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Case 6:18-cv-00764-MC Document 1 Filed 05/03/18 Page 1 of 8

Randall P. Sutton, OSB 934371


Email: rsutton@sglaw.com
Saalfeld Griggs PC
P.O. Box 470
Salem, OR 97308–0470
Phone: (503) 399-1070
Fax: (503) 371-2927
Of Attorneys’ for Plaintiff

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

EUGENE DIVISION

WESTCARE MANAGEMENT, INC., an


Oregon corporation, CASE NO. 6:18-cv-00764

PLAINTIFF,
COMPLAINT
V. (FEDERAL UNFAIR COMPETITION, OREGON
TRADENAME/TRADEMARK DILUTION, AND
WESTCARE FOUNDATION, INC., a Nevada COMMON LAW TRADEMARK/TRADENAME
non-profit corporation. INFRINGEMENT AND UNFAIR COMPETITION)

DEFENDANT.

Plaintiff Westcare Management, Inc. (“Westcare” or “Plaintiff”), by and through

counsel, alleges as follows:

NATURE OF ACTION

1.

This is an action for equitable relief, including injunctive and declaratory relief, seeking

redress for injury caused by knowing tradename infringement in violation of 15 U.S.C § 1125(a),

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ORS § 647.107, and the federal and state common law protecting trademarks.

JURISDICTION AND VENUE

2.

This Court has subject matter jurisdiction over this action 15 U.S.C. § 1121, 28 U.S.C. §

1331, and 28 U.S.C § 1338.

3.

This Court has supplemental jurisdiction over Plaintiff’s Oregon claims pursuant to 28

U.S.C. § 1367, because the state claims arise from the same nucleus of operative facts as the

federal claims.

4.

Venue is proper in this Judicial District pursuant to 28 U.S.C. § 1391(b)(2) because a

substantial part of the events or omissions giving rise to these claims occurred in this District.

PARTIES

5.

Plaintiff Westcare is an Oregon corporation with its principal place of business located in

Salem, Oregon. Westcare primarily conducts business in the Willamette Valley, where it offers

management services to a variety of long-term care facilities.

6.

Defendant Westcare Foundation, Inc. (“the Foundation” or “Defendant”) is a Nevada

non-profit corporation with its principal place of business located in Henderson, Nevada. The

Foundation operates long-term and short-term care facilities for vulnerable populations

throughout various US states, including a veterans’ facility in Salem, Oregon.

7.

Plaintiff and Defendant both use the term “Westcare” (hereafter “the Mark”) to identify

their respective businesses and related services in Oregon state.

///

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FACTUAL BACKGROUND

8.

Plaintiff realleges all preceding allegations.

9.

On or around November 6, 1987, Westcare incorporated in Oregon state. Westcare has

continuously used the term “Westcare” and “Westcare Management” to identify its business and

particular management services to the Oregon public for approximately thirty (30) years.

10.

Westcare markets its business to the public as a provider of world-class management

services for public and private facilities dedicated to the long-term care of elderly individuals,

physically or mentally disabled persons, and veterans. Westcare’s substantial marketing efforts

have fostered goodwill in Oregon and its customers and business contacts recognize and

associate the Mark with Westcare’s high-quality management and consulting services.

11.

Westcare is the senior user within Oregon state under both federal and state law.

12.

Westcare registered the Mark as its tradename with the United States Patent and

Trademark Office on or around October 24, 2017.

13.

Defendant began using the Mark in Oregon on or around June 27, 2012—approximately

twenty-five (25) years after Westcare began identifying its business and services with the Mark.

14.

Defendant identifies its operations in the State of Oregon through promotional materials

and other means using the terms “WestCare,” “WestCare Oregon,” “Westcare Veterans

Facility,” and the “WestCare Home for Heroes.”

///

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15.

Defendant and Plaintiff provide related services in the same geographic area and both

entities use the Mark to identify their businesses and particular services. Unsurprisingly,

consumers and business associates of both parties in the regional marketplace have consistently

confused the identity, relationship and/or affiliation between the two companies.

16.

On or around June 8, 2016, Westcare first became aware of Defendant’s use of the Mark

in Oregon, when a client confused Westcare with Defendant’s facility known as “WestCare

Home for Heroes” (“WHH”) located in downtown Salem, Oregon.

17.

On or around January 16, 2017, Westcare fielded numerous calls from confused and

concerned clients, business associates, and friends following a Statesman Journal article

criticizing Defendant’s operations related to WHH.

18.

Since June of 2016 Westcare has consistently witnessed actual confusion between its

services and those offered by Defendant. Evidence of actual confusion includes, for example,

emails intended for Defendant but mistakenly sent to Westcare, Defendant’s business cards

arriving at Westcare’s office, BOLI contacting Westcare for Defendant’s unpaid payroll taxes,

and multiple instances of mistaken affiliation and/or association between the two entities at

Governor’s Advisory Committee meetings and conferences involving the Oregon Department of

Veterans Affairs.

19.

On or around April 25, 2017, Westcare notified Defendant that it holds common-law

tradename rights in the Mark, and that these rights take geographic and temporal priority over

Defendant’s infringing use in Oregon. Accordingly, Westcare requested that Defendant

immediately stop using the Mark in Oregon and commence business under a unique regional

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name (“DBA”) that does not include the Mark.

20.

On or around May 11, 2017, Defendant responded in a letter, which communicated its

unwillingness to adopt a DBA for its Oregon operations and referred the matter to outside

counsel.

21.

On or around June 27, 2017, Westcare again sent a letter requesting use of a DBA.

22.

On or around July 10, 2017, Defendant’s counsel sent Westcare a letter effectively

refusing to stop using the Mark in Oregon.

23.

Since July of 2017, Defendant continues to use the Mark in Oregon to identify its

business and services.

FIRST CLAIM FOR RELIEF

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

24.

Plaintiffs reallege paragraphs 1-23.

25.

The Mark is a valid, protectable tradename and/or trademark.

26.

Westcare owns the Mark as demonstrated by its continuous use of the Mark to advertise,

promote, and identify its business and its particular management and consulting services within

Oregon’s care industry since 1987.

27.

Westcare’s use of the Mark predates Defendant’s infringing use of the Mark in Oregon.

///

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28.

Defendant uses the Mark in commerce without Westcare’s consent in a manner that

caused actual confusion or is likely to cause confusion, mistake, or to deceive as to the

affiliation, connection, or association of Defendant with Westcare or as to the source,

sponsorship, affiliation, or approval of Defendant’s services.

29.

Defendant’s infringement, if not enjoined, will continue, and such infringement has no

adequate remedy at law.

SECOND CLAIM FOR RELIEF

(Dilution under ORS § 647.107)

30.

Plaintiff realleges paragraphs 1-29 in relevant part.

31.

The Mark is famous and distinctive within Oregon state.

32.

Defendant began using the Mark in Oregon after Westcare had already made the Mark

regionally famous.

33.

Defendant’s use of the Mark is likely to and/or has already diluted the strength of the

Mark in Oregon state.

34.

Defendant’s infringement, if not enjoined, will continue. If not enjoined, Defendant’s use

of the Mark will continue to dilute the strength of the Mark in Oregon, thereby injuring

Westcare’s business.

///

///

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THIRD CLAIM FOR RELIEF

(Common Law Trademark Infringement and Unfair Competition)

35.

Plaintiff realleges paragraphs 1-34 in relevant part.

36.

Defendant uses the Mark in a manner that is likely to cause confusion and mistake, and to

deceive consumers and others as to the affiliation, association, and/or connection between

Westcare and Defendant, or as to the origin, sponsorship, or approval of Defendant’s services by

Westcare.

37.

Defendant’s conduct constitutes common law trademark infringement and unfair

competition. Defendant’s acts have created actual confusion and the likelihood of confusion,

resulting in irreparable harm to Westcare. Westcare does not have an adequate remedy at law.

38.

Westcare is entitled to injunctive relief preventing Defendant from further use of the

Mark in Oregon.

NOW THEREFORE, Plaintiff Westcare hereby prays for the following relief by awarded

therein:

a) A finding in favor of Plaintiff on all its claims for relief.

b) An order enjoining defendant and its officers, directors, agents, affiliates,

employees, and all those acting in concert with them, on a temporary, preliminary,

and permanent basis, from directly or indirectly:

1. Using the Mark in any manner to advertise, promote, sell, or offer any

goods or services in Oregon state;

2. Using the Mark in any manner to identify its business and/or

particular services offered in Oregon state;

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3. Taking any actions or using any similar names or marks that are

likely to cause confusion or to deceive the public into believing that

Defendant’s services are affiliated or sponsored by Plaintiff;

4. Otherwise engaging in any conduct that damages Plaintiff’s business

reputation and/or goodwill in Oregon state.

c) Reimbursement of Plaintiff’s reasonable attorney fees and costs and

disbursements incurred herein;

d) Granting such other legal or equitable relief as the Court may deem just and

proper.

DATED this 3rd day of May, 2018.

SAALFELD GRIGGS PC

By /s/ RANDALL P. SUTTON


RANDALL P. SUTTON, OSB 934371
Email: rsutton@sglaw.com
Phone: (503) 399-1070
Fax: (503) 371-2927
Of Attorneys for Plaintiff

4818-9217-5199, v. 5

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