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Case No.
COMPLAINT FOR
TRADEMARK INFRINGEMENT
AND UNFAIR COMPETITION
(Injunctive Relief Sought)
Plaintiff,
v.
ROAM, LLC, an Oregon limited liability
company,
Defendant.
Plaintiff ROAMBUILT LLC (hereinafter "ROAMBUILT") alleges as follows:
INTRODUCTION
1.
plaintiff's ROAMBUILT mark; (ii) federal unfair competition; and (iii) common law trademark
infringement and unfair competition stemming from defendant Roam, LLC ("Roam")'s willful
and knowing use of the ROAM mark, causing actual consumer confusion in the automotive
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market with respect to the source, sponsorship, or approval of both ROAMBUILT and Roam's
goods and services, and causing irreparable harm to ROAMBUILT's business, reputation, and
goodwill.
JURISDICTION AND VENUE
2.
This Court has subject matter jurisdiction under Section 39 of the Lanham
Act, 15 USC 1121, and under 28 USC 1331 and 1338. This Court has jurisdiction over
ROAMBUILT's related state and common-law claims pursuant to 28 USC 1338 and 1367.
3.
This Court has personal jurisdiction over Roam because the company has
substantial part of the events or omissions giving rise to ROAMBUILT's claims occurred in this
District.
THE PARTIES
5.
the laws of the state of Oregon, with its place of business at 2800 N.W. Beuhla Vista Terrace,
Portland, Oregon 97210. ROAMBUILT is in the business of developing and selling custom
parts for Mercedes Benz Sprinter vans and other vehicles.
6.
and existing under the laws of the state of Oregon, with its place of business at 7415 S.W. 53rd
Avenue, Portland, Oregon 97219. On information and belief, Roam is in the business of renting
a camper van for recreational use.
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for, and gauge interest in, a company that would develop and sell custom parts for Mercedes
Benz Sprinter vans and other vehicles. Annett told potential business partners and customers
that he was thinking of using the name "ROAMBUILT" for the company.
8.
By spring 2015, Annett had officially chosen the ROAMBUILT mark for
his company. In June 2015, he attended the NW Overland Rally in Plain, Washington, spending
three days at the Mercedes Benz of Seattle booth discussing customization ideas with Sprinter
customers and telling some of them that his company was called ROAMBUILT.
9.
In summer and fall 2015, Annett met with multiple ROAMBUILT clients
and with press contacts regarding the company and its customization products, using the name
ROAMBUILT for the company.
10.
on December 10, 2015, the website went live, using the ROAMBUILT mark and logo.
11.
and more attention from the automotive aftermarket community, including press and social
media posts stemming from ROAMBUILT's displays at the May 2016 NW Overland Expo West
and the June 2016 NW Overland Rally, among others.
12.
"We came across you on Instagram and noticed you have the same typeface and name as us,"
and proposing that the two companies have a meeting. Unbeknownst to ROAMBUILT, that
same day, Roam's principal Gretchen Bayless registered a company called "ROAM BUILT,
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LLC" with the Oregon Secretary of State. On information and belief, Roam had no intention of
using the name ROAM BUILT for its business.
13.
States Patent and Trademark Office, Serial No. 87068544, to register ROAMBUILT in
connection with "automotive parts."
14.
States Patent and Trademark Office, Serial No. 87068742, to register the ROAMBUILT logo,
shown below, in connection with "automotive parts."
15.
On June 13, 2016, Annett met with Bayless to discuss their companies'
ROAMBUILT. On June 23, 2016, Annett responded by proposing a date for a second meeting.
17.
While Annett was waiting for a response to his proposed meeting date, he
received a letter dated June 27, 2016 from counsel for Roam, demanding that ROAMBUILT
"immediately cease and desist its infringement of the Roam Mark by immediately changing the
name of Roambuilt" In the letter, Roam admits that the companies' respective uses of ROAM
and ROAMBUILT are confusingly similar, stating
Roambuilt's use is semantically identical to Roam's. Roambuilt also uses the
stylistic characteristics of the Roam Mark created by Roam. Additionally, as
Roambuilt and Roam are both located in Portland, Roambuilt's use is in the
identical geographic area as Roam's with a clear overlap in targeted consumers.
All of these factors clearly demonstrate a likelihood of confusion for consumers
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18.
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Also on June 28, 2016, Roam filed an application with the United States
Patent and Trademark Office, Serial No. 87086602, for the stylized version of the ROAM mark
shown below, in connection with "Rental of land motor vehicles and recreational vehicles,
namely, campervans and camping accessories" and "Automobile customization services,"
averring that it had already made actual use of the mark in both categories.
19.
regarding the parties' evidence of first commercial use of their respective marks. Although
Roam appears to have prepared to use the ROAM trademark in connection with van rental
services in mid-2015, on information and belief, Roam did not make actual commercial use of
the ROAM trademark for that purpose until February 2016 at the earliest. On information and
belief, Roam has never used ROAM in connection with "automobile customization services" and
has never intended to do so.
20.
several of the same trade shows and conventions relating to goods and services in the automotive
market.
21.
to Roam and pointed out that ROAMBUILT's first commercial use of the ROAMBUILT mark
predates Roam's first commercial use of the ROAM mark, and accordingly, that "ROAMBUILT
has trademark priority in the automotive market, making Roam, LLC liable for willful trademark
infringement if it continues to use ROAM."
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22.
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Roam would phase out all use of ROAM, or any other mark confusingly similar to
ROAMBUILT. To date, Roam continues to use the ROAM mark and has indicated no
willingness to phase out such use.
23.
customer inquiring about ROAMBUILT and its offerings, and also asking, "Is Roam Built
affiliated with Roam Rentals?"
FIRST CLAIM FOR RELIEF
(Infringement of Mark ROAMBUILT)
24.
Roam's use in commerce of ROAM for van rental services has caused and
mark and that its use of the mark in connection with van rental services would infringe
ROAMBUILT's mark in violation of Section 43(a) of the Lanham Act, 15 USC 1125(a).
27.
enjoined, Roam's actions will continue to cause irreparable harm to ROAMBUILT's business,
reputation, and goodwill.
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28.
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ROAMBUILT is entitled to relief, including injunctive relief, recovery of Roam's profits, actual
damages, reasonable royalty, enhanced profits, and damages, costs, and reasonable attorney fees
pursuant to 15 USC 1125(a), 1116, and 1117.
SECOND CLAIM FOR RELIEF
(Federal Unfair Competition)
29.
likely to cause and has caused confusion and mistake, and is likely to deceive and has deceived
as to the affiliation, connection, or association of Roam with ROAMBUILT, and of
ROAMBUILT with Roam.
31.
enjoined, Roam's actions will continue to cause irreparable harm to ROAMBUILT's business,
reputation, and goodwill.
33.
entitled to relief, including injunctive relief, recovery of Roam's profits, actual damages,
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reasonable royalty, enhanced profits, and damages, costs, and reasonable attorney fees pursuant
to 15 USC 1125(a), 1116, and 1117.
THIRD CLAIM FOR RELIEF
(Common Law Trademark Infringement and Unfair Competition)
34.
infringement and unfair competition in violation of the common law of the state of Oregon, and
have caused and, unless enjoined by this Court, will continue to cause a likelihood of confusion
among consumers, in addition to injury to ROAMBUILT's valuable reputation and goodwill
associated with the ROAMBUILT mark.
36.
enjoined, Roam's actions will continue to cause irreparable harm to ROAMBUILT's business,
reputation, and goodwill.
37.
pay to ROAMBUILT all profits wrongfully derived by Roam through its unlawful acts set forth
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herein and awarding ROAMBUILT's actual damages and/or a reasonable royalty, and enhanced
profits and damages;
2.
successors and assigns, and any entity owned or controlled in whole or in part by Roam or by any
agent, director, officer, servant, or employee of Roam, and all those persons in active concert or
participation with all or any of the foregoing, who receive notice of this judgment, directly or
otherwise, be permanently restrained and enjoined from:
a. using the ROAMBUILT mark or any other copy, reproduction, colorable
imitation, simulation of the ROAMBUILT mark, or a confusingly similar
mark, including but not limited to ROAM, on or in connection with the
automotive market;
b. using any trademark, service mark, name, logo, design, or source designation
of any kind on or in connection with Roam's goods or services that is a copy,
reproduction, colorable imitation, or simulation of, or confusingly similar to
the trademarks, service marks, names, or logos of ROAMBUILT; and
c. using any trademark, service mark, name, logo, design, or source designation
of any kind on or in connection with Roam's goods or services that is likely to
cause confusion, mistake, deception, or public misunderstanding that such
goods or services are produced or provided by ROAMBUILT, are sponsored
or authorized by ROAMBUILT, or are in any way connected or related to
ROAMBUILT;
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3.
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directing Roam to deliver up for destruction all infringing labels, signs, prints, packages,
wrappers, receptacles, advertisements, invoices, mailers, flyers, promotional items, business
cards, stationary, and/or other materials in its possession or custody and control which are within
the United States, its territories and possessions, that display the ROAM mark;
4.
disbursements, and reasonable attorney fees incurred in this action, together with interest,
including prejudgment interest, pursuant to 15 USC 1117, ORS 647.105, and the equity powers
of this Court; and
5.
Such other and further relief as this Court may deem just and proper.