Danner Complaint

8/6/2019 Danner Complaint

http://slidepdf.com/reader/full/danner-complaint 1/11

• •Scott D. Eads, OSB No. [email protected] PERKINS COlE LLP

1120 NW Couch Street, Tenth Floor

Portland,OR

97209-4128Telephone: 503.727.2000Facsimile: 503.727.2222 ORIGINALAttorneys for Plaintiff Danner, Inc.

UNITED STATES DISTRICTCOURT

DISTRICT OF OREGON PORTLAND DIVISION

CV'11 - 692DANNER, INC., a Wisconsin corporation, No.

Plaintiff, COMPLAINT FOR INJUNCTIVE

RELIEF AND DAMAGES

v.

ROCKY BRANDS, INC., an Ohiocorporation,

Defendant.

NATURE OF THIS ACTION

1. Plaintiff Danner, Inc. ("Danner") seeks injunctive relief, damages and attorneys'

fees resulting from the marketing, distribution and sale by Rocky Brands, Inc. ("Defendant")

through retail and Internet channels, of boots featuring a design that infringes Danner's

distinctive trade dress design associated with its popular boot design.

THE PARTIES

2. Danner is a Wisconsin corporation with its principal place of business located in

Portland, Oregon. Danner develops markets and distributes footwear and apparel products for

customers in the hunting, military, law enforcement and other fields.

Perkins Coie LL P

1- COMPLAINT FOR INJUNCTIVE RELIEF AND 1120 N.W. Couch Street, Tenth FloorDAMAGES

Portland, OR 97209-4128Phone: 503 .727.2000

Fax: 503.727.2222

Case 3:11-cv-00692-BR Document 1 Filed 06/08/11 Page 1 of 10 Page ID#: 1

mailto:[email protected]






• •3. Upon information and belief, Defendant is an Ohio corporation with a place of

business in Nelsonville, Ohio, and is engaged in the business of developing, marketing and

distributing footwear products for customers in the same fields.

JURISDICTION AND VENUE

4. Upon information and belief, Defendant does business within the District of

Oregon through advertising, marketing and sale of products to consumers in this district.

5. This Court has subject matter jurisdiction over the claims alleged herein

pursuant to 15 U.S.c. §§ 1331 (federal question), 1367 (supplemental), 1338(a) (trademark),

and 1338(b) (related claims of unfair competition).

6. This Court has personal jurisdiction over Defendant because Defendant does

business in this District. Further, Defendant knows or reasonably should have known that the

conduct alleged in this Complaint would cause injury to Danner in the State of Oregon.

7. Venue is proper in this Court pursuant to 28 U.S.c. § 1391(b) because the acts

of infringement and other wrongful conduct alleged occurred in the District of Oregon.

FACTS COMMON TO ALL CLAIMS

8. Danner develops markets and distributes footwear products.

9. One of Danner's most popular work boot products is its Quarry boot, which

presents a unique overall appearance (the "Trade Dress") and features stitchdown construction

with white on black contrast stitching, lace to toe construction, rawhide laces, a backstay with

double layers, triple stitching for the backstay and vamp, a kiltie, and a pull loop. A picture of

Danner's Quarry product, featuring the Trade Dress, is shown below.

2- COMPLAINT FOR INJUNCTIVE RELIEF AND

DAMAGES43668-7022 /LEGAL2 1006347.1

Perkins Coie LLP

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128 Phone: 503.727.2000

Fax: 503.727.2222




• •

10. Danner has offered and sold its Quarry boot, featuring the Trade Dress,

continuously since at least as early as Spring, 2007.

11. As a result of its longstanding use and promotion of the Trade Dress, the Trade

Dress is and has become distinctive in connection with Danner's footwear products in the

United States.

DEFENDANT'S INFRINGEMENT

12. Recently, and many years after Danner adopted the Trade Dress mark for its

own footwear products, Defendant, through its Georgia Boot division, selected and began using

a nearly identical and confusingly similar trade dress (the "Infringing Trade Dress") for use in

connection with a directly competitive work boot product.

13. Defendant's Infringing Trade Dress, as used with its work boot, is confusingly

similar to Danner's Trade Dress, as used with its work boots. Pictures of the parties'

competitive products are shown below (Defendant left, Danner right).


DAMAGES

43668-7022/LEGAL21 006347.1

Perkins Coie LLP


Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222




• •

14. Defendant did not ask for, and has not received, permission from Danner to use

Danner's Trade Dress with any goods or services.

15. On information and belief, Defendant's wrongful conduct includes use of The

Infringing Trade Dress on its work boot product, and on its website

(http://www.georgiaboot.comlproductsll06151l600G8360/Georgia-Onyx-Steel-Toe

Waterproof-Work-BooU) and printed promotional materials.

16. On information and belief, Defendant has committed and is continuing to

commit acts of trademark infringement against Danner.

17. On information and belief, Defendant's wrongful conduct is likely to continue to

cause confusion among a significant portion of the purchasing public, leading them to think

that Defendant's products originate with, are sponsored by, or are otherwise associated with

Danner.

18. On information and belief, Defendant's conduct has resulted in profits and unjust

enrichment to Defendant, and caused harm and will continue to cause harm, including

irreparable harm, to Danner if not enjoined.


DAMAGES

43668-7022/LEGAL21006347.1

Perkins Coie LLP



Fax: 503 .727.2222


http://www.georgiaboot.comlproductsll/

http://www.georgiaboot.comlproductsll/



• •19. On information and belief, the injuries and damages that Danner has sustained

have been directly and proximately caused by Defendant's wrongful conduct of using a

confusingly similar trade dress for Defendant's work boot.

FIRST CLAIM

[False Designation Of Origin, False Description and

Representation of Danner's Products-IS U.S.C. § 1125 et ~ . I 20. Danner repeats and incorporates by this reference each and every allegation set

forth in paragraphs 1 though 19 , inclusive.

21. Defendant's activities constitute infringement of Danner's common law

trademark in violation of the Lanham Trademark Act, including but not limited to 15 U.S.c. §

1125(a).

22. Because Danner advertises, markets, and distributes its work boots under the

Trade Dress as described in this Complaint, this trade dress is a means by which Danner's work

boots are distinguished from the work boots of others.

23. Because of Danner's long, continuous, and substantially exclusive use of the

Trade Dress for work boots, the Trade Dress is understood by distributors, customers, end users

and the public to signify Danner as the source of these work boots.

24. Defendant's wrongful conduct includes the use of the nearly identical and

confusingly similar Infringing Trade Dress mark in connection with Defendant's work boots,

which is likely to cause confusion among consumers as to the source of the parties' goods, or as

to affiliation between the parties or sponsorship of Defendant by Danner.

25. Defendant's conduct constitutes (a) false designation of origin, (b) false

description, and (c) false representation that its safety work boot product originate from or are

authorized by Danner, all in violation of § 43(a) of the Lanham Trademark Act, set forth at IS

U.S.C. § l125(a).

26. Defendant's wrongful conduct is likely to continue unless restrained and

enjoined.


DAMAGES43668-7022/LEGAL21006347.1

Perkins Coie LLP 1120 N.W. Couch Street, Tenth Floor

Portland,OR

97209-4128 Phone: 503.727.2000

Fax: 503 .727.2222




• •27. As a result of Defendant's wrongful conduct, Danner has suffered and will

continue to suffer damages. Danner is entitled to injunctive relief and to an order compelling

the impounding of all imitation marks and trade dress being used, offered , advertised,

marketed, installed, or distributed by Defendant. Danner has no adequate remedy at law for

Defendant's wrongful conduct because, among other things, (a) Danner's Trade Dress is a

valuable property right which has no readily-determinable market value, (b) Defendant's

advertising, marketing, distribution, and sale of identical goods with confusingly similar

trademark constitutes harm to Danner such that Danner could not be made whole by any

monetary award, and (c) Defendant's wrongful conduct, and the resulting damage to Danner, is

continuing.

SECOND CLAIM

[Oregon Common Law Unfair Competition (or Unlawful business, trade practices)]

28. Danner realleges, and incorporates by this reference, each and every allegation

set forth in paragraphs 1 through 27, inclusive.

29. The acts and conduct of Defendant as alleged above in this Complaint constitute

unfair competition pursuant to the common law of Oregon.

30. Defendant's acts and conduct are likely to confuse the public into believing that

the products being offered or distributed by Defendant are sponsored, approved or authorized

by Danner in violation of Danner's rights under the common law of unfair competition of the

State of Oregon.

31. Defendant's acts and conduct as alleged above have damaged and will continue

to damage Danner's goodwill and reputation and have resulted in losses to Danner and an illicit

gain of profit to Defendant in an amount unknown at the present time.


DAMAGES

43668-7022/LEGi\L2 1006347.1

Perkins Coie l.I.P



Fax: 503.727.2222




• •THIRD CLAIM

[Unfair Competition - Violation of Oregon Trade Regulations and

Practices § 646.608 et. Seq.]

32 . Danner realleges, and incorporates by this reference, each and every allegation

set forth in paragraphs 1 through 31, inclusive.

33. The acts and conduct of Defendant as alleged above in this Complaint constitute

unfair competition pursuant to REV. COD E OF OR EGON § 646.608 et seq.

34. Defendant's acts and conduct are likely to confuse the public into believing that

the products being offered or distributed by Defendant are sponsored, approved or authorized

by Danner in violation of Danner's rights under the State of Oregon's prohibition against unfair

competition as codified in REv. CODE OF OREGON § 646.608 et seq.

35. Defendant's acts and conduct as alleged above have damaged and will continue

to damage Danner's goodwill and reputation and have resulted in losses to Danner and an illicit

gain of profit to Defendant in an amount unknown at the present time.

FOURTH CLAIM

IAccounting]

36. Danner realleges, and incorporates by this reference, each and every allegation

set forth in paragraphs 1 through 35 , inclusive.

37. Danner is entitled, pursuant to 15 U.S.c. § 1117, to recover any and all profits of

Defendant that are attributable to the acts of infringement.

38. Danner is entitled, pursuant to pursuant to 15 U.S.C. § 1117, to actual damages

sustained by virtue of Defendant's acts of infringement.

39. The amount of money due from Defendant to Danner is unknown to Danner and

cannot be ascertained without a detailed accounting by Defendant of the precise number of

units of infringing goods offered for sale and sold by Defendant.

Perkins Coie LLP7- COMPLAINT FOR INJUNCTIV E RELIEF AND 1120 N.W. Couch Street, Tenth Floor

DAMAGESPortland , OR 97209-4128Phone: 503.727.200043668-7022/LEGA L2 10063 47.1

Fax : 503.727.2222




• •PRAYER FOR RELIEF

WHEREFORE, Danner respectfully requests judgment against Defendant as follows:

(1) That the Court enter judgment against Defendant that it has:

(a) willfully infringed Danner's rights in the Trade Dress under 15 U.S.C. §

1125(a);

(b) committed and is committing acts of false designation of origin, false or

misleading description of fact, and false or misleading representation

against Danner, in violation of 15 U.S.c. § 1125(a);

(c) engaged in unfair methods of competition in violation ofOregon

common law;

(d) engaged in unfair methods of competition in violation ofREY. CODE OF

OREGON § 646.608 et seq. ; and

(e) otherwise injured the business reputation and business ofDanner by

Defendant's acts and conduct set forth in this complaint.

(2) That the Court issue injunctive relief against Defendant, and that Defendant, its

agents, representatives, servants, employees, attorneys, successors and assigns,

and all others in active concert or participation with Defendant, be enjoined and

restrained from:

(a) using the Infringing Trade Dress, or any other marks, designations, trade

names, or symbols that are confusingly similar to Danner's Trade Dress,

in connection with the manufacture, production, distribution, offering

for distribution, selling, offering for sale, advertising, or promoting

footwear or apparel products;

(b) using any false designation of origin or false description which can or is

likely to lead the trade or public or individuals, to erroneously believe

that any of Defendant's safety work boots have been manufactured,


DAMAGES43668-7022 /LEGAL21 006347 .1

Perkins Coie LLP 1120 N.W. Couch Street, Tenth Floor

Portland,OR

97209-4128 Phone: 503.727.2000

Fax: 503.727.2222




• •assembled, produced, distributed, offered for distribution, sold, offered

for sale, imported, advertised, promoted, sponsored, approved, or

authorized by or for Danner, when such is not true in fact;

(c) engaging in any other activity constituting an infringement of any of

Danner's trademarks or trade dress, or of Danner's rights in, or right to

use or to exploit these trademarks or trade dress; and;

(d) assisting, aiding, or abetting any other person or business entity in

engaging in or perfonning any of the activities referred to in

subparagraphs (a) through (c) above.

(3) That the Court order Defendant to pay Danner's damages as follows:

(a) DaImer's damages and Defendant's profits pursuant to 15 U.S.c.

§ 1117(a);

(b) DaImer's damages and Defendant's profits pursuant to Oregon common

law;

(c) DaImer's damages and Defendant's profits pursuant to REv . CODE OF

OREGON § 646.608 et seq.

(4) That the Court order Defendant to pay to Danner's both the costs of this action

and the reasonable attorney's fees incurred by it in prosecuting this action

pursuant to 15 U.S.C. § 1Il7(a); and

Perkins Coie LLP

9- COMPLAINT FOR INJUNCTIVE RELIEF AND 1120 N.W. Couch Street, Tenth Floor

DAMAGES Portland, OR 97209-4128Phone: 503.727.200043668-7022/LEGAL21006347.1Fax: 503 .727.2222




• •(5) That the Court grant to Danner such other and a ditional relief as is just and

proper.

PEDATED: June 8, 2011

Attorneys for Plaintiff Danner, Inc.OF COUNSEL:James L. Vana, WSBA No.N [email protected] Perkins Coie LLP1201 Third Avenue, Suite 4800Seattle, WA 98101-3099Telephone: 206.359.8000Facsimile: 206.359.9000

Perkins Coie LLP

10- COMPLAINT FOR INJUNCTIVE RELIEF AND 1120 N.W. Couch Street, Tenth Floor

DAMAGES Portland, OR 97209-4128Phone: 503 .727.200043668-7022/LEGAL21 006347. 1

Fax: 503 .727.2222






44 (Rev. 12/07) CIVIL COVER SHEETe JS-44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as req

law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the

the Clerk of Court for the purpose of initiating the civil docket sheet (SEE INSTRUCTIONS ON THE REVERSE OF THE FOe·v '11(a) PLAINTIFF DEFENDANT - I'.. 0

INC., a Wisconsin corporation, ROCKY BRANDS, INC., an Ohio c o r p o r ~ o l , 2County ofResidence of First Listed _ D e f e n d a n t , = ~ = ~ = : ; - _Coonty of Residence of First Listed Plaintiff - MUL TNOMAH

(IN U.S. PLAINTIFF CASES ONLY)IN U.S. PLAINTIFF CASES) NOTE IN LAND CONDEMNAnO N CASES, USE THE LOCATION OF THEFILED08JUN'1116«(IUSDC-QRP TRACT OF LAND INVOLVED.

Allomeys (I f Known)Attorney's (Firm Name, Address, And Telephone Number)

D. Eads, OSB No. 910400, PERKrNS COlE LLP, N. W. Couch St. 10th F:loor, Portland, Oregon 97209-4128

Fax 503,727.2222

BASIS OF JURISDICTION (PLACEAN"X" IN ONE BOX OKLy) III. CITIZENSHIP OF PRINCIPAL PARTIES (PLACE AN "X" IN ONE BOX FOR

PLAIl'.'TIFF

(For Diversity Cases Only) AND ONE BOX FOR DEfE"'DAN

I u.s. Government 18]3 Federal Question Citizen ofThis PT F D EF Incorporated or Principal Place PT F [)

Plaintiff (U.S. Government Not a Party) State 0 I 0 I of Business in This State 0 4 0

2 U.S. Government o 4 Diversity Citizen of 0 2 0 2 Incorporated and Principal Place 0 5 0Defendant (Indicate Citizenship of Parties in Item III) Another Slate of Business in Another State

Citizen or

Subject ofa 0 3 0 3 Foreign Nation 0 6 0Foreign

Counlr

OF SUIT (PLACEAN"X"INONEBOXONLY)

CONTRACT TORTS FORFEITUREIPENAL TV BANKRUPTCY OTHER STATUTES

I 10 Insurance PERSONAL INJURY PERSONAL INJURY 0 610 Agriculture 0 422 Appeal 28 USC 158 0 400 State Reapportionmen

120 Manue 0 310 Airplane 0 362 Personallnjury-- 0 620 Other Food & Dmg 0 423 Withdrawal 28 USC I 0 410 Antitrust

130 Miller Act 0 315 Airplane Product Med. Malpractice 0 625 Drug Related 157 0 430 Banks and Banking14() NegGliable Instrumem Liability. 0 365 Personal Injury- Seizure of Propelty 2 I 0 450 Commerce150 Recovery of 0 320 Assault, Libel & Product Liability USC 881 PROPERTY RIGHTS 0 460 DeportatiollOverpayment & Slander 0 368 Asbestos Personal 0 630 Liquor Laws 0 470 Racketeer Influenced 0 820 CopyrightsEnforcemenl of Judgment 0 330 feder al Injury Product 0 640 R.R. & Truck Comlpt Organizations0 830 PatentlSI Medicare Act Employers' Liability Liability 0 650 Airline Regs. 0 480 Consumer Credit

181 840 Trademark152 Recovery of Defaulted 0 340 Manne 0 660 Occupational 0 490 CablelSat TV

.....Student Loans (Exc!. 0 345 Manne Product PERSONAL PROPERTY SafetylHealth 0 810 Selective ServiceSOCIAL SECURITYVetemns) Liability 0 370 Other Fraud 0 690 Other 0 850 Securities/Commodi

153 Recovery of 0 350 Motor Vehicle 0 371 Truth in Lending 0 861 HIA (139511) Exchange0 862 Black Lung (923)Overpayment of Veteran's 0 355 Motor Vehicle 0 380 Other Personal LABOR 0 875 Customer Challenge 1

Benellts Product Liability Property Damage USC 3410 863 DIWCIDIWW0 7J0 Fair Labor

J 60 Stockholders' Suits 0 360 Other Personal 0 385 Property Damage (405(g) 0 890 Other Statutory ActionStandards Act 0 864 SSlD Title XVI190 Other Contract Injury Product Liability 0 89J Agricultural Acts0 720 LaborlMgml. 0 865 RSI (405 (g»195 Contract Product 0 892 Economic StabilizatioRelationsLiability Act0 730 LaborlMgmt.196 Franchise 0 893 Environmental MailerRepolting & Disclosure

0 894 Energy Allocation ActAct

REAL PROPERTY CIVI L RIGHTS PRISONER PETITIONS 0 740 Railway Labor Act FEDERAL TAX SUITS 0 895 Freedom of Informati..

0 790 Othe r Labor Act210 Land Condemnation 0 441 Voting 0 5\ 0 Motions to Vacate 0 870 Taxes (U.S. PlaintiffLitigation 0 900 Appeal of Fee220 Foreclosure 0 442 Employment Sentence or Defendant )

0 791 Empl. Ret. Inc. Determination Under Equa230 Rent Lease & 0 443 Housing! . Habeas Corpus: 0 871 IRS--Third Party 26Securitv Act Access 10 JusticeEjectment Accommodations 0 530 General USC 7609

0 950 Constitutionality of St240 Torts to Land 0 444 Welfare 0 535 Death Pena Ity IMMIGRATION-_..

Statutes245 Tort Product Liability 0 445 Ame!". 0 540 Mandamus & 0 462 Naturalization

290 All Other Real Property w l D i s a b i l i t i ~ s - Other Application

Employment 0 550 Ci vii Rights 0 463 Habeas Corpus

0 445 Amer. 0 555 Prison Condition Alien Detainee

w/Disabilities 0 465 Other Immigratiotl

Other Actions

0 440 Other Civii

Rights I

ORIGIN (PLACE AN "X" IN ONE BOX ONLy) Appeal to Dist

I Original o 2 o 3 Remanded 0 4 Transferred from 0 6 o 7 Judge

from State from Appellate Court Reinstated or o 5 another Multidistrict from Magistrate

Court Reo )ened district (specify) Litigation Judgment

Cite the U.S. Civil Statute under which you are filing. (Do not cite jurisdictional s tatutes unless diversity):15 US C §§ 1125(a) and 1114

OF ACTIONBrief description of cause:

Com laint for Trademark Infrin cmcnt and Unfair Co m etition

IN o CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complain

UNDER F.R.C.P. 23 JURY DEMAND: ;.; YE S )0 NOCOMPLAINT:

(See instructions):

IF Y JUDGE DOCKET NUMBE R

_____ AMOUNT_______ APPLYING IFP_ _ _ _ _ _ _ JUDGE _________ ..... l\.1AG. JUDGE. __ ....____ _

069967.1

Case 3:11-cv-00692-BR Document 1-1 Filed 06/08/11 Page 1 of 1 Page ID#: 11

Documents

Danner Complaint