Metal-Tech Cage, LLC v. John Sundquist

8/3/2019 Metal-Tech Cage, LLC v. John Sundquist

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FILED17 liN 1115:15USDC-oRP Kevin M. Hayes, OSB No. [email protected] S. Love, OSB No. [email protected] SPARKMAN, LLPOne World Trade Center, Suite 1600121 S.W. Salmon StreetPortland, Oregon 97204-2988Telephone: 503-595-5300Facsimile: 503-228-9446Counsel for PlaintiffMETAL-TECH CAGE, LLC.

IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF OREGON

PORTLAND DIVISION

METAL-TECH CAGE, LLC., an Oregonlimited liability corporation,

Plaintiff,v.

JOHN SUNDQUIST, an individual d/b/a/WHITE KNUCKLE OFF ROADPRODUCTS ofCahfomia

Defendant.

Civil Ac'&V ~ 1 1 - 1 39 4 - BR _-.COMPLAINT FOR TRADEMARKINFRINGEMENT AND UNFAIR

COMPETITION

JURY TRIAL DEMANDED

COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 1 of 15 Page ID#: 1
mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]


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Plaintiff METAL-TECH CAGE, LLC. ("Metal-Tech"), through its attorneys, complainsof Defendant JOHN SUNDQUIST doing business as WHITE KNUCKLE OFF ROADPRODUCTS ("White Knuckle") and alleges as follows, upon knowledge with respect to itselfand its own acts, and upon infonnation and belief as to all other matters:I. THE METAL-TECH TRADEDRESS AND THE NATURE OFTHE ACTION

1. This is an action at law and in equity to remedy acts of trademark infringementand unfair competition under federal and Oregon law, all caused by Defendant's unauthorizeduse in commerce of Metal-Tech's federally registered trade dress in its non-functional design forits Illb rails (hereinafter, "the Asserted Metal-Tech Mark").

2. Plaintiff owns a federally registered trade mark for its design of a vehicle rub rail.Metal-Tech's mark is registered on the Principal Register as U.S. Federal TrademarkRegistration No. 4,010,850. A true copy of this registration is attached hereto as Exh. A. Themark was registered on August 16,2011, based on an application filed December 23,2009.

3. Pursuant to 15 U.S.c. 1057 (b), Plaintiff 's certificate of registration is primafacie evidence of the validity of the registered mark and of the registration of the mark, of therecord owner's ownership of the mark, and of the owner's exclusive right to use the registeredmark in commerce on or in connection with the goods or services specified in the certificate.

4. PlaintifT's federal statutory trademark rights in its federally registered designbased on its Federal Trademark Registration No. 4,010,850 begin as of the filing date of theapplication that matured into the registration, namely on December 23,2009.

5. A drawing from Metal-Tech's Federal Trademark Registration No. 4,010,850showing its federally registered rub rail design is shown below:

COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION



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6. A distinctive design feature of the Asserted Metal-Tech Mark is the two piecedesign with the second piece having a "kick-out" portion, as shown below. This provides a morestreamlined appearance to the kick-out portion of the rub rail as compared to traditional onepiece designs, giving a valuable distinctiveness to Plaintiffs design.

rearward pieceof tubing formskick-out

/ ' . /,/ forward :piece of tubing,/ ." /,.' I' / {/f)r / //.I' , ~ ~ - - - - - - .f ' ' // ~ , , / InDJ-" / , ' ~ a i n b o d y ' ./ ,I I..._ _ _ ___---It / / ' ../ I".

7. For illustrative purposes, copied below are two examples of actual productsdistributed by Plaintiffthat embody its federally registered design.

COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 2



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8. In addition to its Federal Trademark rights based on Federal Trademm"kRegistration No. 4,010,850, Metal-Tech is also the owner of the common law trade dress rightsin its registered design based on its extensive use of its trade dress for its rub rails in Oregon and




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elsewhere, which has caused the consuming public to associate Plaintiffs design with Plaintiff asthe source of the rub rails (also "the Asserted Metal-Tech Mark"). These rights accrued prior toDefendant offering its infringing rub rails.

9. Defendant has been using the Asserted Metal-Tech Mark in its own rub railswithout authorization from, and over the objection of, Plaintiff, and with full knowledge ofPlaintiffs prior use and federal registration.

10. For example, despite Plaintiffs federally registered trade dress rights in thedesign of the rub rail on the left, which Plaintiff offers in commerce, Defendant sells the rub railon the right (bottom left of picture).Example of Plaintifrs Federally Example of Defendant's Design

A commenter in the of f road forum maintained by IH8MUD (athttp://foTUm.ih8mud.com/80-series-tech/481 779-whi te-knuckIe-offroad -sliders-insrtalIed-2.html)stated concerning the White Knuckle rub rails: "my MT [Metal-Tech] Sliders are the same on


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both sides and these white knuckle sliders are obviously an imitation ofMT's as far as lookingexactly like them .. . " (the screen capture copied below is an excerpt from that forum).

11. Defendant's use of the Asserted Metal-Tech Mark unfairly trades offofMetal Tech's rights in its trade dress by, among other things, confusing consumers as to whetherDefendant's goods are associated with Plaintiff.

12. Plaintiff requested Defendant to stop selling products whose design embodiesPlaintiffs Asserted Metal-Tech Mark in a letter dated October 3,2011. Instead of complying,Defendant threatened to take legal action in a Federal District Court in a letter dated October 31 ,2011.II. THE PARTIES

13. Plaintiffis a corporation organized and existing under the laws of the State ofOregon with its principai place of business at Suite A 1000 Commerce Parkway, Newberg,Oregon, 97132. Plaintiff is located and does business within this judicial district.




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14. Defendant John Sundquist d/b/a White Knuckle Off Road Products is anindividual from the State of California with a place of business at 9630 Mesa Vista Street, AppleValley, California, 92308. Defendant is doing business in this judicial district.III. JURISDICTION AND VENUE

15. This Court has jurisdiction over the subject matter of this action because this actionarises under the Federal Trademark Act, 15 U.S.c. 1051-1127, jUllsdiction being conferred inaccordance with 15 U.s.C. 1121 and 28 U.S.c. 133 I and 1338. Supplemental jUllsdictionover the causes of action under Oregon state law is proper as those causes of action aresubstantially related to the causes of action over which the Court has original jurisdiction, pursuantto 28 U.s.c. 1338(b) and 1367. Venue is proper under 28 U.S .c. 1391(b) in that Defendantis doing and transacting business within, and has committed acts complained of herein, in thisjudicial district and targeted at this judicial district.IV. THE FACTS

A. Metal-Tech's Products16. Metal-Tech is a Newberg, Oregon-based company that manufactures and sells

equipment for off-road vehicles, such as roll cages, rub rails, bumpers and fender kits. Since atleast 2000, Metal-Tech has provided quality off-road equipment to off-road vehicle enthusiasts.Metal-Tech sells its goods all over the United States, including in Oregon and California.

17. Since as early as June 2004 Metal-Tech has been market ing its vehicle rub railshown in the drawing below.




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18. Metal-Tech's design has enjoyed significant commercial success and consumersall over the nation, and even abroad, recognize the design as meaning that the rub rail is fromMetal-Tech. In particular, the kick-out p0l1ion ofMetal-Tech's design (shown above in the topof the drawing) is a feature that sets Metal-Tech ' s design apart from its competitors and causesconsumers to recognize the design as exclusively Metal-Tech's.

19. With regard to the recognition ofMetal-Tech's design by consumers, Plaintiff had

a poll conducted in which over 97 percent of respondents selecting between photographs ofdifferent rub rail designs were able to correctly select Plaintiff's rub rail due to its distinctivedesign. Moreover, respondents providing reasons for their selection in many cases explainedthat it was Plaintiff's distinctive kick-out that caused them to recognize the rub rail as Plaintiff's.For example, one respondent stated: "that rear kickout is a metaltech giveaway."

B. Defendant's Infringing Acts10 . Defendant markets knock-otIs of Plaintiff's rub rail that look so much like

Plaintiffs trade dress that consumers are likely to be confused as to the source or origin of theproducts and/or as to the association, sponsorship or endorsement between Plaintiff andDefendant.




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21. Examples of such infringing rub rails sold by Defendant are shown in thephotographs below, which are excerpts from Defendant's website at http://www.whiteknuckleoffroad.com:


http://www.white/http://www.white/http://www.white/http:///reader/full/knuckleoffroad.comhttp://www.white/http:///reader/full/knuckleoffroad.com


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Bolt-On/Bare Metal

22. Defendant has sold one or more of the above or other rub rails having a two-piecedesign and kick-out into Oregon.

23. Defendant also maintains an online retail store at http://www.whiteknuckleoffroad.com. Copied below is a screen capture from the home-page for that store:


http://www.white/http:///reader/full/knuckleoffroad.comhttp://www.white/http:///reader/full/knuckleoffroad.com


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durable hand.,..ade Rock SlIden where qualty III second to none.From magaZIne faatures to Independent reviews end customer

testimonies, the quality of our products have been proven. Whetheryou ere a trtal drtver or rock crawler, our Rock Sliders are up to the

challenge.

24. Ahhough difficult to read, in the background on the upper left, Defendant offersshipping to 48 states, which are believed to be the contiguous United States, including Oregon.

25. Defendant is targeting Oregon for sales of products that include its infringingproducts such as Defendant's "Toyota FJ Cruiser Rock Sliders," as advertised on its website andshown in the screen capture copied above.

26. Defendant knew when it sold its products into Oregon, including infringingproducts such as Defendant's "Toyota FJ Cruiser Rock Sliders," that Plaintiff is based inNewberg, Oregon.

27. Defendant knew that the effects of Defendant's infringement would be felt byPlaintiff in Newberg, Oregon.




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28. Defendant further advertises its products for sale nationally, such as in thenationally circulated "4WD Toyota Owner," a magazine that is also circulated in Oregon.Defendant touts that its FJ Cruiser Rock Sliders, such as those shown above in Paragraph 24,were "featured in 4WD Toyota Owner magazine" on its website at www.whiteknuckleoffroad.com/fjcruiser.htm .

29. Plaintiff requested that Mr. Sundquist and White Knuckle stop offering copies ofPlaintiff's rub rails in a letter dated October, 3, 2011.

30. In response, in a letter dated October 31,2011, to Plaintiff's counsel in Portland,Oregon, White Knuckle admitted that Metal-Tech "is the rightful owner" ofU.S. FederalTrademark Registration No. 4,010,850 for the Asserted Metal-Tech Mark.

31. However, White Knuckle claimed that its design did not infiinge and went on tothreaten suit (i.e., that it would "proceed with action to protect its rights at the TTAB and/orappropriate FDe.").

32. Defendant's actions are knowing, willful and without Plaintiff's authorization,and Defendants are directly, contributorily, and vicariously liable for the resulting acts of unfaircompetition and trademark infiingement.V. CAUSES OF ACTION

A. Unfair Competition33. MetaJ-Tech repeats and re-alleges each and every allegation contained in the above

paragraphs of this Complaint as though fully set forth herein.34. This cause of action for unfair competition arises under Section 43(a)(1) ofthe

Lanham Act, 15 U.S.C. 1125(a)(1), and Oregon State common law.


http://www.white/http://www.white/


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"

35. Defendant's use ofthe Asserted Metal-Tech Mark in commerce as allegedhereinabove is likely to cause confusion, mistake, or deception as to the affiliation, connection, orassociation of Defendants with Plaintiff or as to the origin, sponsorship, or approval of the productsand services of Defendants and those of Plaintiff, and misrepresents the nature, characteristics, andqualities of these products and services.

36. The acts of Defendants constitute unfair competition in violation of Section43(a)(1) of the Lanham Act, 15 U.S.c. 1125(a)(1), and unfair competition under Oregoncommon law.

37. Metal-Tech is without an adequate remedy at law because Defendant 's unfaircompetition has caused ineparable injury to Metal-Tech, and unless said acts are enjoined by thisCourt, they will continue and Metal-Tech will continue to suffer irreparable injury.

38. Defendant's acts of unfair competition, ifnot enjoined, will cause Metal-Tech tosustain monetary damages, loss, and injury in an amount to be determined in this action.

B. Trademark Infringement39. Metal-Tech repeats and realleges each and every allegation contained in the above

paragraphs of this Complaint as though fully set forth herein .40. The acts of Defendants constitute trademark infringement in violation of 15 U.S.c.

l114(1)(a), and Oregon common law.41 . Defendant's use of the Asserted Metal-Tech Mark as alleged hereinabove is likely

to cause confusion, mistake, or deception as to the source, sponsorship, or approval of theproducts and services of Defendants in that others are likely to believe that Defendant's goodsand services are in some way legitimately connected with, sponsored or licensed by, or otherwiserelated to Metal-Tech.




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42. Defendant 's use of the Asserted Metal-Tech Mark was made with actual orconstructive knowledge ofMetal-Tech' s rights in the Asserted Metal-Tech Mark.

43. Defendant's use of the Asserted Metal-Tech Mark is without Metal-Tech'sconsent or permission.

44. Defendant's acts of trademark infiingement, unless enjoined, will cause Metal-Tech to sustain monetary damages, loss, and injury in an amount to be determined in this action.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Metal-Tech prays that, pursuant to the Federal Trademark Act,15 U.S.c. 1051-1127 and Oregon State law:

A. The Court finds that Metal-Tech owns valid and subsisting trademark rights in theAsserted Metal-Tech Mark.

B. Defendant be held liable under each claim for relief set forth in this Complaint.C. Defendant, its agents, servants, employees, and attorneys, and all other persons in

active concert or participation with them, be immediately and permanently enjoined from usingthe Asserted Metal-Tech Mark, or any other reproduction, counterfeit, copy, colorable imitationor confusingly similar variation of the Asserted Metal-Tech Mark, as a trademark or servicemark (including trade dress), or in advertising, distribution , sale, or offering for sale ofDefendant's products and/or services.

D. Defendant be required to pay to Metal-Tech all damages Metal-Tech has sufferedand will suffer by reason ofDefendant's unlawful acts set forth herein, together with legalinterest from the date of accrua thereof.




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E. Defendant be required to account for and pay to Metal-Tech all profits wrongfullyderived by Defendant through its unlawful acts set forth herein, together with legal interest fromthe date of accrual thereof.

F. Defendant be required to pay to Metal-Tech its reasonable attorneys' fees anddisbursements incurred herein, pursuant to 15 U.S.c. 1117 and the equity powers of this Court.

G. Defendant be required to pay Metal-Tech the costs of this action.H. The Court award Metal-Tech enhanced profits and damages and such other and

further rel ief as this Court deems just and equitable.DEMAND FOR JURY TRIAL

Metal-Tech hereby makes demand for a trial by jury pursuant to Rule 38 of the FederalRules ofCivil Procedure as to all issues herein so tI;able.

Dated: November 17,2011Kevin M. Hayes, OSkevin .ha es (i klar uist.c

IJeffrey S. Love, OSB o. [email protected] SPARKMAN, LLPOne World Trade Center, Suite 1600121 S.W. Salmon StreetPortland, Oregon 97204-2988Telephone: 503-595-5300Facsimile: 503-228-9446

Counsel for PlaintiffMETAL-TECH CAGE, LLC.

http:///reader/full/kevin.hahttp:///reader/full/kevin.hahttp:///reader/full/kevin.hamailto:[email protected]:///reader/full/kevin.hamailto:[email protected]

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Metal-Tech Cage, LLC v. John Sundquist