Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 1 of 10

Kenneth R. Davis II, OSB No. 971132
davisk@lanepowell.com
Parna A. Mehrbani, OSB No. 053235
mehrbanip@lanepowell.com
LANE POWELL PC
601 SW Second Avenue, Suite 2100
Portland, Oregon 97204-3158
Telephone: 503.778.2100
Facsimile: 503.778.2200

Attorneys for Plaintiff Heart, LLC

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

HEART, LLC, an Oregon limited liability Case No.
company

Plaintiff, Plaintiff Heart, LLC’s
COMPLAINT FOR TRADEMARK
v. INFRINGEMENT, UNFAIR
COMPETITION
HEART PIZZA, LLC, an Oregon limited
liability company; and MICAH CAMDEN, an DEMAND FOR JURY TRIAL
individual residing in Oregon,

Defendants.

Plaintiff Heart, LLC (“Heart”), for its Complaint against Defendant Heart Pizza, LLC

(“Heart Pizza”) and Micah Camden (“Camden”) (collectively Heart Pizza and Camden are referred

to herein as “Defendants”), hereby alleges as follows:

PAGE 1 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 2 of 10

NATURE OF THE ACTION

1. In this action, Heart seeks injunctive and monetary relief for acts of trademark

infringement and unfair competition arising out of the Trademark Act of 1946, 15 U.S.C. § 1051

et seq. (2002) (the “Lanham Act”), Or. Rev. Stat. § 647.095, and the common law.

THE PARTIES

2. Heart is a limited liability company formed under the laws of the state of Oregon

with its principal place of business at 923 SE Hawthorne Boulevard, Portland, Oregon 97214.

3. Upon information and belief, Heart Pizza, LLC is an Oregon limited liability

company having its principal place of business at 1025 SW Stark Street, Portland, Oregon 97205.

4. Upon information and belief, Micah Camden is an individual residing in

Multnomah County, Oregon. Camden is a manager of Heart Pizza.

JURISDICTION AND VENUE

5. The Court has original subject matter jurisdiction over this action under the Lanham

Act pursuant to 15 U.S.C. §§ 1116 and 1121 and 28 U.S.C. §§ 1331 and 1338. This Court has

supplemental jurisdiction over Heart’s state and common law claims pursuant to 28 U.S.C. § 1367.

6. This Court has personal jurisdiction over Defendants under 28 U.S.C. § 1331

because, upon information and belief, Defendants have offered and rendered restaurant and retail

services under trademarks or names within this state that infringe Heart’s trademark; have offered

and rendered services to residents of this state; have engaged in acts or omissions within this state

causing injury; and have sold or offered for sale products consumed within this state in the ordinary

course of trade.

7. Venue is proper within this judicial district pursuant to 28 U.S.C. § 1391(b) because

Defendants are subject to personal jurisdiction in this District. Moreover, a substantial part of the

events or omissions giving rise to the claims herein occurred in this District, and important and

relevant records are located in this District.

PAGE 2 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 3 of 10

8. Pursuant to Local Rule 3-2(b), venue is proper in this Division because a substantial

part of the events or omissions giving rise to the claims occurred in this Division and the

intellectual property at issue is owned by Heart and thus resides in this Division.

BACKGROUND

9. Heart provides coffee roasting services, coffee shop and café services, and retail

and online retail store services featuring coffee, coffee beans, coffee makers and related

accessories, coffee grinders, coffee filters, cups and mugs, t-shirts, hats, caps, tote bags and

stickers.

10. Heart has provided all of the above-described services in Oregon since 2009. It has

likewise provided its wholesale and retail services since 2009 in interstate commerce in the United

States in connection with the trade name Heart, the trademark HEART, and a logo consisting of

the word HEART inside a circle. This logo sometimes appears as white text inside a black circle,

and sometimes as black text on a white background.

11. Heart is the owner of U.S. Trademark Application Serial Nos. 87/414,220 and

87/414,233 for the word mark HEART. True and correct copies of the applications for these marks

are attached hereto as Exhibits 1 and 2, respectively.

12. Heart also owns Oregon State Trademark Registration Number 46513 for the word

mark HEART, a true and correct copy of which is attached hereto as Exhibit 3.

13. Heart owns nationwide common law rights in the word mark HEART as a result of

its nationwide use.

14. Heart’s federal, state, and common law rights in the HEART mark, as described

above, are collectively referred to herein as the “HEART Mark.”

15. Heart uses the HEART Mark on packaging, products, signage, on its website, and

on third party websites, including social media, and other advertising and promotional items.

PAGE 3 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 4 of 10

16. Heart has two café locations in the Portland, Oregon metropolitan area, located at

2211 E. Burnside Street, Portland Oregon 97214 and 537 SW 12th Avenue, Portland, Oregon

97205. Heart is scheduled to open a third café in Southeast Portland by the end of this year.

17. In addition to its café business, Heart has a significant coffee roasting business.

Heart has become very well known within the coffee industry because of the consistency and

quality of the raw material (coffee beans) it buys. Heart competes with all roasters worldwide to

purchase the best possible green coffee. Only a select few roasters in North America have access

to the same lots of ultra-premium green coffee that Heart purchases.

18. Heart has used the HEART Mark in connection with sales transactions throughout

the United States as well as internationally, including Europe, Canada, Japan, and Australia.

19. As a result of Heart’s considerable sales and extensive advertising and promotion,

the HEART Mark has developed substantial and valuable goodwill. The Portland, Oregon

community, the wider food and beverage community, and the coffee industry have come to

associate the HEART Mark with exemplary coffee and coffee beverages, exemplary customer

service, and high quality related goods from Heart.

DEFENDANTS’ ACTIVITIES

20. Defendant Camden was a frequent, near daily, customer of Heart’s café located at

Southwest 12th and Alder in downtown Portland. Camden came into Heart almost daily from

about January to March 2017.

21. Camden is known to Heart and its principals due to his reputation in Portland of

launching and quickly growing various restaurant chains and, in at least one case, selling to a large

national company.

22. One of defendant Camden’s restaurants is Blue Star Donuts, located around the

block from Heart’s SW 12th Avenue café. In 2015, a representative of Blue Star contacted Heart

and asked to collaborate on a unique coffee roast for Blue Star. Heart declined this collaboration.

PAGE 4 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 5 of 10

23. In late February 2017, Defendants opened their “Heart Pizza” restaurant a block

and a half (.1 mile) from Heart’s SW 12th Avenue café.

24. Defendants quickly opened other “Heart Pizza” restaurants and now operate several

restaurants in the Portland, Oregon metropolitan area using the name “Heart Pizza,” providing

services highly related to those offered by Heart.

25. Defendants and Heart offer their services in identical marketing channels to the

same consumers.

26. Defendants’ trade name “Heart Pizza” is confusingly similar, if not identical, to the

HEART Mark.

27. The word “Pizza” in Defendants’ trade name is wholly descriptive.

28. Actual confusion exists in the marketplace between Heart and Defendants. In

particular, Heart has had numerous customers ask if Heart had opened a new pizza place, and/or

commented on their related pizza restaurant.

29. Upon information and belief, defendant Camden falsely represented to at least one

party that he had sought and received permission from Heart to use the same name, when he had

not.

30. Heart, by correspondence dated April 25, 2017, and May 16, 2017, expressed its

objection to Defendants’ use of the HEART trademark and the confusingly similar variation

HEART PIZZA.

31. In response, Defendants refused to cease use of their infringing mark.

32. Despite actual knowledge of Heart’s trademark rights and Heart’s multiple requests

to cease use of their infringing mark, Defendants continue to use a confusingly similar mark in

connection with the offering and rendering of services and the advertising and promotion of their

services in direct competition with Heart.

PAGE 5 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 6 of 10

FIRST CLAIM FOR RELIEF

(Unfair Competition, 15 U.S.C. § 1125(a))

33. Heart realleges the allegations contained in each of the paragraphs above.

34. This is a claim for unfair competition under the Lanham Act, 15 U.S.C. § 1125(a),

arising from Defendants’ unlawful acts, including, without limitation, use of a false designation of

origin which is likely to cause confusion, mistake, or deception as to the origin of Defendants’

products or services, and as to Defendants’ affiliation, connection, or association with Heart, or as

to the sponsorship or approval of the Defendants’ products or services by Heart, in violation of

15 U.S.C. § 1125(a).

35. The HEART Mark and the goodwill of the business associated with it are of great

value, are highly distinctive, and have become associated in the public mind with Heart’s high

quality products and services.

36. Defendants’ use of an infringing mark that is identical and/or confusingly similar

to the HEART Mark is likely to cause confusion, or to cause mistake, or to deceive the purchasing

public and others, whereby they would be led to mistakenly believe that Defendants are affiliated

with, related to, or connected with Heart, or have the sponsorship, endorsement, or approval of

Heart, when they do not.

37. There is actual confusion occurring as a result of Defendants’ conduct described

herein.

38. Defendants began using their confusingly similar mark for restaurant services long

after Heart commenced use of the HEART Mark, and are still using such infringing mark.

39. Defendants’ use of the HEART trademark or the confusingly similar variation

HEART PIZZA is in violation of 15 U.S.C. § 1125(a) and has caused and, unless restrained and

enjoined by this Court, will continue to cause confusion and irreparable harm, damage, and injury

to Heart’s goodwill and reputation as symbolized by Heart’s trademark, for which Heart has no

adequate remedy at law.

PAGE 6 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 7 of 10

40. Defendants’ conduct also constitutes an intentional, willful, and malicious attempt

to trade on the goodwill Heart has developed in its trademark to the damage of Heart, and is a

knowing and willful violation of Heart’s rights under 15 U.S.C. § 1125(a).

41. As a direct and proximate result of Defendants’ conduct, Heart has suffered

damages to its valuable HEART Mark and other damages in an amount to be proven at trial.

42. Defendants have caused, and are likely to continue causing, substantial injury to

Heart, and Heart is entitled to injunctive relief and to recover Defendants’ profits, actual damages,

enhanced profits and damages, costs, and reasonable attorneys’ fees under 15 U.S.C. §§ 1125,

1116, and 1117.

SECOND CLAIM FOR RELIEF

(Trademark Infringement in Violation of ORS 647.095)

43. Heart realleges the allegations contained in each of the paragraphs above.

44. As alleged in paragraph 12, Heart owns Oregon State Trademark Registration

Number 46513 for the word mark HEART.

45. Defendants’ conduct is likely to cause confusion, or to cause mistake, or to deceive

the purchasing public and others as to the origin, affiliation, sponsorship, or connection of

Defendants’ services with Heart, in violation of ORS § 647.095.

46. Defendants’ conduct also constitutes an attempt to trade on the goodwill that Heart

has developed in the HEART Mark, all to the damage of Heart.

47. As a result of Defendants’ conduct, Defendants have caused and, unless restrained

and enjoined by this Court, will continue to cause irreparable harm, damage, and injury to Heart

for which Heart has no adequate remedy at law.

THIRD CLAIM FOR RELIEF

(Common Law Trademark Infringement and Unfair Competition)

48. Heart realleges the allegations contained in each of the paragraphs above.

PAGE 7 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 8 of 10

49. Defendants’ acts constitute common law trademark infringement and unfair

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

confusion or to deceive the purchasing public and others, whereby they would be led to mistakenly

believe that Defendants are affiliated with, related to, sponsored by, or connected with Heart, to

the irreparable injury of Heart and its HEART Mark, unless restrained by this Court, as Heart has

no adequate remedy at law for this injury.

50. On information and belief, Defendants acted with full knowledge of Heart’s use of,

and statutory and common law rights to, the HEART Mark and without regard to the likelihood of

confusion of the public created by their activities.

51. Defendants’ actions demonstrate an intentional, willful, and malicious intent to

trade on the goodwill associated with the HEART Mark to the great and irreparable injury of Heart.

52. As a result of Defendants’ acts, Heart has been damaged in an amount not as yet

determined or ascertainable. At a minimum, however, Heart is entitled to injunctive relief, an

accounting of Defendants’ profits, and Heart’s damages, and costs.

53. Further, in light of the deliberately fraudulent and malicious use of confusingly

similar imitations of the HEART Mark, and the need to deter Defendants from similar conduct in

the future, Heart is additionally entitled to punitive damages.

PRAYER FOR RELIEF

WHEREFORE, Heart respectfully prays for judgment as follows:

1. That judgment be entered in favor of Heart and against Defendants on each of

Heart’s claims.

2. That Defendants and any principals, agents, servants, employees, successors,

attorneys and assigns of Defendants and all those in privity, concert, or participation with

Defendants, be preliminarily and permanently enjoined from:

a. using the HEART Mark or any mark confusingly similar to the HEART

Mark in connection with Defendants’ services;

PAGE 8 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 9 of 10

b. using any trademark, service mark, name, logo, label, design, or source

designation of any kind on or in connection with Defendants’ services that is a copy, reproduction,

colorable imitation of, or confusingly similar to, the HEART Mark;

c. using any trademark, service mark, name, logo, design, or source

designation of any kind on or in connection with Defendants’ services that is likely to cause

confusion, mistake, deception, or public misunderstanding that any services advertised, promoted,

offered, or sold by Defendants are provided by Heart or are sponsored, endorsed, connected with,

approved, or authorized by Heart; and

d. passing off, palming off, or assisting in passing off or palming off,

Defendants’ services as those of Heart, authorized by Heart, or otherwise continuing any and all

acts of unfair competition as alleged in this Complaint.

3. That Defendants account for and pay over to Heart profits or gains of any kind

resulting from their willful infringement and/or acts of unfair competition and that the amount of

damages for trademark infringement of the HEART Mark be increased by a sum not exceeding

three times the amount thereof as provided for by 15 U.S.C. § 1117 and ORS 647.105.

4. That Heart be awarded actual damages in an amount to be proven at trial and

punitive damages, and that such damages be increased by a sum not exceeding three times the

amount thereof as provided by law by reason of Defendants’ willful and intentional conduct,

pursuant to 15 U.S.C. § 1117, ORS 647.105, and the common law.

5. That Heart be awarded reasonable attorneys’ fees, costs, and expenses incurred

herein under 15 U.S.C. § 1117.

6. That Heart be awarded prejudgment interest.

7. That Heart be awarded such other and further relief as the Court may deem just,

proper, and equitable under the circumstances.

PAGE 9 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 10 of 10

JURY DEMAND

Heart demands a trial by jury on all issues so triable.

DATED: August 21, 2017

LANE POWELL PC

By s/Parna A. Mehrbani
Kenneth R. Davis II, OSB No. 971132
Parna A. Mehrbani, OSB No. 053235
Telephone: 503.778.2100

Attorneys for Plaintiff Heart, LLC

PAGE 10 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200