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Case 3:16-cv-01477-BR

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J. Peter Staples, OSB No. 79404
E-mail: pete@chernofflaw.com
Susan D. Pitchford, OSB No. 50945
E-mail: sdp@chernofflaw.com
Amelia S. Forsberg, OSB No. 133611
E-mail: aforsberg@chernofflaw.com
CHERNOFF VILHAUER LLP
601 SW Second Avenue, Suite 1600
Portland, Oregon 97204
Telephone: (503) 227-5631
Attorneys for Plaintiff Tillamook Country Smoker, Inc.
UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
TILLAMOOK COUNTRY SMOKER,
INC., an Oregon corporation,
Plaintiff,

Civil Case No. 3:16-cv-1477
COMPLAINT FOR DECLARATORY
JUDGMENT OF NON-INFRINGEMENT
OF TRADEMARK AND COPYRIGHT

v.
TRADEMARK CASE
S & E GOURMET CUTS, INC. a
California corporation, d/b/a COUNTRY
ARCHER; and COUNTRY ARCHER,
INC., a suspended California corporation,

JURY TRIAL REQUESTED

Defendant.

For its complaint against defendants, plaintiff alleges the following:
1.

Tillamook Country Smoker, Inc. is an Oregon corporation with a principal place

of business in Bay City (Tillamook County), Oregon.
2.

Upon information and belief, S & E Gourmet Cuts, Inc. (“S&E”) is a California

corporation having a place of business at 379 E. Industrial Rd., San Bernardino, California
92408.

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3.

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Upon information and belief, Country Archer, Inc. (“Country Archer”) is a

suspended California corporation having a place of business at 22064 Van Buren Street, Grand
Terrace, California 92313.
4.

This case arises under the trademark laws and copyright laws of the United

States pursuant to 15 U.S.C. §§ 1051-1127 and 17 U.S.C. §§ 101-1332. This Court has
jurisdiction of the subject matter of this action pursuant to 28 U.S.C. §§ 1331 and 1338(a). The
request for declaratory relief is based on 28 U.S.C. §§2201 and 2202.
5.

This court has personal jurisdiction over defendants, or one of them, because,

upon information and belief, defendants, or one of them, advertise and sell COUNTRY
ARCHER jerky within this state, have sent a letter into this state threatening a resident of this
state, and have otherwise established contacts within this state sufficient to permit the exercise of
personal jurisdiction. Venue is proper in this district pursuant to 28 U.S.C. §1391(b)(2) and (3).
FACTS
6.

Tillamook Country Smoker has used the mark TILLAMOOK COUNTRY

SMOKER since 1975 for processed meats and is the owner of U.S. Trademark Registration No.
3,214,413 for the mark TILLAMOOK COUNTRY SMOKER for processed meats sold
refrigerated and unrefrigerated as snack food filed September 21, 1999, issued March 6, 2007,
and claiming a date of first use in 1975. A Trademark Office Record of this trademark
registration is attached as Exhibit A. The products with which this mark is used are referred to
hereinafter as “jerky.”
7.

Upon information and belief, defendants, or one of them, are the owner of U.S.

Trademark Registration No. 4,291,993 for the mark COUNTRY ARCHER for beef jerky; jerky,
filed July 2, 2012, issued February 19, 2013, and claiming a date of first use as October 1, 2000.
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A Trademark Office Record of this trademark registration is attached as Exhibit B.
8.

Upon information and belief, defendants, or one of them, are the owner of U.S.

Trademark Registration No. 4,423,957 for the mark COUNTRY ARCHER JERKY CO EST
1977 and Design for beef jerky; jerky, filed on July 2, 2012, issued October 29, 2013, and
claiming a date of first use of June 23, 2012. The registration states that “color is not claimed as
a feature of the mark.” A Trademark Office Record of this trademark registration is attached as
Exhibit C.
9.

Tillamook Country Smoker Products are sold throughout the U.S. and in foreign

countries. Upon information and belief, Tillamook Country Smoker is one of the four largest
purveyors of jerky in the United States.
10.

TILLAMOOK COUNTRY SMOKER has become well known for quality jerky.

11.

Upon information and belief, defendants , or one of them, were aware of

Tillamook Country Smoker’s use of TILLAMOOK COUNTRY SMOKER prior to adoption and
first use of the trademarks shown in Exhibits B and C.
12.

Pursuant to 15 U.S.C. § 1072, defendants, or one of them, had statutory

constructive notice of Tillamook Country Smoker’s registration for TILLAMOOK COUNTRY
SMOKER prior to adoption of the marks shown in Exhibits B and C.
13.

On July 12, 2016, Tillamook Country Smoker’s undersigned attorney received a

letter from the Stradling Law Firm (“Stradling”) on behalf of S & E Gourmet. Prior to receipt of
this letter neither Tillamook Country Smoker nor its representatives had any communication with
Stradling or defendants regarding trademarks, trade dress, copyrights or unfair competition and
were unaware that a dispute or disagreement, or even the potential for a dispute or disagreement,
existed between parties.

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14.

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The July 12 letter, although labeled as a “Confidential Settlement

Communications Pursuant Rule 408 of the Federal Rules of Evidence,” is in truth a “demand
letter” accusing Tillamook Country Smoker of trademark infringement, copyright infringement,
trade dress infringement and violation of California’s Unfair Competition Law.
15.

Among other things, the July 12 demand letter:
a. Accused Tillamook Country Smoker of “deliberate” “wholesale copying” of
Country Archer’s packaging design elements and represented that this
allegation was based upon an “investigation” conducted by Stradling;
b. Accused Tillamook Country Smoker of going to great lengths to copy the
COUNTRY ARCHER trademark and product packaging;
c. Stated that design elements in the Tillamook Country Smoker product
packaging, taken in their totality, violate Country Archer’s copyright and
trade dress rights;
d. Alleged that Tillamook Country Smoker’s TILLAMOOK COUNTRY
SMOKER trademark as it appears on Tillamook Country Smoker’s product
packaging and defendants’ COUNTRY ARCHER trademarks are
“confusingly similar,” referring to the identical black-and-white color
scheme and font, as well as the product packaging similarities.
e. Listed and described the specific federal and state claims which may be
brought against Tillamook Country Smoker including trademark
infringement, copyright infringement, trade dress infringement, and violation
of the Cal. Bus. & Prof. Code §17200 (unfair competition);

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f. Stated that “Country Archer” is committed to protecting its COUNTRY
ARCHER black-and-white trademark and product packaging…”;
g. Requested that Tillamook Country Smoker modify its trademark and modify
its new product packaging; and
h. Offered Tillamook Country Smoker “a reasonable amount of time to modify
its present trademarks and sell through its present inventory of products that
are marketed and sold in confusingly similar packaging.”
16.

The term “confusingly similar” is a commonly accepted substitution for

“likelihood of confusion” which is the statutory language defining “infringement” (see 15 U.S.C.
§§ 1117(1)(a) and 1125(a)(1)(A).)
17.

In connection with the assertion that the respective trademarks of Tillamook

Country Smoker and defendants are too similar, the July 12 letter presented the comparison
below, also attached as Exhibit D.

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18.

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In connection with the assertion that the respective product packaging is too

similar, the July 12 letter presented the comparison below, also attached as Exhibit E.

19.

The July 12 letter is a barely disguised threat to sue Tillamook Country Smoker

for trademark infringement, copyright infringement, trade dress infringement and violation of
California’s Unfair Competition law if Tillamook Country Smoker does not comply with
defendants’ demands by a specific deadline, and there is a clear and immediate justiciable
controversy between plaintiff and defendants.
20.

Considering all the circumstances there is a substantial controversy between

parties having adverse legal interests of sufficient immediacy and reality to warrant the issuance
of a declaratory judgment.
21.

Tillamook Country Smoker’s use of its current trademark and trade dress does

not infringe Country Archer’s trademark, trade dress or copyright rights, and does not violate
California’s Unfair Competition law, and there is no objectively reasonable basis for defendants

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to claim that Tillamook Country Smoker’s use of its trademark and packaging violates Country
Archer’s rights.
22.

The thinly veiled threat of a lawsuit for the claims described above creates

uncertainty and apprehension and Tillamook Country Smoker requests that this Court confirm by
declaratory judgment that Tillamook Country Smoker may continue to use its trademark and
packaging as currently configured.
FIRST CLAIM FOR RELIEF
(Declaration of Non-Infringement of Trademarks)
23.

Tillamook Country Smoker incorporates the allegations of paragraphs 1 through

22 as though fully stated herein.
24.

Tillamook Country Smoker is the owner of the trademark TILLAMOOK

COUNTRY SMOKER and Trademark Registration No. 3,214,413. The registration is valid and
subsisting and Tillamook Country Smoker is entitled to use the mark TILLAMOOK COUNTRY
SMOKER for jerky.
25.

Tillamook Country Smoker’s use of TILLAMOOK COUNTRY SMOKER does

not violate defendants’ rights in either of defendants’ registered trademarks shown in Exhibits B
and C, nor any common law rights in said marks.
26.

The threats by defendants, or one of them, are unreasonable and in bad faith

making this case exceptional and Tillamook Country Smoker is entitled to recover its reasonable
attorney fees pursuant to 15 U.S.C. § 1117(a).
SECOND CLAIM FOR RELIEF
(Declaration of Non-Infringement of Trade Dress)
27.

Tillamook Country Smoker incorporates the allegations of paragraphs 1 through

26 as though fully stated herein.

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28.

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Tillamook Country Smoker’s use of its trademark TILLAMOOK COUNTRY

SMOKER in the manner shown in Exhibits D and E does not violate any trademark rights of
defendants.
29.

Tillamook Country Smoker’s use of its product packaging as shown in Exhibit E

does not violate any trade dress rights of defendants.
30.

The threats by defendants, or one of them, are unreasonable and in bad faith

making this case exceptional and Tillamook Country Smoker is entitled to recover its reasonable
attorney fees pursuant to 15 U.S.C. § 1117(a).
THIRD CLAIM FOR RELIEF
(Declaration of Non-Infringement of Copyright)
31.

Tillamook Country Smoker incorporates the allegations of paragraphs 1 through

30 as though fully stated herein.
32.

Defendants, or one of them, claim to own U.S. Copyright Registration No. VA

0001960764 for the design of the Country Archer product packaging shown below.

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33.

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Tillamook Country Smoker’s product packaging below does not violate any

copyright rights of defendants.

34.

The claim by defendants, or one of them, that Tillamook Country Smoker’s

product packaging infringes defendants’ copyright rights is unreasonable and in bad faith and
Tillamook Country Smoker is entitled to recover its reasonable attorney fees pursuant to 17
U.S.C. § 505.
FOURTH CLAIM FOR RELIEF
(Declaration of Non-Infringement of Cal. Bus. & Prof. Code §17200)
35.

Tillamook Country Smoker incorporates the allegations of paragraphs 1 through

34 as though fully stated herein.
36.

Tillamook Country Smoker’s activities as described herein do not violate those

portions of California’s Unfair Competition laws pertaining to the matters described above.

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PRAYER
WHEREFORE, Plaintiff Tillamook Country Smoker prays for declaratory judgment in
its favor on all claims for relief and for an order:
A.

That Tillamook Country Smoker is the owner of the mark TILLAMOOK

COUNTERY SMOKER for processed meats and its use of the mark for processed meats does
not infringe the rights of defendants, or one of them, in the mark COUNTRY ARCHER;
B.

That U.S. Trademark Registration 3,214,413 is valid and subsisting;

C.

That Tillamook Country Smoker’s use of its mark TILLAMOOK COUNTRY

SMOKER in the manner shown in Exhibit D does not infringe any rights of defendants, or one of
them, in COUNTRY ARCHER;
D.

That Tillamook Country Smoker’s product packaging as shown in Exhibit E does

not infringe the trade dress rights of defendants, or one of them;
E.

That Tillamook Country Smoker’s product packaging as shown in Exhibit E does

not infringe any copyright rights of defendants, or one of them, in defendants product packaging
including the claimed registered form of No. VA 0001960764;
F.

That Tillamook Country Smoker’s activities described herein do not violate Cal.

Bus. & Prof. Code §17200;
G.

That the threats by defendants, or one of them, to sue Tillamook Country Smoker

for trademark infringement and trade dress infringement were unreasonable and in bad faith,
making this case exceptional and Tillamook Country Smoker is entitled to an award of its costs
and reasonable attorney fees pursuant to 15 U.S.C. § 1117(a);
H.

That the copyright infringement claims by defendants, or one of them, were

unreasonable and in bad faith, and Tillamook Country Smoker is entitled to an award of its
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reasonable attorney fees pursuant to 17 U.S.C. § 505;
I.

Enjoining defendants from asserting that Tillamook Country Smoker’s use of its

trademark in the form shown herein and packaging in the form shown herein violates the
trademark, trade dress or copyright rights of defendants; and
J.

For such other relief as the court shall deem appropriate.
DEMAND FOR JURY TRIAL

Plaintiff demands trial by jury on all claims and issues so triable.

DATED: July 20, 2016

CHERNOFF VILHAUER LLP
/s/ J. Peter Staples
J. Peter Staples, OSB No. 794042
Telephone: (503) 227-5631
Of Attorneys for Plaintiff Tillamook Country
Smoker, Inc.

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