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Case 3:16-cv-01985-SI

Document 1

Filed 10/13/16

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Jon P. Stride, OSB #903887
Direct Dial: 503.802.2034
Direct Fax: 503.972.3734
Email: jon.stride@tonkon.com
Eric Beach, OSB #105783
Direct Dial: 503.802.2182
Direct Fax: 503.972.3882
Email: eric.beach@tonkon.com
TONKON TORP LLP
1600 Pioneer Tower
888 SW Fifth Avenue
Portland, OR 97204
Attorneys for Plaintiff DVSM, L.L.C.

UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION

DVSM, L.L.C., a Delaware limited liability
company doing business as Endeavour and
Endeavour Capital,

Civil No. 3:16-cv-1985
COMPLAINT

Plaintiff,

(Trademark Infringement)

v.

JURY TRIAL DEMANDED

ENDEAVOUR CAPITAL MINING FUND
L.P, a Grand Cayman limited partnership,
Defendant.
Plaintiff DVSM, L.L.C., doing business as Endeavour and Endeavour Capital
("Endeavour"), for its Complaint against defendant Endeavour Capital Mining Fund L.P.
("Defendant"), alleges as follows:
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PARTIES
1.

Endeavour 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.
2.

On information and belief, Defendant Endeavour Capital Mining Fund

L.P. is a limited partnership organized and existing under the laws of the Cayman Islands.
JURISDICTION AND VENUE
3.

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

1331 and 1338(a). This court has personal jurisdiction over Defendant pursuant to Federal Rule
of Civil Procedure 4(k)(2) because: (i) 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;
(ii) on information and belief, Defendant is not subject to personal jurisdiction in the courts of
any state; and (iii) Defendant has availed itself of the privilege of conducting activities within the
United States and has contacts with the entire United States sufficient to meet the requirement
that the exercise of jurisdiction over Defendant in this court comports with due process.
4.

Venue is proper in this Court pursuant to 28 U.S.C. § 1391.
NATURE OF THE CASE

5.

This is an action for trademark infringement under federal law.

6.

Endeavour is the owner of the federally-registered trademarks

ENDEAVOUR® (Registration Number 4,957,355) and ENDEAVOUR CAPITAL®
(Registration Number 3,943,582) in International Class 36, each for "Private equity funds
investment services, management of private equity investment funds, and related advisory
services in the field of corporate finance."

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7.

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Endeavour and its affiliates have continuously used the ENDEAVOUR

CAPITAL® mark since at least 1990 to promote private equity fund investment and
management services.
8.

Endeavour and its affiliates have continuously used the ENDEAVOUR®

mark since at least 2015 to promote private equity fund investment and management services.
9.

Through its use of both the ENDEAVOUR® and ENDEAVOUR

CAPITAL® marks, Plaintiff has established valuable trademark rights and goodwill throughout
the United States.
10.

On August 12, 2016, Defendant filed a Notice of Exempt Offering of

Securities (Form D) with the United States Securities and Exchange Commission for a
$300,000,000 securities offering, listing "Endeavour Capital Mining Fund L.P." as the Issuer and
JLT Capital Partners LLC of Windham, New Hampshire as the Broker/Dealer for the offering.
11.

Endeavour brings this action to enjoin Defendant from using the name

"Endeavour Capital Mining Fund L.P." or any other name that is confusingly similar to either the
ENDEAVOUR® or the ENDEAVOUR CAPITAL® mark
FACTUAL ALLEGATIONS
12.

U.S. Reg. No. 3,943,582 issued April 11, 2011 for the ENDEAVOUR

CAPITAL® mark and is owned by DVSM, L.L.C.
13.

At least since October 1990, Endeavour has continuously used the

ENDEAVOUR CAPITAL® mark to promote its investment services. Plaintiff has sold and
continues to sell its services under the ENDEAVOUR CAPITAL® mark throughout the United
States and has promoted, and continues to promote, the ENDEAVOUR CAPITAL® mark
through the advertising and sale of its services.

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U.S. Reg. No. 4,957,355 issued May 10, 2016 for the ENDEAVOUR®

mark and is owned by DVSM, L.L.C.
15.

At least since August 1 2015, Endeavour has continuously used the

ENDEAVOUR® mark to promote its investment services. Plaintiff has sold and continues to sell
its services under the ENDEAVOUR® mark throughout the United States and has promoted, and
continues to promote, the ENDEAVOUR® mark through the advertising and sale of its services.
16.

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

ENDEAVOUR® and ENDEAVOUR CAPITAL® marks, the marks have acquired a
distinctiveness and secondary meaning among consumers throughout the United States. Plaintiff
now owns valuable goodwill in both the ENDEAVOUR® and ENDEAVOUR CAPITAL®
marks.
17.

Defendant has been marketing and selling its products and services in

interstate commerce, including using the name "Endeavour Capital Mining Fund L.P."
18.

By virtue of Endeavour's U.S. Registrations, Defendant was put on

constructive notice of Endeavour's rights in the ENDEAVOUR® and ENDEAVOUR
CAPITAL® marks prior to Defendant's use of the "Endeavour Capital Mining Fund L.P." name.
19.

Defendant has refused to cease using the name "Endeavour Capital

Mining Fund L.P." despite Endeavour's demands that it do so.
FIRST CLAIM FOR RELIEF
(Violation of the Lanham Act ― 15 U.S.C. § 1114(1))
20.

Endeavour realleges and incorporates herein its allegations in

Paragraphs 1-19, above.
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21.

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Defendant's use of the name "Endeavour Capital Mining Fund L.P." has

caused, and is likely to continue to cause, confusion, mistake, or deception in that persons are
likely to believe that the services and products Defendant markets and sells are in some way
connected with, sponsored by, approved by, or endorsed by Endeavour. Defendant's use of the
name "Endeavour Capital Mining Fund L.P." violates 15 U.S.C. § 1114(1).
22.

Endeavour has been and will continue to be irreparably harmed by

Defendant's acts of infringement. Endeavour is entitled to a preliminary and permanent
injunction prohibiting Defendant from further acts of infringement under 15 U.S.C. § 1116.
23.

Under 15 U.S.C. § 1117(a), Endeavour is entitled to recover all profits that

Defendant has derived from its infringement.
24.

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

continued use of the infringing mark after receiving Endeavour's demands to cease
and desist from using the infringing mark.
25.

Endeavour 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 failing to accede to Endeavour's demands to cease and desist
from using the infringing mark.
26.

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

exceptional case pursuant to 15 U.S.C. § 1117(a).
JURY DEMAND
Plaintiff requests a jury trial for all issues so triable.
WHEREFORE, Plaintiff prays for judgment in its favor and against Defendant as
follows:

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A.

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Permanently and preliminarily enjoining Defendant or any person acting

in concert with Defendant from:
(i)

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

services or goods using the name "Endeavour Capital Mining Fund L.P." or any other name that
is confusingly similar to the ENDEAVOUR® and ENDEAVOUR CAPITAL® marks; and
(ii)

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 ENDEAVOUR® and ENDEAVOUR CAPITAL® marks.
B.

Ordering Defendant to destroy all advertising, brochures, and other

material in its possession or under its control which contains the term "Endeavour Capital
Mining Fund L.P.";
C.

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

derived from Defendant's use of the name "Endeavour Capital Mining Fund L.P.";
D.

Awarding Plaintiff its costs and disbursements incurred in this action,

together with reasonable attorney fees;
E.

Awarding Plaintiff prejudgment interest on any damages awarded; and

F.

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: October 13, 2016.
TONKON TORP LLP
By: s/ Jon P. Stride
Jon P. Stride, OSB #903887
Direct Dial: 503.802.2034
Direct Fax: 503.972.3734
Email: jon.stride@tonkon.com
Eric Beach, OSB #105783
Direct Dial: 503.802.2182
Direct Fax: 503.972.3882
Email: eric.beach@tonkon.com
Attorneys for Plaintiff DVSM, L.L.C.
008590/09000/7559959v1

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