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Case 3:16-cv-02217-AC

Document 1

Filed 11/23/16

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Elizabeth Tedesco Milesnick, OSB No. 050933
elizabeth.milesnick@millernash.com
MILLER NASH GRAHAM & DUNN LLP
111 S.W. Fifth Avenue, Suite 3400
Portland, Oregon 97204
Phone: 503.224.5858
Fax: 503.224.0155
Attorneys for Plaintiff

UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION
ROAMBUILT LLC, an Oregon limited
liability company,

Case No.
COMPLAINT FOR
TRADEMARK INFRINGEMENT
AND UNFAIR COMPETITION
(Injunctive Relief Sought)

Plaintiff,
v.
ROAM, LLC, an Oregon limited liability
company,

DEMAND FOR JURY TRIAL

Defendant.
Plaintiff ROAMBUILT LLC (hereinafter "ROAMBUILT") alleges as follows:
INTRODUCTION
1.

This is an action at law and in equity for (i) trademark infringement of

plaintiff's ROAMBUILT mark; (ii) federal unfair competition; and (iii) common law trademark
infringement and unfair competition stemming from defendant Roam, LLC ("Roam")'s willful
and knowing use of the ROAM mark, causing actual consumer confusion in the automotive

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Complaint for Trademark Infringement and Unfair Competition

4821-0046-7261.1

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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market with respect to the source, sponsorship, or approval of both ROAMBUILT and Roam's
goods and services, and causing irreparable harm to ROAMBUILT's business, reputation, and
goodwill.
JURISDICTION AND VENUE
2.

This Court has subject matter jurisdiction under Section 39 of the Lanham

Act, 15 USC § 1121, and under 28 USC §§ 1331 and 1338. This Court has jurisdiction over
ROAMBUILT's related state and common-law claims pursuant to 28 USC §§ 1338 and 1367.
3.

This Court has personal jurisdiction over Roam because the company has

its principal place of business in Oregon.
4.

This District is a proper venue pursuant to 28 USC § 1391(b)(2) because a

substantial part of the events or omissions giving rise to ROAMBUILT's claims occurred in this
District.
THE PARTIES
5.

ROAMBUILT is a limited liability company organized and existing under

the laws of the state of Oregon, with its place of business at 2800 N.W. Beuhla Vista Terrace,
Portland, Oregon 97210. ROAMBUILT is in the business of developing and selling custom
parts for Mercedes Benz Sprinter® vans and other vehicles.
6.

On information and belief, Roam is a limited liability company organized

and existing under the laws of the state of Oregon, with its place of business at 7415 S.W. 53rd
Avenue, Portland, Oregon 97219. On information and belief, Roam is in the business of renting
a camper van for recreational use.

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Complaint for Trademark Infringement and Unfair Competition

4821-0046-7261.1

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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FACTS COMMON TO ALL CLAIMS FOR RELIEF
7.

In 2014, ROAMBUILT founder Cec Annett began to lay the groundwork

for, and gauge interest in, a company that would develop and sell custom parts for Mercedes
Benz Sprinter® vans and other vehicles. Annett told potential business partners and customers
that he was thinking of using the name "ROAMBUILT" for the company.
8.

By spring 2015, Annett had officially chosen the ROAMBUILT mark for

his company. In June 2015, he attended the NW Overland Rally in Plain, Washington, spending
three days at the Mercedes Benz of Seattle booth discussing customization ideas with Sprinter
customers and telling some of them that his company was called ROAMBUILT.
9.

In summer and fall 2015, Annett met with multiple ROAMBUILT clients

and with press contacts regarding the company and its customization products, using the name
ROAMBUILT for the company.
10.

On August 26, 2015, Annett registered the URL www.roambuilt.com, and

on December 10, 2015, the website went live, using the ROAMBUILT mark and logo.
11.

ROAMBUILT continued to grow throughout early 2016, gaining more

and more attention from the automotive aftermarket community, including press and social
media posts stemming from ROAMBUILT's displays at the May 2016 NW Overland Expo West
and the June 2016 NW Overland Rally, among others.
12.

On June 2, 2016, ROAMBUILT received an email from Roam, stating

"We came across you on Instagram and noticed you have the same typeface and name as us,"
and proposing that the two companies have a meeting. Unbeknownst to ROAMBUILT, that
same day, Roam's principal Gretchen Bayless registered a company called "ROAM BUILT,

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Complaint for Trademark Infringement and Unfair Competition

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MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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LLC" with the Oregon Secretary of State. On information and belief, Roam had no intention of
using the name ROAM BUILT for its business.
13.

On June 12, 2016, ROAMBUILT filed an application with the United

States Patent and Trademark Office, Serial No. 87068544, to register ROAMBUILT in
connection with "automotive parts."
14.

On June 13, 2016, ROAMBUILT filed an application with the United

States Patent and Trademark Office, Serial No. 87068742, to register the ROAMBUILT logo,
shown below, in connection with "automotive parts."

15.

On June 13, 2016, Annett met with Bayless to discuss their companies'

respective business plans and any possibilities for coexistence.
16.

On June 16, 2016, Bayless followed up to request another meeting with

ROAMBUILT. On June 23, 2016, Annett responded by proposing a date for a second meeting.
17.

While Annett was waiting for a response to his proposed meeting date, he

received a letter dated June 27, 2016 from counsel for Roam, demanding that ROAMBUILT
"immediately cease and desist its infringement of the Roam Mark by immediately changing the
name of Roambuilt…" In the letter, Roam admits that the companies' respective uses of ROAM
and ROAMBUILT are confusingly similar, stating
Roambuilt's use is semantically identical to Roam's. Roambuilt also uses the
stylistic characteristics of the Roam Mark created by Roam. Additionally, as
Roambuilt and Roam are both located in Portland, Roambuilt's use is in the
identical geographic area as Roam's with a clear overlap in targeted consumers.
All of these factors clearly demonstrate a likelihood of confusion for consumers…

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Complaint for Trademark Infringement and Unfair Competition

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MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

Case 3:16-cv-02217-AC

18.

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Also on June 28, 2016, Roam filed an application with the United States

Patent and Trademark Office, Serial No. 87086602, for the stylized version of the ROAM mark
shown below, in connection with "Rental of land motor vehicles and recreational vehicles,
namely, campervans and camping accessories" and "Automobile customization services,"
averring that it had already made actual use of the mark in both categories.

19.

Counsel for ROAMBUILT and Roam have exchanged correspondence

regarding the parties' evidence of first commercial use of their respective marks. Although
Roam appears to have prepared to use the ROAM trademark in connection with van rental
services in mid-2015, on information and belief, Roam did not make actual commercial use of
the ROAM trademark for that purpose until February 2016 at the earliest. On information and
belief, Roam has never used ROAM in connection with "automobile customization services" and
has never intended to do so.
20.

On information and belief, ROAMBUILT and Roam have attended

several of the same trade shows and conventions relating to goods and services in the automotive
market.
21.

On October 6, 2016, and again on October 31, 2016, ROAMBUILT wrote

to Roam and pointed out that ROAMBUILT's first commercial use of the ROAMBUILT mark
predates Roam's first commercial use of the ROAM mark, and accordingly, that "ROAMBUILT
has trademark priority in the automotive market, making Roam, LLC liable for willful trademark
infringement if it continues to use ROAM."

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Complaint for Trademark Infringement and Unfair Competition

4821-0046-7261.1

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

Case 3:16-cv-02217-AC

22.

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ROAMBUILT sought written confirmation by November 7, 2016 that

Roam would phase out all use of ROAM, or any other mark confusingly similar to
ROAMBUILT. To date, Roam continues to use the ROAM mark and has indicated no
willingness to phase out such use.
23.

On November 9, 2016, ROAMBUILT received an email from a potential

customer inquiring about ROAMBUILT and its offerings, and also asking, "Is Roam Built
affiliated with Roam Rentals?"
FIRST CLAIM FOR RELIEF
(Infringement of Mark ROAMBUILT)
24.

ROAMBUILT realleges and incorporates by reference the allegations of

the foregoing paragraphs as though fully set forth herein.
25.

Roam's use in commerce of ROAM for van rental services has caused and

is likely to continue to cause confusion with ROAMBUILT's use of the trademark
ROAMBUILT for aftermarket automotive parts and infringes ROAMBUILT's rights in the
ROAMBUILT trademark.
26.

Roam knows of ROAMBUILT's ownership and use of the ROAMBUILT

mark and that its use of the mark in connection with van rental services would infringe
ROAMBUILT's mark in violation of Section 43(a) of the Lanham Act, 15 USC § 1125(a).
27.

Roam's actions have caused ROAMBUILT irreparable harm and, unless

enjoined, Roam's actions will continue to cause irreparable harm to ROAMBUILT's business,
reputation, and goodwill.

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Complaint for Trademark Infringement and Unfair Competition

4821-0046-7261.1

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

Case 3:16-cv-02217-AC

28.

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As a result of the trademark infringement as described above,

ROAMBUILT is entitled to relief, including injunctive relief, recovery of Roam's profits, actual
damages, reasonable royalty, enhanced profits, and damages, costs, and reasonable attorney fees
pursuant to 15 USC §§ 1125(a), 1116, and 1117.
SECOND CLAIM FOR RELIEF
(Federal Unfair Competition)
29.

ROAMBUILT realleges and incorporates by reference the allegations of

the foregoing paragraphs as though fully set forth herein.
30.

Roam's use of the ROAM mark is a false designation of origin, which is

likely to cause and has caused confusion and mistake, and is likely to deceive and has deceived
as to the affiliation, connection, or association of Roam with ROAMBUILT, and of
ROAMBUILT with Roam.
31.

Roam's actions as alleged herein constitute the use in commerce of false

designations of origin and false or misleading descriptions or representations, tending to falsely
or misleadingly describe and/or represent Roam's services as those of ROAMBUILT, directly
and/or secondarily, in violation of 15 USC § 1125(a), and tending to falsely or misleadingly
describe and/or represent ROAMBUILT's products as those of Roam.
32.

Roam's actions have caused ROAMBUILT irreparable harm and, unless

enjoined, Roam's actions will continue to cause irreparable harm to ROAMBUILT's business,
reputation, and goodwill.
33.

As a result of the unfair competition as described above, ROAMBUILT is

entitled to relief, including injunctive relief, recovery of Roam's profits, actual damages,

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Complaint for Trademark Infringement and Unfair Competition

4821-0046-7261.1

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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reasonable royalty, enhanced profits, and damages, costs, and reasonable attorney fees pursuant
to 15 USC §§ 1125(a), 1116, and 1117.
THIRD CLAIM FOR RELIEF
(Common Law Trademark Infringement and Unfair Competition)
34.

ROAMBUILT realleges and incorporates by reference the allegations of

the foregoing paragraphs as though fully set forth herein.
35.

Roam'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, unless enjoined by this Court, will continue to cause a likelihood of confusion
among consumers, in addition to injury to ROAMBUILT's valuable reputation and goodwill
associated with the ROAMBUILT mark.
36.

Roam's actions have caused ROAMBUILT irreparable harm and, unless

enjoined, Roam's actions will continue to cause irreparable harm to ROAMBUILT's business,
reputation, and goodwill.
37.

As a result of the common law trademark infringement and unfair

competition described above, ROAMBUILT is entitled to relief, including injunctive relief,
recovery of Roam's profits, reasonable royalty, actual damages, and costs.
PRAYER FOR RELIEF
WHEREFORE, ROAMBUILT respectfully requests the following relief:
1.

A judgment in favor of ROAMBUILT requiring Roam to account for and

pay to ROAMBUILT all profits wrongfully derived by Roam through its unlawful acts set forth

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Complaint for Trademark Infringement and Unfair Competition

4821-0046-7261.1

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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herein and awarding ROAMBUILT's actual damages and/or a reasonable royalty, and enhanced
profits and damages;
2.

An order that Roam, its agents, directors, officers, servants, employees,

successors and assigns, and any entity owned or controlled in whole or in part by Roam or by any
agent, director, officer, servant, or employee of Roam, and all those persons in active concert or
participation with all or any of the foregoing, who receive notice of this judgment, directly or
otherwise, be permanently restrained and enjoined from:
a. using the ROAMBUILT mark or any other copy, reproduction, colorable
imitation, simulation of the ROAMBUILT mark, or a confusingly similar
mark, including but not limited to ROAM, on or in connection with the
automotive market;
b. using any trademark, service mark, name, logo, design, or source designation
of any kind on or in connection with Roam's goods or services that is a copy,
reproduction, colorable imitation, or simulation of, or confusingly similar to
the trademarks, service marks, names, or logos of ROAMBUILT; and
c. using any trademark, service mark, name, logo, design, or source designation
of any kind on or in connection with Roam's goods or services that is likely to
cause confusion, mistake, deception, or public misunderstanding that such
goods or services are produced or provided by ROAMBUILT, are sponsored
or authorized by ROAMBUILT, or are in any way connected or related to
ROAMBUILT;

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Complaint for Trademark Infringement and Unfair Competition

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MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

Case 3:16-cv-02217-AC

3.

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Pursuant to Section 36 of the Lanham Act, 15 USC § 1118, an order

directing Roam to deliver up for destruction all infringing labels, signs, prints, packages,
wrappers, receptacles, advertisements, invoices, mailers, flyers, promotional items, business
cards, stationary, and/or other materials in its possession or custody and control which are within
the United States, its territories and possessions, that display the ROAM mark;
4.

An award to ROAMBUILT of its costs (including expert fees),

disbursements, and reasonable attorney fees incurred in this action, together with interest,
including prejudgment interest, pursuant to 15 USC § 1117, ORS 647.105, and the equity powers
of this Court; and
5.

Such other and further relief as this Court may deem just and proper.

DATED: November 23, 2016.
MILLER NASH GRAHAM & DUNN LLP

s/ Elizabeth Tedesco Milesnick
Elizabeth Tedesco Milesnick, OSB No. 050933
E-mail: elizabeth.milesnick@millernash.com
Phone: 503.224.5858 / Fax: 503.224.0155
Attorneys for Plaintiff

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MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4