You are on page 1of 9

Case 3:18-cv-01106-PK Document 1 Filed 06/25/18 Page 1 of 9

OWEN W. DUKELOW, OSB No. 965318
E-mail: owen@khpatent.com
DAVID P. COOOPER, OSB No. 880367
E-mail: cooper@khpatent.com
KOLISCH HARTWELL, P.C.
520 S.W. Yamhill Street, Suite 200
Portland, Oregon 97204
Telephone: (503) 224-6655
Facsimile: (503) 972-9115

Of Attorneys for Plaintiff

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

PACIFIC FENCE AND WIRE COMPANY, Case No. 3:18-cv-01106
an Oregon corporation,
COMPLAINT FOR FEDERAL
Plaintiff, TRADEMARK INFRINGEMENT,
UNFAIR COMPETITION, AND FALSE
v. DESIGNATION OF ORIGIN

M&M PACIFIC NW CONTRACTING DEMAND FOR JURY TRIAL
LLC, an Oregon limited liability
company, MIKE WORMINGTON, an
individual, and MELISSA K. GARRIS, an
individual,

Defendants.

Page 1 – COMPLAINT FOR FEDERAL TRADEMARK INFRINGEMENT
CASE NO. 3:18-cv-01106
Case 3:18-cv-01106-PK Document 1 Filed 06/25/18 Page 2 of 9

COMPLAINT

Plaintiff, Pacific Fence and Wire Company (“Plaintiff” or “Pacific”), for its Complaint

against M&M Pacific NW Contracting LLC (“M&M”), Mike Wormington (“Wormington”), and

Melissa K. Garris “Garris”) (referred to collectively herein as “Defendants”) alleges, based on

actual knowledge with respect to Plaintiff’s acts, and based on information and belief with respect

to all other matters, as follows:

INTRODUCTION

1. Pacific brings this action because Defendants are willfully infringing Pacific’s famous

PACIFIC trademark for fences, fencing material, and fencing services by using PACIFIC NW

FENCE & DECK to advertise and provide fencing services and by using the domain name

pacificnwfenceanddeck.com.

THE PARTIES

2. Plaintiff Pacific Fence and Wire Company is an Oregon corporation having its principal

place of business at 13770 SE Ambler Road, Clackamas, Oregon 97015.

3. Defendant M&M is an Oregon limited liability company, having its principal place of

business at 3329 B Street, Forest Grove, Oregon 97116 and having a mailing address at PO Box

933 Forest Grove, Oregon 97116.

4. Defendant Garris is an owner, operator, and/or manager of Defendant M&M and/or is

personally responsible for the infringing acts alleged herein, and resides at 1555 South Alpine St.,

Cornelius, Oregon 97113.

5. Defendant Wormington is an owner, operator, and/or manager of Defendant M&M and/or

is personally responsible for the infringing acts alleged herein, and resides at 1555 South Alpine

St., Cornelius, Oregon 97113.

Page 2 – COMPLAINT FOR FEDERAL TRADEMARK INFRINGEMENT
CASE NO. 3:18-cv-01106
Case 3:18-cv-01106-PK Document 1 Filed 06/25/18 Page 3 of 9

JURISDICTION AND VENUE

6. The Court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338 because

these are federal causes of action arising under the trademark laws of the United States, including

the Lanham Act, 15 U.S.C. §§ 1051, et seq.

7. The Court has personal jurisdiction over Defendants because Defendant M&M has its

principal place of business within this district and Defendants Garris and Wormington reside in

and conduct business within this district, and Defendants have committed the tortious activities of

trademark infringement within this district. In addition, Defendants have advertised and continue

to advertise products to consumers within this judicial district in a manner that infringes Pacific’s

trademark rights. More generally, Pacific has suffered a substantial part of the harm from

Defendants’ infringing activities in this district.

8. Venue is proper in this Court under at least 28 U.S.C. § 1391(c) because Defendants reside

in this district and a substantial part of the events giving rise to Pacific’s claims occurred in this

district, causing damage to Pacific in this district. Defendants’ actions within this district directly

interfere with and damage Pacific’s commercial business, harm Pacific’s goodwill, and tarnish

Pacific’s trademark within this district.

FACTUAL BACKGROUND

9. Plaintiff Pacific Fence & Wire Company has established extensive rights in its PACIFIC

trademark for fences, fencing materials, and fencing services over nearly a century of continuous

use beginning at least as early as 1921.

10. Pacific Fence & Wire is the owner of U.S. Trademark Reg. No. 2,655,643 for PACIFIC.

Exhibit A. The certificate notes Pacific Fence & Wire’s ownership of U.S. Trademark Reg. No.

Page 3 – COMPLAINT FOR FEDERAL TRADEMARK INFRINGEMENT
CASE NO. 3:18-cv-01106
Case 3:18-cv-01106-PK Document 1 Filed 06/25/18 Page 4 of 9

1,243,399, which was also for PACIFIC for fences and fencing material and which was filed in

1981.

11. Pacific Fence’s rights in the PACIFIC mark are longstanding and well-established, both as

a common law mark and as a federally registered trademark, to such extent that this is a famous

mark entitled to additional protection under U.S. trademark law.

12. Defendants are currently advertising and providing fencing services under PACIFIC NW

FENCE & DECK. Exhibits B,1 C,2 and D.3

13. Defendants have operated the website noted in the preceding paragraph and depicted in

Exhibit B off and on since about 2016.

14. Pacific demanded in 2016 that Defendants stop all use of PACIFIC NW FENCE & DECK

and any other use likely to cause confusion or to dilute the PACIFIC mark for fences and fencing

materials.

15. Defendants subsequently had their representative contact Pacific’s counsel in November

2016 and agreed to stop use of PACIFIC NW FENCE & DECK and pacificnwfenceanddeck.com.

16. In or about 2017-18, Defendants temporarily stopped use of PACIFIC NW FENCE &

DECK, in particular at pacificnwfenceanddeck.com. As of June 14, 2018, the website advertising

PACIFIC NW FENCE & DECK at pacificnwfenceanddeck.com was not active. Exhibit E.4

17. However, Defendants have subsequently revived the website advertising PACIFIC NW

FENCE & DECK at pacificnwfenceanddeck.com and are currently advertising there. Exhibit B.

1
Printout on June 22, 2018 of website at http://www.pacificnwfenceanddeck.com/index.html.
2
Printout on June 22, 2018 of Facebook page at
https://www.facebook.com/pg/pacificnwfenceanddeck/community/?ref=page_internal.
3
Printout on June 22, 2018 of Twitter page at https://twitter.com/pnwfd
4
Printout as of June 14, 2018 of pacificnwfenceanddeck.com

Page 4 – COMPLAINT FOR FEDERAL TRADEMARK INFRINGEMENT
CASE NO. 3:18-cv-01106
Case 3:18-cv-01106-PK Document 1 Filed 06/25/18 Page 5 of 9

18. The telephone number posted at pacificnwfenceanddeck.com currently provides an

outgoing message advertising PACIFIC NW FENCE & DECK services.

19. Despite Defendants’ appearing to provide fencing services, the contractor license from the

state of Oregon for M&M is expired (Exhibit F) and neither Wormington nor Garris has a current

contractor license, and also M&M is past due to file the annual renewal with the Oregon Secretary

of State’s corporate division for M&M Pacific NW Contracting LLC (Exhibit G).

COUNT I – FEDERAL TRADEMARK INFRINGEMENT UNDER 15 USC § 1114

20. Pacific incorporates by reference all preceding paragraphs.

21. This count for trademark infringement of Pacific’s federally registered trademark arises

under the Lanham Trademark Act of July 5, 1946, 15 U.S.C. §§ 1051 et seq. and particularly

§ 1114 thereof.

22. Pacific owns its PACIFIC trademark for fences and parts thereof – namely, chain link

fences, barbed wire fences, slat fences and gates, all made primarily of metal, and that trademark

is valid and enforceable against Defendants.

23. Pacific has continuously used its PACIFIC trademark since as early as 1921. The PACIFIC

trademark is an arbitrary and distinctive mark that consumers associate with Pacific’s sale of fence

products.

24. Over the near-century of Pacific’s use of its PACIFIC trademark, PACIFIC-branded

products and services have earned a reputation for consistent high quality, and through its long,

uninterrupted use, PACIFIC has become a famous mark in the fencing industry.

25. Pacific has spent substantial time, money and effort in developing consumer recognition

and awareness of its PACIFIC-trademarked products, and has invested significantly in advertising

in order to inform its customers and potential customers of the benefits of its products.

Page 5 – COMPLAINT FOR FEDERAL TRADEMARK INFRINGEMENT
CASE NO. 3:18-cv-01106
Case 3:18-cv-01106-PK Document 1 Filed 06/25/18 Page 6 of 9

26. Defendants’ use of PACIFIC NW FENCE & DECK and pacificnwfenceanddeck.com in

connection with the marketing and sale of fencing services, starting long after Pacific’s

establishing its trademark rights, has created, and is likely to continue to create, consumer

confusion, brand and reputational harm to Pacific among customers, potential customers, and

others in the fencing industry who are mistaken as to the origin of each party’s goods/services, or

who mistakenly believe Pacific and Defendant are commonly owned, operated or otherwise

affiliated, connected or associated.

27. This infringement has caused, and continue to cause, irreparable harm to Plaintiff’s brand

and reputation, for which there is no adequate remedy at law.

COUNT II – FEDERAL UNFAIR COMPETITION, FALSE DESIGNATION OF

ORIGIN, AND DILUTION UNDER 15 USC § 1125

28. Pacific incorporates by reference all preceding paragraphs.

29. This count for unfair competition, false designation of origin, and trademark dilution arises

under the Lanham Trademark Act of July 5, 1946, 15 U.S.C. §§ 1051 et seq. and particularly

§§ 1125(a) and (c) thereof.

30. Pacific owns its PACIFIC trademark for fences and parts thereof, and also fencing services,

specifically the installation of fences of all types and configuration, including gates, and that

trademark is valid and enforceable against Defendants.

31. Pacific has used its PACIFIC trademark in the fencing industry since as early as 1921. The

PACIFIC trademark is an arbitrary and distinctive mark that is associated with Pacific’s sale of

fence products and fencing services.

Page 6 – COMPLAINT FOR FEDERAL TRADEMARK INFRINGEMENT
CASE NO. 3:18-cv-01106
Case 3:18-cv-01106-PK Document 1 Filed 06/25/18 Page 7 of 9

32. Over the near-century of Pacific’s use of its PACIFIC trademark, PACIFIC-branded

products and services have earned a reputation for consistent high quality, and through its long,

continuous use for nearly a century, PACIFIC has become a famous mark in the fencing industry.

33. Pacific has spent substantial time, money and effort in developing consumer recognition

and awareness of its trademarked products and services, and has invested significantly in

advertising in order to inform its customers and potential customers of the benefits of its products

and services.

34. Defendants’ use of PACIFIC NW FENCE & DECK and pacificnwfenceanddeck.com in

connection with the marketing and sale of fencing services, starting long after Pacific’s securing

its trademark rights, has created, and is likely to continue to create, consumer confusion, brand and

reputational harm to Pacific, and dilution of the famous PACIFIC trademark among customers,

potential customers, and others in the fencing industry who are mistaken as to the origin of each

party’s goods/services, or who mistakenly believe Pacific and Defendant are commonly owned,

operated or otherwise affiliated, connected or associated. Members of the public have been, and

are likely to continue being, confused as to the origin, sponsorship, authorization and/or approval

by Pacific of Defendants’ company and services.

35. This unfair competition, false designation of origin, and dilution have caused, and continue

to cause, irreparable harm to Pacific’s brand and reputation, for which there is no adequate remedy

at law.

///

///

Page 7 – COMPLAINT FOR FEDERAL TRADEMARK INFRINGEMENT
CASE NO. 3:18-cv-01106
Case 3:18-cv-01106-PK Document 1 Filed 06/25/18 Page 8 of 9

WHEREFORE, Plaintiff prays for judgment as follows:

A. Defendants be found to have committed trademark infringement, unfair

competition, false designation of origin, and trademark dilution;

B. For an award of Defendant’s profits and Plaintiff’s damages in an amount to be

proven at trial for trademark infringement under 15 U.S.C. §1114;

C. For an award of Defendant’s profits and Plaintiff’s damages in an amount to be

proven at trial for unfair competition, false designation of origin, and dilution under 15 U.S.C. §

1125.

D. For temporary, preliminary and permanent injunctive relief from this Court

prohibiting Defendant from engaging or continuing to engage in the infringement and other

unlawful or unfair business acts or practices described herein, including the unauthorized use of

any trademark right of Plaintiff; acts of trademark infringement; false designation of origin; unfair

competition; dilution; and any other act in derogation of Plaintiff’s rights;

E. For the domain registration for pacificnwfenceanddeck.com to be transferred to

Plaintiff;

F. For the Defendants’ use of “Pacific NW Fence & Deck” and colorably similar

marks to be enjoined, including orders to website hosts and social media website provides,

including those identified in Exhibits B-D herein, including deletion of the website depicted in

Page 8 – COMPLAINT FOR FEDERAL TRADEMARK INFRINGEMENT
CASE NO. 3:18-cv-01106
Case 3:18-cv-01106-PK Document 1 Filed 06/25/18 Page 9 of 9

Exhibit B, deletion of the Facebook account depicted in Exhibit C, and deletion of the Twitter

account depicted at Exhibit D;

G. For Plaintiff’s reasonable attorney fees;

H. For all costs of suit; and

I. For such other and further relief as the Court may deem just and equitable.

JURY DEMAND

Pacific Fence and Wire Company demands a trial by jury on all issues properly tried before

a jury.

DATED June 25, 2018.

Respectfully submitted,

KOLISCH HARTWELL, P.C.

By s/ Owen W. Dukelow
Owen W. Dukelow, OSB No. 965318
E-mail: owen@khpatent.com
520 S.W. Yamhill Street, Suite 200
Portland, Oregon 97204
Telephone: (503) 224-6655
Facsimile: (503) 972-9115

Of Attorneys for Plaintiff
Pacific Fence and Wire Company

Page 9 – COMPLAINT FOR FEDERAL TRADEMARK INFRINGEMENT
CASE NO. 3:18-cv-01106