collectively referred to as the
“Infringing Logo.”
31.

On information and belief, Defendants’ bar and restaurant features (or will

feature) alcoholic beverages sold using PELICAN-formative marks confusingly similar to
Plaintiff’s PELICAN Marks. Those alcoholic beverages are sold alongside seafood, as well as
other food and beverage items commonly offered in a bar and restaurant, all offered and sold
under the Infringing Mark and/or the Infringing Logo.

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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

32.

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On or about February 4, 2016, Defendant Kyle Rourke registered the domain

name www.pelicanswaitingroom.com in his capacity as an individual, and not as an
organization. Upon information and belief, Rourke acquired the domain name to promote the
Pelican’s Waiting Room bar and restaurant using PELICAN-formative marks confusingly
similar to Plaintiff’s PELICAN Marks. The website associated with the
www.pelicanswaitingroom.com domain name states that it is for “Pelican’s Waiting Room”
located at 2327 Northwest Kearney Street, Northwest District, OR 97210, which is the address of
Defendants’ bar and restaurant in Portland, Oregon.
33.

Defendant No Comply Food Group, LLC is advertising the Pelican’s Waiting

Room bar and restaurant using PELICAN-formative marks confusingly similar to Plaintiff’s
PELICAN Marks. For example, on the Instagram webpage for nocomplypdx, an entry reads
“nocomplypdx Putting the finishing touches on the menu for our Pelican’s #popup. We’re getting
excited! Email info@nocomplypdx.com for reservations.
#pdxchefs #portlandnw #pdxnow#localfood #portlandisawesome #cheflife
#thisisgoingtobefun #friedchicken #oysters#bubbly #champagneofbeers #nocomply.” The
Instagram webpage for noncomplypdx also displays a photograph of a menu for “Pelican’s
Waiting Room” with “No Comply” water-marked on the page. It also has menu items for an
alcoholic beverage called “Pelican’s Punch” and a menu item for “Pelican’s Shooter.” A copy of
the nocomplypdx Instagram webpage is attached as Exhibit B.
34.

On or about March 11, 2016, Plaintiff was contacted by the director of the Oregon

Brewers Guild, who indicated that people in the beer and restaurant industries may be
experiencing and/or may be likely to experience confusion between Plaintiff’s PELICAN Marks
and Defendants’ use of the Infringing Mark.
35.

Beginning on or about March 11, 2016, trademark counsel for Plaintiff, Stuart J.

Ford, began contacting Defendants, and later Defendants’ counsel, via phone to inform them of
Plaintiff’s rights in its PELICAN Marks and of Defendants’ infringement of Plaintiff’s rights as a
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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

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result of their use of the Infringing Mark. Despite Plaintiff’s requests that Defendants cease and
desist from all further use of the Infringing Mark, Defendants have persisted in their use of the
Infringing Mark, including at the soft opening of their bar and restaurant on March 19, 2016,
notwithstanding their knowledge of Plaintiff’s rights in its PELICAN Marks and Plaintiff’s
claims that the Infringing Mark infringes the PELICAN Marks.
36.

Plaintiff has senior rights in its PELICAN Marks based on its first use of the

marks in commerce in Oregon and in interstate commerce. Having commenced use of its
PELICAN PUB & BREWERY and PELICAN PUB & BREWERY & Design marks for bar and
restaurant services in Oregon in May 1996, and in U.S. commerce in September 1998, Plaintiff’s
use of its PELICAN-formative marks for its bar and restaurant services predates Defendants’ use
of the Infringing Mark and Infringing Logo by more than 19 years.
37.

The PELICAN Marks and the Infringing Mark are identical and/or nearly

identical in sight, sound, meaning and commercial impression in that the dominant portion of
both marks is the identical and arbitrary term “PELICAN.” The other visual and phonetic
differences between the PELICAN Marks and the Infringing Mark are not sufficient to avoid a
likelihood of confusion among consumers. Further, given that the dominant portion of the
PELICAN Marks and the Infringing Mark is the identical and arbitrary term “PELICAN,”
consumers encountering the parties’ respective marks in the marketplace are likely to deem the
marks as creating an identical commercial impression.
38.

The Infringing Logo is also highly similar in appearance and commercial

impression to the design portion of the PELICAN Marks, as the marks all feature a circular logo
with the head of a pelican facing left, and with the pelican’s beak extending beyond the circle’s
perimeter. As a result, the design portion of the PELICAN Marks and the Infringing Logo look
highly-similar and create the identical commercial impression of a pelican.
39.

Plaintiff’s and Defendants’ bar and restaurant services offered under their

respective marks and logos are identical. Further, the coffee, beer, ale and lager, seafood, and
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COMPLAINT

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SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

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other items sold under Plaintiff’s PELICAN Marks, on information and belief, are identical
and/or closely related to the food and beverage products offered by Defendants’ at their bar and
restaurant. Accordingly, Plaintiffs’ goods and services and Defendants’ goods and services are
identical and/or closely related.
40.

Plaintiff and Defendants market, promote, and/or sell their respective goods

and/or services to the same classes of consumers and in overlapping marketing and trade
channels. For example, both Plaintiff and Defendants advertise, market, and promote their bar
and restaurant services directly to prospective customers through their respective social media
pages, https://www.instagram.com/nocomplypdx/ (Defendants’ Instagram page) and
https://www.facebook.com/PelicanBrewery (Plaintiff’s Facebook page). Likewise, Plaintiff’s
establishments and Defendants’ bar and restaurant have been featured in similar, Portland-based
industry publications. See Exhibits C & D.
41.

Defendants are not authorized licensees of Plaintiff, and Plaintiff has never

authorized or otherwise given Defendants permission to use any form of Plaintiff’s PELICAN
Marks.
FIRST CLAIM FOR RELIEF
(Federal Trademark Infringement, 15 U.S.C. § 1114(1))
42.

Plaintiff incorporates by reference paragraphs 1 through 41 set forth above.

43.

The U.S. Patent and Trademark Office has granted Plaintiff federal trademark

registrations for the PELICAN Registered Marks. See Exhibit A. Plaintiff owns the exclusive
trademark rights and privileges in and to the PELICAN Marks. Plaintiff uses the PELICAN
Marks as a designation of source and quality for its goods and services.
44.

Defendants have used and are using the Infringing Mark and Infringing Logo in

connection with goods and services in a manner that is likely to confuse, deceive, and cause
mistake among consumers, and therefore infringes Plaintiff’s rights in the PELICAN Marks in
violation of 15 U.S.C. § 1114.
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COMPLAINT

PDX\124870\186352\ABO\17882954.5

SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

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Plaintiff has no adequate remedy at law for Defendants’ infringement of the

PELICAN Marks, in that: (i) the PELICAN Marks are unique and valuable property, injury to
which cannot adequately be compensated by monetary damages; (ii) the infringement injures and
threatens to continue to injure Plaintiff’s reputation and goodwill; and (iii) the injury resulting to
Plaintiff from Defendants’ wrongful conduct, and the conduct itself, are continuing, and Plaintiff
would be required to bring a multiplicity of suits to achieve full redress for the injuries caused
thereby.
46.

Unless restrained, Defendants’ infringement of the PELICAN Marks will

continue to cause irreparable injury to Plaintiff, both during the pendency of this action and
thereafter. Plaintiff is therefore entitled to an order from this Court under 15 U.S.C. § 1116
preliminarily and permanently enjoining Defendants and their agents, employees, and others
acting in concert with them, from directly or indirectly infringing the PELICAN Marks in any
manner, including by using any mark, design, or logo that is confusingly similar to the
PELICAN Marks in connection with the sale, offer for sale, advertising, and/or promotion of bar
and restaurant services, and related goods.
47.

As a direct and proximate result of Defendants’ conduct, Plaintiff is also entitled

to recover three (3) times its actual damages and the profits wrongfully obtained by Defendants
attributable to the infringement of the PELICAN Marks in an amount to be proven at trial,
pursuant to 15 U.S.C. § 1117.
48.

Defendants’ actions in adopting and using the Infringing Mark and Infringing

Logo in connection with bar and restaurant services which are identical to the bar and restaurant
services offered by Plaintiff under its PELICAN Marks give rise to an inference of intentional,
willful, and malicious intent on the part of Defendants to trade on the goodwill associated with
Plaintiff’s PELICAN Marks and to cause confusion, to cause mistake, and to deceive the public
about the source or affiliation of Defendants’ services, especially in light of the fact that Plaintiff
has previously warned Defendants’ of its infringing conduct. Accordingly, this is an exceptional
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COMPLAINT

PDX\124870\186352\ABO\17882954.5

SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

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case under 15 U.S.C. § 1117 justifying an award of Plaintiff’s reasonable attorneys’ fees and
costs.
SECOND CLAIM FOR RELIEF
(Federal Unfair Competition, 15 U.S.C. § 1125(a))
49.

Plaintiff incorporates by reference paragraphs 1 through 48 set forth above.

50.

Defendants’ use of the Infringing Mark and Infringing Logo in commerce in

connection with the marketing, promotion, sale, and provision of its bar and restaurant services is
likely to cause confusion, mistake, and deception as to the affiliation, connection, or association
of Defendants with Plaintiff, or vice versa, or as to the origin, sponsorship, or approval of
Defendants’ bar and restaurant services by Plaintiff, or vice versa. Defendants’ actions therefore
constitute infringement of Plaintiff’s PELICAN Marks in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a). Defendants’ actions misrepresent the nature, characteristics,
qualities, and/or origin of Defendants’ services and commercial activities in violation of 15
U.S.C. § 1125(a).
51.

Plaintiff has no adequate remedy at law for the foregoing wrongful conduct of

Defendants, in that: (i) Defendants’ actions injure and threaten to continue to injure Plaintiff’s
unique and valuable property, injury to which cannot adequately be compensated by monetary
damages; (ii) the wrongful acts of Defendants injure and threaten to continue to injure Plaintiff's
reputation and goodwill; and (iii) the injury resulting to Plaintiff from Defendants’ wrongful
conduct, and the conduct itself, are continuing, and Plaintiff would be required to bring a
multiplicity of suits to achieve full compensation for the injuries caused thereby.
52.

Unless restrained, the foregoing wrongful acts of Defendants will continue to

cause irreparable injury to Plaintiff, both during the pendency of this action and thereafter.
Plaintiff is therefore entitled to an order from this Court under 15 U.S.C. § 1116 preliminarily
and permanently enjoining Defendant and their agents, employees, and others acting in concert
with them, from directly or indirectly: (i) selling, offering for sale, advertising, promoting or
Page 15 -

COMPLAINT

PDX\124870\186352\ABO\17882954.5

SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

Document 1

Filed 03/22/16

Page 16 of 19

providing any product or service that tends to relate or connect such product or service in any
way to Plaintiff or to any goods or services offered, provided, sold, manufactured, sponsored,
approved by or connected with Plaintiff; or (ii) making any false description or representation of
origin concerning any goods or services offered for sale by Defendants.
53.

As a direct and proximate result of Defendants’ conduct, Plaintiff is also entitled

to recover three (3) times its actual damages and the profits wrongfully obtained by Defendants
attributable to the infringement in an amount to be proven at trial, pursuant to 15 U.S.C. § 1117.
54.

Defendants’ actions in adopting and using the Infringing Mark and Infringing

Logo in connection with bar and restaurant services that are identical or nearly identical to the
bar and restaurant services offered by Plaintiff under its PELICAN Marks give rise to an
inference of intentional, willful and malicious intent on the part of Defendants to trade on the
goodwill associated with Plaintiff’s PELICAN Marks and to cause confusion, to cause mistake,
and to deceive the public about the source or affiliation of Defendants’ services, especially in
light of the fact that Plaintiff has previously warned Defendants’ of its infringing conduct.
Accordingly, this is an exceptional case under 15 U.S.C. § 1117 justifying an award of Plaintiff’s
reasonable attorneys’ fees and costs.
THIRD CLAIM FOR RELIEF
(Common Law Trademark Infringement and Unfair Competition)
55.

Plaintiff incorporates by reference paragraphs 1 through 54 set forth above.

56.

Defendants are using the Infringing Mark and Infringing Logo in a manner that is

likely to cause confusion, to cause mistake, and to deceive consumers, industry experts, and the
public at large as to the affiliation, connection, or association of Defendants with Plaintiff, or
vice versa, or as to the origin, sponsorship, or approval of Defendants’ bar and restaurant
services by Plaintiff, or vice versa.
57.

Defendants’ acts constitute common law trademark infringement and unfair

competition and have created and will continue to create a likelihood of confusion, thereby
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COMPLAINT

PDX\124870\186352\ABO\17882954.5

SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

Document 1

Filed 03/22/16

Page 17 of 19

causing irreparable harm to Plaintiff, including without limitation, injury to its reputation and
business identity, resulting in lost revenue and profits and diminished goodwill and reputation.
Plaintiff has no adequate remedy at law for this injury.
58.

Defendants’ actions in adopting and using the Infringing Mark and Infringing

Logo in connection with bar and restaurant services which are identical to the bar and restaurant
services offered by Plaintiff under its PELICAN Marks give rise to an inference of intentional,
willful and malicious intent on the part of Defendants to trade on the goodwill associated with
Plaintiff’s PELICAN Marks and to cause confusion, to cause mistake, and to deceive the public
about the source or affiliation of Defendants’ services, especially in light of the fact that Plaintiff
has previously warned Defendants’ of its infringing conduct. Accordingly, this is an exceptional
case under 15 U.S.C. § 1117 justifying an award of Plaintiff’s reasonable attorneys’ fees and
costs.
59.

As a result of Defendants’ acts, Plaintiff has been damaged in an amount not yet

determined or ascertainable. At a minimum, Plaintiff is entitled to injunctive relief, to an
accounting of Defendant’s profits, actual damages, punitive damages, and its costs.
JURY DEMAND
60.

Pursuant to Fed. R. Civ. P. 38(b), Plaintiff hereby demands a trial by jury of all

issues so triable that are raised herein or which hereinafter may be raised in this action.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for judgment against Defendants as follows:
1.

That Defendants, their officers, directors, agents, servants, affiliates, employees,

successors, assigns, parent and subsidiary companies, and representatives, and all those acting in
privity or in concert or participation with Defendants, be preliminarily and permanently enjoined
and restrained from directly or indirectly:
a.

Affixing, applying, annexing, or using in connection with the advertising,

promotion, sale, or offering of bar or restaurant services, and/or related goods, the Infringing
Page 17 -

COMPLAINT

PDX\124870\186352\ABO\17882954.5

SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

Document 1

Filed 03/22/16

Page 18 of 19

Mark, the Infringing Logo, any mark consisting of or including the term “PELICAN,” any mark
consisting of or including the image of a pelican, any mark confusingly similar to Plaintiff’s
PELICAN Marks, or any other marks that might tend to falsely describe or represent such goods
or services as being those of Plaintiff;
b.

Performing any actions or using any trademarks, service marks, or other

words, names, titles, designs, or logos that are likely to cause confusion, to cause mistake, to
deceive, or to otherwise mislead the trade or public into believing that Defendants’ bar and
restaurant services are sponsored by, affiliated with, or in any way connected to Plaintiff and/or
vice versa;
c.

Using any trademarks, service marks, or other words, names, titles,

designs, or logos or engaging in any other conduct that creates a likelihood of injury to the
business reputation of Plaintiff or a likelihood of misappropriating Plaintiff’s distinctive
trademarks and the goodwill associated therewith;
d.

Further infringing Plaintiff’s PELICAN Marks, and/or damaging

Plaintiff’s goodwill; and
e.

Engaging in any business practices, including those complained of herein,

which unfairly compete with or injure Plaintiff, its business, or the goodwill appertaining thereto.
2.

An award of compensatory damages, including consequential, and incidental

damages, in favor of Plaintiff and against Defendants in an amount to be proven at trial.
3.

An award of enhanced damages or lost profits, whichever is proven to be greater,

in favor of Plaintiff and against Defendants, pursuant to 15 U.S.C. § 1117, Oregon State common
law, and as otherwise provided by law.
4.

An accounting and award to Plaintiff and against Defendants of all Defendants’

profits, gains, or unjust enrichment in an amount to be proven at trial.

Page 18 -

COMPLAINT

PDX\124870\186352\ABO\17882954.5

SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:16-cv-00486-BR

5.

Document 1

Filed 03/22/16

Page 19 of 19

An accounting of all of Defendants’ receipts and disbursements, profit and loss

statements, and other financial materials, statements, and books relating to Defendants’
marketing, distribution, sale, and provision of its bar and restaurant services.
6.

An award of Plaintiff’s litigation expenses, including reasonable attorneys’ fees

and costs, pursuant to 15 U.S.C. § 1117.
7.

An award of pre- and post-judgment interest at the maximum rate allowed by law.

8.

That Defendants be directed to file with the Court and serve upon Plaintiff within

thirty (30) days after the issuance of any injunction a written report, under oath, setting forth in
detail the manner and form in which Defendants have complied with the injunction
9.

That the Court grants Plaintiff such other relief as it deems just and proper.

DATED: March 22, 2016
Respectfully submitted,
SCHWABE, WILLIAMSON & WYATT, P.C.
By:

/s/ Michael A. Cohen __________________
Michael A. Cohen, OSB #965776
Email: mcohen@schwabe.com
Nicholas (Nika) F. Aldrich, Jr., OSB
#160306
Email: naldrich@schwabe.com
Alexandra J. Bodnar, OSB #133058
Email: abodnar@schwabe.com
SCHWABE, WILLIAMSON & WYATT,
P.C.
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Facsimile: 503.796.2900
Attorneys for Plaintiff Pelican Brewing
Company

Page 19 -

COMPLAINT

PDX\124870\186352\ABO\17882954.5

SCHWABE, WILLIAMSON & WYATT, P.C.
Attorneys at Law
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900