Metal-Tech Cage v. Jason DeMello

8/3/2019 Metal-Tech Cage v. Jason DeMello

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Kevin M. Hayes, 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 Oregon Civil A c t i o . o v o . ~ 1 2 - 0 :3 0 8 - 4;rlimited liability corporation,Plaintiff, COMPLAINT FOR TRADEMARK

INFRINGEMENT AND UNFAIRv. COMPETITION

JASON DEMELLO, an individual d/b/a!DEMELLO OFFROAD of California JURY TRIAL DEMANDED

Defendant.

COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION H t f ' 5 ~ 5 3

Case 3:12-cv-00308-ST Document 1 Filed 02/21/12 Page 1 of 14 Page ID#: 1
mailto:[email protected]:[email protected]:[email protected]:[email protected]


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Plaintiff METAL-TECH CAGE, LLC. ("Metal-Tech"), through its attorneys, complainsof Defendant JASON DEMELLO doing business as DEMELLO OFFROAD ("DeMello") andalleges as follows, upon knowledge with respect to itself and its own acts , and upon informationand belief as to all other matters:I. THE METAL-TECH TRADEDRESS AND THE NATURE OF THE ACTION

1. Plaintiff, Metal-Tech owns a federally registered trade mark for its design of avehicle rub rail. Metal-Tech's mark is registered on the Principal Register as U.S. FederalTrademark Registration No. 4,010,850. A true copy of this registration is attached hereto as Exh.

A. The mark was registered on August 16,2011, based on an application filed December 23,2009. A drawing from Metal-Tech's Federal Trademark Registration No. 4,010,850 showing itsfederally registered rub rail design is shown below:

11" , / /,I I"

" ,I ';/,. /, '/ ,, I J

,/ J' I, ;' // " 1".." ,/ " . ,, /, , ,,I, ,/ ,... I, ,, I, ,.

.' ,.. "." "' '''''-'

2. DeMello is selling vehicle rub rails that look so much like Metal-Tech's prior andfederally registered trade dress for Metal-Tech's rub rails that at least one consumer, who wasapparently not aware that Plaintiff was first, stated that [he/she] thought that Plaintiff, Metal-Tech, had copied DeMello's junior design.

COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION



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3. DeMello it self has even acknowledged that it copied the design for its rub railsstating: "1 know were [sic] not the first to use this design, but we get a fair amount of request [sic] for them."

4. Accordingly, Metal-Tech bring this action at law and in equity to remedy acts oftrademark infringement and unfair competition under federal and Oregon law, all caused byDefendant' s unauthorized use in commerce of Metal-Tech's federally registered trade dress in itsnon-functional design for its rub rails (hereinafter, "the Asserted Metal-Tech Mark").II. THE PARTIES

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

6. Defendant Jason Demello is an individual from the State of California with aplace of business at 12785 Magnolia Ave . Riverside, California, 92503. Defendant is doingbusiness in this judicial district.

III. JURISDICTION AND VENUE7. This Court has jurisdiction over the subj ect matter of this action because this action

arises under the Federal Trademark Act, 15 U.S.C. 1051-1127, jurisdiction being confelTed inaccordance with 15 US.c. 1121 and 28 US.C. 1331 and 1338. Supplemental jurisdictionover 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 US.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.

COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 2



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IV. THE FACTSA. Metal-Tech's Products8. 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.

9. Since as early as June 2004 Metal-Tech has been marketing its vehicle rub railshown in the drawing below.

10. 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 portion of Metal-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.

11. With regard to the recognition of Metal-Tech' s design by consumers, Plaintiff hada poll conducted in which over 97 percent of respondents selecting between photographs ofdifferent rub rail designs were able to correctly select Plaintiffs rub rail due to its distinctive




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design. Moreover, respondents providing reasons for their selection in many cases explainedthat it was Plaintiffs distinctive kick-out that caused them to recognize the rub rail as Plaintiffs.For example, one respondent stated: "that rear kickout is a metal tech giveaway."

12. As concerns the kick-out, a distinctive design feature of the Asserted Metal-TechMark is the two piece design with the second piece having a kick-out portion, as shown below.This provides a more streamlined appearance to the kick-out portion of the rub rail as comparedto traditional one piece designs, giving a valuable distinctiveness to Plaintiff's design.

rearward pieceof tubing f o m l . . ~ kick-Qut

forward piece of tubing

13. For illustrative purposes only, copied below are two examples of actual productsdistributed by Plaintiff that embody its federally registered design.




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14 . In addition to its Federal Trademark rights based on Federal TrademarkRegistration 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 Plaintiff 's 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.

15. Pursuant to 15 U.S.C. 1057(b), Plaintiff's certificate of registration is primajacieevidence of the validity of the registered mark and of Federal Trademark Registration No.4,010,850, of the record owner's ownership of the mark, and of the owner's exclusive right touse the registered mark in commerce on or in connection with the goods or services specified inthe certificate.

16. Plaintiff's federal statutory trademark rights in its federally registered design basedon its Federal Trademark Registration No. 4,010,850 begin as of the filing date of the applicationthat matured into the registration, namely on December 23, 2009 .

B. Defendant's Infringing Acts17. Defendant markets knock-offs of Plaintiff's rub rail that look so much like the

Asserted Metal-Tech Mark that consumers are likely to be confused as to the source or origin ofthe products and/or as to the association, sponsorship or endorsement between Plainti ff andDefendant.

18. Examples of such infringing rub rails sold by Defendant are shown in thephotographs below, the first of which is an excerpt from Defendant's November 9,2010, post tofjcruiserforums.com and the second of which is an excerpt from Defendant's website athttp://www.demello-ofTroad.com/catalog/product info.php?cPath=61 62&products id=310:


http:///reader/full/fjcruiserforums.comhttp://www.demello-oftroad.com/catalog/producthttp:///reader/full/fjcruiserforums.comhttp://www.demello-oftroad.com/catalog/product


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19. Defendant has sold one or more of the above or other rub rails comprising a two-piece design and kick-out into Oregon.

20. Defendant also maintains an online retail store at www.demello-offroad.com.Copied below is a screen capture from page for that store where Defendant offers or offered inthe period from 2010-2011 the rub rails shown in Paragraph 18.

21. Defendant is targeting Oregon for sales of products that include its infringingproducts, such as what Defendant calls its "3 stage hybrid kick out sliders," (which areadvertised on its website and shown in the screen capture copied above).

22. Defendant knew when it sold its products into Oregon, including infringingproducts such as Defendant's "3 stage hybrid kick out sliders," that Plaintiff is based in


http:///reader/full/www.demello-offroad.comhttp:///reader/full/www.demello-offroad.com


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Newberg, Oregon. In this regard, for example, Plaintiff refers to its rub rails as having a "twostage" design, which consumers recognize as a design originating with Plaintiff, and Defendantis attempting intentionally to cause consumers to think of Plaintiff by referring to its new designfor its rub rails as a "3 stage" kick out.

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

24. Plaintiff requested that Defendant stop offering copies of Plaintiffs rub rails in aletter dated October 3, 2011.

25. In response, Plaintiff is believed to have quit selling the rub rail shown below onthe left and redesigned its rub rail to have the still infringing design shown below on the right.

26. Plaintiff advised Defendant by email dated October 11, 2011, that the Defendant'snew design (shown in the rightmost photograph of Paragraph 25) was still too close to Plaintiffstrade dress and would infringe.




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27. Defendant nevertheless proceeded to sell and offer for sale rub rails having thedesign shown in the rightmost photograph of Paragraph 25, which Defendant sells for a list priceofUS$499.00.

28. Defendant's actions are knowing, willful and without Plaintiffs authorization,and Defendant is directly, contributorily, and vicariously liable for the resulting acts of unfaircompetition and trademark infringement.V. CAUSES OF ACTION

A. Unfair Competition

29. Metal-Tech repeats and re-alleges each and every allegation contained in the aboveparagraphs of this Complaint as though fully set forth herein.

30. This cause of action for unfair competition arises under Section 43 (a)(1 ) of theLanham Act, 15 U.s.c. 1125(a)( 1), and Oregon State common law.

31. Defendant's use of the 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 Pla intiff 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.

32. 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.

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


http:///reader/full/US$499.00http:///reader/full/US$499.00http:///reader/full/US$499.00


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

B. Trademark Infringement35. Metal-Tech repeats and realleges each and every allegation contained in the above

paragraphs of this Complaint as though fully set forth herein.36. The acts of Defendants constitute trademark infringement in violation of 15 U.S.c.

1114(1)(a), and Oregon common law.37. 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.

38. Defendant's use of the Asserted Metal-Tech Mark was made wi th actual orconstructive knowledge of Metal-Tech' s rights in the Asserted Metal-Tech Mark.

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

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

PRAYER FOR RELIEFWHEREFORE, 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 the

Asserted Metal-Tech Mark.




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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 suffered

and will suffer by reason of Defendant's unlawful acts set forth herein, together with legalinterest from the date of accrual thereof.

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 relief 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 triable.

Dated: February 21,2012




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[email protected] KLARQUIST SPARKMAN, LLP One World Trade Center, Suite 1600 121 S.W. Salmon Street Portland, Oregon 97204-2988 Telephone: 503-595-5300 Facsimile: 503-228-9446 Counsel for PlaintiffMETAL-TECH CAGE, LLC.


mailto:[email protected]:[email protected]

Documents

Metal-Tech Cage v. Jason DeMello