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Case 3:16-cv-00801-BR

Document 1

Filed 05/09/16

Page 1 of 12

Kristina J. Holm, OSB No. 112607
KJHolm@perkinscoie.com
PERKINS COIE LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Telephone: 503.727.2000
Facsimile: 503.727.2222
William C. Rava (pro hac vice pending)
WRava@perkinscoie.com
PERKINS COIE LLP
1201 Third Avenue, Suite 4900
Seattle, WA 98101-3099
Telephone: 206.359.8000
Facsimile: 206.359.9000
Attorneys for Plaintiff
Simple Finance Technology Corp.

UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION
SIMPLE FINANCE TECHNOLOGY
CORP., a Delaware corporation,
Plaintiff,
v.

No. ______________
COMPLAINT
(Trademark Infringement, Unfair
Competition, Dilution)

SIMPLE RTO, LLC, d/b/a SIMPLE
FINANCE, a Utah limited liability
corporation,
Defendant.

COMPLAINT
85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

Document 1

Filed 05/09/16

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Plaintiff Simple Finance Technology Corp. (“Simple Finance” or “Plaintiff”) states the
following for its Complaint against defendant Simple RTO, LLC d/b/a Simple Finance (“Simple
RTO” or “Defendant”).
I.
1.

INTRODUCTION

This is an action for trademark infringement and unfair competition under the

Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq. (2002) (“Lanham Act”); the Oregon
antidilution statute, ORS 647.107; and the common law.
2.

Since at least as early as 2012, Simple Finance has provided online banking and

other related financial services throughout the United States under its mark SIMPLE. Through
its sophisticated technological solutions and high quality consumer experience, Simple Finance
has built a loyal customer base, earned significant third-party media acclaim, and developed
substantial goodwill in the SIMPLE brand. Many years after the founding of Simple Finance,
defendant Simple RTO adopted the name Simple Finance and began to offer financial services,
including financing, credit and loan services under the marks SIMPLE and SIMPLE FINANCE
in 45 states, with a focus on the Pacific Northwest, including Oregon. Defendant’s use of these
marks has already resulted in actual consumer confusion, is highly likely to lead to additional
consumer confusion, and will cause irreparable harm to Simple Finance’s business, reputation,
and goodwill if not enjoined.
II.
3.

PARTIES

Simple Finance is a Delaware corporation with its principal place of business in

Portland, Oregon.
4.

Simple RTO d/b/a Simple Finance is a Utah limited liability corporation with its

principal place of business in Midvale, Utah. Simple RTO is registered to do business in
Oregon.

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COMPLAINT

85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

III.
5.

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JURISDICTION AND VENUE

This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338.

This Court has jurisdiction over Simple Finance’s related state and common-law claims pursuant
to 28 U.S.C. §§ 1338 and 1367.
6.

This Court has personal jurisdiction over Simple RTO because Simple RTO is

registered to do business in Oregon and in fact does business with merchants and customers in
Oregon, including at least with Furniture & Beds of Oregon, Inc., an Oregon corporation with its
principal place of business in Albany, Oregon in this District, which in turn targets Oregon
consumers with Defendant’s infringing marks.
7.

This District is a proper venue pursuant to 28 U.S.C. § 1391(b) Defendant does

business in this District, Simple Finance is being harmed in this District, and a substantial part of
the events giving rise to the claim occurred here.
IV.
A.

FACTS COMMON TO ALL CLAIMS FOR RELIEF

Simple Finance, its Business and its SIMPLE Mark
8.

In 2009, Josh Reich and Shamir Karkal teamed up to build a consumer friendly,

retail bank with a focus on using technology to make banking simple and easy to understand. At
least as early as 2012, the company adopted and started using the mark SIMPLE for its financial
services offerings throughout the United States.
9.

Simple Finance offers more than just financial services under the SIMPLE

brand—it provides an all-inclusive finance product. Bank customers download the SIMPLE app,
which provides many tools to manage the customer’s money, including interactive tracking of a
customer’s finances and the use of cutting edge design and behavioral economics to encourage
customers to save more and spend responsibly. Simple Finance stands out from traditional banks
and financial service providers as a consumer-friendly, no-fee, no hassle option. It provides
these offerings using the SIMPLE mark.

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COMPLAINT

85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

10.

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Simple Finance markets the SIMPLE mark extensively through social media and

through its acclaimed website and blog. This has been successful. Simple Finance has over
100,000 followers on various social media services. It has also received a large amount of
positive press from various print and online media outlets, including the following (attached as
Exhibits 1 through 5 hereto):

11.

Jenna Wortham, A Financial Service for People Fed Up With Banks, New
York Times (Jan. 8, 2013),
http://www.nytimes.com/2013/01/09/technology/a-financial-service-forpeople-fed-up-with-banks.html?_r=0;

Peter Ha, Want to Replace Your Bank? Use This, Gizmodo (Jan. 15, 2013),
http://gizmodo.com/5976146/want-to-replace-your-bank-use-this;

Marcus Wohlsen, Hack Your Way to Saving Money By Hiding How Much You
Really Have, Wired Magazine (Feb. 19, 2013),
http://www.wired.com/2013/02/simple-app-savings-hack/;

Joseph Pisani, Startups Offer Banking for Smartphone Users, Associated
Press (Aug. 29, 2014), http://bigstory.ap.org/article/startups-offer-bankingsmartphone-users; and

Samantha Sharf, Simple CEO On How A Bank Can Be a Brand You Love,
Forbes (Sept. 4, 2014),
http://www.forbes.com/sites/samanthasharf/2014/09/04/under-30-summitsimple-ceo-on-how-a-bank-can-be-a-brand-you-love/#310ff7cc7333.

Simple Finance’s considerable efforts have resulted in its SIMPLE brand

becoming ubiquitous in the world of online banking. A Google search for the word “simple”
returns Simple Finance’s website as the first result. Similarly, the SIMPLE app is the first result
on a search for “Simple” on the Android and iOS App Store. In fact, the SIMPLE app has been
downloaded over 200,000 times across both app stores and holds better than a four-and-a-half
star rating on both platforms.
12.

Simple Finance filed an application with the USPTO for the SIMPLE mark for

use in connection with banking and financing services on or about June 30, 2011 (Serial
No. 85360756). That application was published for opposition on October 6, 2015, and no

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COMPLAINT

85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

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oppositions were registered. On April 19, 2016, Simple Finance filed its Statement of Use for
the SIMPLE mark with the USPTO; a registration should issue soon.
B.

Defendant’s Unlawful Activities
13.

On information and belief, on or about 2013, Simple RTO began using the marks

SIMPLE and SIMPLE FINANCE for its financial and related services.
14.

On information and belief, Simple RTO was aware of Simple Finance’s use of the

SIMPLE mark at the time it began using the marks.
15.

As a direct and proximate result of Simple RTO’s adoption and use of the

SIMPLE and SIMPLE FINANCE marks, consumers have experienced actual confusion.
16.

On or about September 11, 2015, Simple Finance sent Simple RTO a cease and

desist letter.
17.

On or about October 2, 2015, without responding to Simple Finance’s September

11, 2015 letter, Simple RTO filed a trademark application for the mark SIMPLE FINANCE
(Serial No. 86776645) for “advertising services,” “consumer lending services, credit and loan
services,” and for “providing a web site featuring technology that enables users to finance, lease
or rent-to-own consumer goods.”
18.

After Simple Finance and Simple RTO exchanged several letters in late 2015,

sometime between approximately January 20, 2016 and mid-February 2016, Simple RTO
redesigned its website to mimic the design of Simple Finance’s website:

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COMPLAINT

85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

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Image of Simple Finance’s website as of
approximately January 20, 2016

Image of Simple RTO’s website as of
approximately January 20, 2016
(prior to re-design)

Image of Simple Finance’s website as of
approximately March 2016

Image of Simple RTO’s website as of
approximately March 10, 2016
(after re-design)

COMPLAINT

85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

Document 1

Filed 05/09/16

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Image of Simple Finance’s website as of
approximately February 12, 2016

Image of Simple RTO’s website as of
approximately February 12, 2016
(after re-design)

Image of Simple Finance’s website video as of
approximately February 12, 2016

Image of Simple RTO’s website as of
approximately February 12, 2016
(after re-design)

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COMPLAINT

85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

19.

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Simple RTO has refused to cease using Simple Finance’s SIMPLE mark, has

knowingly, willfully, and intentionally copied Simple Finance’s SIMPLE mark and has
attempted to position its financial service offerings so as to take advantage of the goodwill
acquired in the SIMPLE mark by Simple Finance.
20.

Defendant’s use of the SIMPLE and SIMPLE FINANCE marks has produced,

and inevitably will continue to produce, consumer confusion with Simple Finance and its
SIMPLE mark.
21.

Simple Finance has been damaged and will suffer a diminished and tarnished

reputation of its hard-earned and carefully-cultivated SIMPLE brand and reputation if Defendant
is not enjoined.
FIRST CLAIM FOR RELIEF
(Federal Trademark Infringement of Mark)
22.

Simple Finance incorporates the allegations of the foregoing paragraphs as though

fully set forth herein.
23.

Simple Finance owns protectable trademark rights in the mark SIMPLE for use in

connection with online banking, financing, and related offerings. These rights are valid and
enforceable, and are superior to any rights in any mark that incorporates the term “simple” that
Defendant might own.
24.

Defendant’s use in commerce of the SIMPLE FINANCE and SIMPLE marks for

financial and web-based lending services has caused and is likely to continue to cause confusion
with Simple Finance’s SIMPLE mark for online banking and web-based financial services, and
infringes on Simple Finance’s rights in the SIMPLE mark.
25.

Defendant knew or had reason to know of Simple Finance’s ownership and use of

the SIMPLE mark and that their use of the SIMPLE and SIMPLE FINANCE marks in
connection with their services would infringe on Simple Finance’s SIMPLE mark in violation of
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
7-

COMPLAINT

85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

26.

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These acts of infringement have caused and are causing great and irreparable

harm to Simple Finance’s business, reputation, and goodwill.
27.

As a result of the trademark infringement described above, Simple Finance is

entitled to injunctive relief against Defendant and to recover costs and reasonable attorneys’ fees
pursuant to 15 U.S.C. §§ 1125(a), 1116, and 1117.
SECOND CLAIM FOR RELIEF
(Federal Unfair Competition)
28.

Simple Finance incorporates the allegations of the foregoing paragraphs as though

fully set forth herein.
29.

Defendant’s use of the SIMPLE and SIMPLE FINANCE marks are false

designations of origin, likely to cause and having caused confusion or mistake, and are likely to
deceive or have deceived as to the affiliation, connection, or association of Defendant with
Simple Finance and of Simple Finance with Defendant.
30.

These actions have caused Simple Finance irreparable harm, and, unless enjoined,

will continue to cause irreparable harm to Simple Finance’s business, reputation, and goodwill.
31.

As a result of the unfair competition described above, Simple Finance is entitled

to injunctive relief against Defendant and to recover costs and reasonable attorneys’ fees
pursuant to 15 U.S.C. §§ 1125(a), 1116, and 1117.
THIRD CLAIM FOR RELIEF
(Common Law Trademark Infringement and Unfair Competition)
32.

Simple Finance incorporates the allegations of the foregoing paragraphs as though

fully set forth herein.
33.

Defendant’s actions as described herein constitute common law trademark

infringement and unfair competition in violation of the common law of the State of Oregon, and
have caused and is likely to continue to cause confusion among consumers, in addition to injury
to Simple Finance’s reputation and goodwill associated with the SIMPLE mark.

8-

COMPLAINT

85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

34.

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These actions have caused Simple Finance irreparable harm and, unless enjoined,

will continue to cause irreparable harm to Simple Finance’s business, reputation, and goodwill.
35.

As a result of the common law trademark infringement and unfair competition

described above, Simple Finance is entitled to relief, including injunctive relief and costs.
FOURTH CLAIM FOR RELIEF
(Dilution Under ORS 647.107)
36.

Simple Finance incorporates the allegations of the foregoing paragraphs as though

fully set forth herein.
37.

Simple Finance has expended significant efforts in promoting the SIMPLE mark

in the State of Oregon, and the mark has become a famous, distinctive, and well known symbol
among Oregonians as well as nation-wide.
38.

Defendant’s use of the SIMPLE and SIMPLE FINANCE marks dilutes and is

likely to dilute the distinctiveness of the SIMPLE mark by undermining an ordinary consumer’s
identification of the mark with Simple Finance, in violation of ORS 647.107.
39.

These actions have caused Simple Finance irreparable harm, and unless enjoined,

will continue to cause irreparable harm and a likelihood of confusion among ordinary consumers,
in addition to injury to Simple Finance’s valuable reputation and the goodwill associated with the
SIMPLE mark.
40.

As a result of the dilution and injury to business reputation described above,

Simple Finance is entitled to relief, including injunctive relief, costs and reasonable attorneys’
fees pursuant to ORS 647.105 and 647.107.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays that:
1.

An order that Defendant and all of their agents, officers, employees,

representatives, successors, assigns, attorneys, and all other persons acting for, with, by through

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COMPLAINT

85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

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or under authority from Defendant, or in concert or participation with Defendant, and each of
them, be enjoined from:
a. using the SIMPLE mark or any other copy, reproduction,
colorable imitation, simulation of the SIMPLE mark, or a
confusing similar mark, in association with their goods or
services;
b. using any trademark, service mark, name, logo, design or source
designation of any kind or in connection with their goods or
services that is a copy, reproduction, colorable imitation, or
simulation of the trademarks, service marks, names or logos of
Simple Finance;
c. using any trademark, service mark, name, domain name, logo,
design or source designation of any kind on or in connection with
Defendant’s goods or services which is likely to cause confusion,
mistake, deception or public misunderstanding that such goods or
services are produced or provided in association or in any way
connected to Simple Finance; and
d. using any trademark, service mark, name, domain name, logo,
design, or source designation of any kind on or in connection with
Defendant’s goods or services that dilutes, tarnishes, or is likely to
dilute or tarnish the distinctiveness of the trademarks, service
marks, names or logos of Simple Finance.
2.

An award to Simple Finance of its costs (including expert fees), disbursements,

and reasonable attorneys’ fees incurred in this action, pursuant to 15 U.S.C. § 1117,
ORS 647.105, and the equity powers of this court.

10- COMPLAINT
85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222

Case 3:16-cv-00801-BR

3.

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An order directing the USPTO to deny the pending application Serial

No. 86776645; and
4.

Plaintiff be awarded such other and further relief as the Court may deem just.

DATED: May 9, 2016

PERKINS COIE LLP
By: s/ Kristina J. Holm
Kristina J. Holm, OSB No. 112607
KJHolm@perkinscoie.com
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Telephone: 503.727.2000
Facsimile: 503.727.2222
William C. Rava (pro hac vice pending)
WRava@perkinscoie.com
PERKINS COIE LLP
1201 Third Avenue, Suite 4900
Seattle, WA 98101-3099
Telephone: 206.359.8000
Facsimile: 206.359.9000
Attorneys for Plaintiff
Simple Finance Technology Corp.

11- COMPLAINT
85922-7000/LEGAL130599803.10

Perkins Coie LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Phone: 503.727.2000
Fax: 503.727.2222