Heart Complaint

Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 1 of 10
Kenneth R. Davis II, OSB No. 971132

davisk@lanepowell.com
Parna A. Mehrbani, OSB No. 053235
mehrbanip@lanepowell.com
LANE POWELL PC
601 SW Second Avenue, Suite 2100
Portland, Oregon 97204-3158
Telephone: 503.778.2100
Facsimile: 503.778.2200
Attorneys for Plaintiff Heart, LLC
UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION
HEART, LLC, an Oregon limited liability Case No.

company
Plaintiff, Plaintiff Heart, LLCs

COMPLAINT FOR TRADEMARK
v. INFRINGEMENT, UNFAIR
COMPETITION
HEART PIZZA, LLC, an Oregon limited
liability company; and MICAH CAMDEN, an DEMAND FOR JURY TRIAL
individual residing in Oregon,
Defendants.
Plaintiff Heart, LLC (Heart), for its Complaint against Defendant Heart Pizza, LLC
(Heart Pizza) and Micah Camden (Camden) (collectively Heart Pizza and Camden are referred
to herein as Defendants), hereby alleges as follows:
PAGE 1 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION
LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
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NATURE OF THE ACTION
1. In this action, Heart seeks injunctive and monetary relief for acts of trademark
infringement and unfair competition arising out of the Trademark Act of 1946, 15 U.S.C. 1051
et seq. (2002) (the Lanham Act), Or. Rev. Stat. 647.095, and the common law.
THE PARTIES
2. Heart is a limited liability company formed under the laws of the state of Oregon
with its principal place of business at 923 SE Hawthorne Boulevard, Portland, Oregon 97214.
3. Upon information and belief, Heart Pizza, LLC is an Oregon limited liability
company having its principal place of business at 1025 SW Stark Street, Portland, Oregon 97205.
4. Upon information and belief, Micah Camden is an individual residing in
Multnomah County, Oregon. Camden is a manager of Heart Pizza.
JURISDICTION AND VENUE
5. The Court has original subject matter jurisdiction over this action under the Lanham
Act pursuant to 15 U.S.C. 1116 and 1121 and 28 U.S.C. 1331 and 1338. This Court has
supplemental jurisdiction over Hearts state and common law claims pursuant to 28 U.S.C. 1367.
6. This Court has personal jurisdiction over Defendants under 28 U.S.C. 1331
because, upon information and belief, Defendants have offered and rendered restaurant and retail
services under trademarks or names within this state that infringe Hearts trademark; have offered
and rendered services to residents of this state; have engaged in acts or omissions within this state
causing injury; and have sold or offered for sale products consumed within this state in the ordinary
course of trade.
7. Venue is proper within this judicial district pursuant to 28 U.S.C. 1391(b) because
Defendants are subject to personal jurisdiction in this District. Moreover, a substantial part of the
events or omissions giving rise to the claims herein occurred in this District, and important and
relevant records are located in this District.
LANE POWELL PC
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
8. Pursuant to Local Rule 3-2(b), venue is proper in this Division because a substantial
part of the events or omissions giving rise to the claims occurred in this Division and the
intellectual property at issue is owned by Heart and thus resides in this Division.
BACKGROUND
9. Heart provides coffee roasting services, coffee shop and caf services, and retail
and online retail store services featuring coffee, coffee beans, coffee makers and related
accessories, coffee grinders, coffee filters, cups and mugs, t-shirts, hats, caps, tote bags and
stickers.
10. Heart has provided all of the above-described services in Oregon since 2009. It has
likewise provided its wholesale and retail services since 2009 in interstate commerce in the United
States in connection with the trade name Heart, the trademark HEART, and a logo consisting of
the word HEART inside a circle. This logo sometimes appears as white text inside a black circle,
and sometimes as black text on a white background.
11. Heart is the owner of U.S. Trademark Application Serial Nos. 87/414,220 and
87/414,233 for the word mark HEART. True and correct copies of the applications for these marks
are attached hereto as Exhibits 1 and 2, respectively.
12. Heart also owns Oregon State Trademark Registration Number 46513 for the word
mark HEART, a true and correct copy of which is attached hereto as Exhibit 3.
13. Heart owns nationwide common law rights in the word mark HEART as a result of
its nationwide use.
14. Hearts federal, state, and common law rights in the HEART mark, as described
above, are collectively referred to herein as the HEART Mark.
15. Heart uses the HEART Mark on packaging, products, signage, on its website, and
on third party websites, including social media, and other advertising and promotional items.
LANE POWELL PC
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
16. Heart has two caf locations in the Portland, Oregon metropolitan area, located at
2211 E. Burnside Street, Portland Oregon 97214 and 537 SW 12th Avenue, Portland, Oregon
97205. Heart is scheduled to open a third caf in Southeast Portland by the end of this year.
17. In addition to its caf business, Heart has a significant coffee roasting business.
Heart has become very well known within the coffee industry because of the consistency and
quality of the raw material (coffee beans) it buys. Heart competes with all roasters worldwide to
purchase the best possible green coffee. Only a select few roasters in North America have access
to the same lots of ultra-premium green coffee that Heart purchases.
18. Heart has used the HEART Mark in connection with sales transactions throughout
the United States as well as internationally, including Europe, Canada, Japan, and Australia.
19. As a result of Hearts considerable sales and extensive advertising and promotion,
the HEART Mark has developed substantial and valuable goodwill. The Portland, Oregon
community, the wider food and beverage community, and the coffee industry have come to
associate the HEART Mark with exemplary coffee and coffee beverages, exemplary customer
service, and high quality related goods from Heart.
DEFENDANTS ACTIVITIES
20. Defendant Camden was a frequent, near daily, customer of Hearts caf located at
Southwest 12th and Alder in downtown Portland. Camden came into Heart almost daily from
about January to March 2017.
21. Camden is known to Heart and its principals due to his reputation in Portland of
launching and quickly growing various restaurant chains and, in at least one case, selling to a large
national company.
22. One of defendant Camdens restaurants is Blue Star Donuts, located around the
block from Hearts SW 12th Avenue caf. In 2015, a representative of Blue Star contacted Heart
and asked to collaborate on a unique coffee roast for Blue Star. Heart declined this collaboration.
LANE POWELL PC
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
23. In late February 2017, Defendants opened their Heart Pizza restaurant a block
and a half (.1 mile) from Hearts SW 12th Avenue caf.
24. Defendants quickly opened other Heart Pizza restaurants and now operate several
restaurants in the Portland, Oregon metropolitan area using the name Heart Pizza, providing
services highly related to those offered by Heart.
25. Defendants and Heart offer their services in identical marketing channels to the
same consumers.
26. Defendants trade name Heart Pizza is confusingly similar, if not identical, to the
HEART Mark.
27. The word Pizza in Defendants trade name is wholly descriptive.
28. Actual confusion exists in the marketplace between Heart and Defendants. In
particular, Heart has had numerous customers ask if Heart had opened a new pizza place, and/or
commented on their related pizza restaurant.
29. Upon information and belief, defendant Camden falsely represented to at least one
party that he had sought and received permission from Heart to use the same name, when he had
not.
30. Heart, by correspondence dated April 25, 2017, and May 16, 2017, expressed its
objection to Defendants use of the HEART trademark and the confusingly similar variation
HEART PIZZA.
31. In response, Defendants refused to cease use of their infringing mark.
32. Despite actual knowledge of Hearts trademark rights and Hearts multiple requests
to cease use of their infringing mark, Defendants continue to use a confusingly similar mark in
connection with the offering and rendering of services and the advertising and promotion of their
services in direct competition with Heart.
LANE POWELL PC
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
FIRST CLAIM FOR RELIEF
(Unfair Competition, 15 U.S.C. 1125(a))
33. Heart realleges the allegations contained in each of the paragraphs above.
34. This is a claim for unfair competition under the Lanham Act, 15 U.S.C. 1125(a),
arising from Defendants unlawful acts, including, without limitation, use of a false designation of
origin which is likely to cause confusion, mistake, or deception as to the origin of Defendants
products or services, and as to Defendants affiliation, connection, or association with Heart, or as
to the sponsorship or approval of the Defendants products or services by Heart, in violation of
15 U.S.C. 1125(a).
35. The HEART Mark and the goodwill of the business associated with it are of great
value, are highly distinctive, and have become associated in the public mind with Hearts high
quality products and services.
36. Defendants use of an infringing mark that is identical and/or confusingly similar
to the HEART Mark is likely to cause confusion, or to cause mistake, or to deceive the purchasing
public and others, whereby they would be led to mistakenly believe that Defendants are affiliated
with, related to, or connected with Heart, or have the sponsorship, endorsement, or approval of
Heart, when they do not.
37. There is actual confusion occurring as a result of Defendants conduct described
herein.
38. Defendants began using their confusingly similar mark for restaurant services long
after Heart commenced use of the HEART Mark, and are still using such infringing mark.
39. Defendants use of the HEART trademark or the confusingly similar variation
HEART PIZZA is in violation of 15 U.S.C. 1125(a) and has caused and, unless restrained and
enjoined by this Court, will continue to cause confusion and irreparable harm, damage, and injury
to Hearts goodwill and reputation as symbolized by Hearts trademark, for which Heart has no
adequate remedy at law.
LANE POWELL PC
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
40. Defendants conduct also constitutes an intentional, willful, and malicious attempt
to trade on the goodwill Heart has developed in its trademark to the damage of Heart, and is a
knowing and willful violation of Hearts rights under 15 U.S.C. 1125(a).
41. As a direct and proximate result of Defendants conduct, Heart has suffered
damages to its valuable HEART Mark and other damages in an amount to be proven at trial.
42. Defendants have caused, and are likely to continue causing, substantial injury to
Heart, and Heart is entitled to injunctive relief and to recover Defendants profits, actual damages,
enhanced profits and damages, costs, and reasonable attorneys fees under 15 U.S.C. 1125,
1116, and 1117.
SECOND CLAIM FOR RELIEF
(Trademark Infringement in Violation of ORS 647.095)
44. As alleged in paragraph 12, Heart owns Oregon State Trademark Registration
Number 46513 for the word mark HEART.
45. Defendants conduct is likely to cause confusion, or to cause mistake, or to deceive
the purchasing public and others as to the origin, affiliation, sponsorship, or connection of
Defendants services with Heart, in violation of ORS 647.095.
46. Defendants conduct also constitutes an attempt to trade on the goodwill that Heart
has developed in the HEART Mark, all to the damage of Heart.
47. As a result of Defendants conduct, Defendants have caused and, unless restrained
and enjoined by this Court, will continue to cause irreparable harm, damage, and injury to Heart
for which Heart has no adequate remedy at law.
THIRD CLAIM FOR RELIEF
(Common Law Trademark Infringement and Unfair Competition)
LANE POWELL PC
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
49. Defendants acts constitute common law trademark infringement and unfair
competition, and have created actual confusion, and will continue to create a likelihood of
confusion or to deceive the purchasing public and others, whereby they would be led to mistakenly
believe that Defendants are affiliated with, related to, sponsored by, or connected with Heart, to
the irreparable injury of Heart and its HEART Mark, unless restrained by this Court, as Heart has
no adequate remedy at law for this injury.
50. On information and belief, Defendants acted with full knowledge of Hearts use of,
and statutory and common law rights to, the HEART Mark and without regard to the likelihood of
confusion of the public created by their activities.
51. Defendants actions demonstrate an intentional, willful, and malicious intent to
trade on the goodwill associated with the HEART Mark to the great and irreparable injury of Heart.
52. As a result of Defendants acts, Heart has been damaged in an amount not as yet
determined or ascertainable. At a minimum, however, Heart is entitled to injunctive relief, an
accounting of Defendants profits, and Hearts damages, and costs.
53. Further, in light of the deliberately fraudulent and malicious use of confusingly
similar imitations of the HEART Mark, and the need to deter Defendants from similar conduct in
the future, Heart is additionally entitled to punitive damages.
PRAYER FOR RELIEF
WHEREFORE, Heart respectfully prays for judgment as follows:
1. That judgment be entered in favor of Heart and against Defendants on each of
Hearts claims.
2. That Defendants and any principals, agents, servants, employees, successors,
attorneys and assigns of Defendants and all those in privity, concert, or participation with
Defendants, be preliminarily and permanently enjoined from:
a. using the HEART Mark or any mark confusingly similar to the HEART
Mark in connection with Defendants services;
LANE POWELL PC
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
b. using any trademark, service mark, name, logo, label, design, or source
designation of any kind on or in connection with Defendants services that is a copy, reproduction,
colorable imitation of, or confusingly similar to, the HEART Mark;
c. using any trademark, service mark, name, logo, design, or source
designation of any kind on or in connection with Defendants services that is likely to cause
confusion, mistake, deception, or public misunderstanding that any services advertised, promoted,
offered, or sold by Defendants are provided by Heart or are sponsored, endorsed, connected with,
approved, or authorized by Heart; and
d. passing off, palming off, or assisting in passing off or palming off,
Defendants services as those of Heart, authorized by Heart, or otherwise continuing any and all
acts of unfair competition as alleged in this Complaint.
3. That Defendants account for and pay over to Heart profits or gains of any kind
resulting from their willful infringement and/or acts of unfair competition and that the amount of
damages for trademark infringement of the HEART Mark be increased by a sum not exceeding
three times the amount thereof as provided for by 15 U.S.C. 1117 and ORS 647.105.
4. That Heart be awarded actual damages in an amount to be proven at trial and
punitive damages, and that such damages be increased by a sum not exceeding three times the
amount thereof as provided by law by reason of Defendants willful and intentional conduct,
pursuant to 15 U.S.C. 1117, ORS 647.105, and the common law.
5. That Heart be awarded reasonable attorneys fees, costs, and expenses incurred
herein under 15 U.S.C. 1117.
6. That Heart be awarded prejudgment interest.
7. That Heart be awarded such other and further relief as the Court may deem just,
proper, and equitable under the circumstances.
LANE POWELL PC
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
JURY DEMAND
Heart demands a trial by jury on all issues so triable.
DATED: August 21, 2017
LANE POWELL PC
By s/Parna A. Mehrbani
Kenneth R. Davis II, OSB No. 971132
Parna A. Mehrbani, OSB No. 053235
Telephone: 503.778.2100
Attorneys for Plaintiff Heart, LLC
LANE POWELL PC
718220.0002/7018922.2 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200

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Case 3:17-cv-01297-YY Document 1 Filed 08/21/17 Page 1 of 10

Kenneth R. Davis II, OSB No. 971132

Attorneys for Plaintiff Heart, LLC

UNITED STATES DISTRICT COURT

HEART, LLC, an Oregon limited liability Case No.

Plaintiff, Plaintiff Heart, LLCs

to herein as Defendants), hereby alleges as follows:

PAGE 1 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

NATURE OF THE ACTION

4. Upon information and belief, Micah Camden is an individual residing in

Multnomah County, Oregon. Camden is a manager of Heart Pizza.

JURISDICTION AND VENUE

relevant records are located in this District.

PAGE 2 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

and sometimes as black text on a white background.

are attached hereto as Exhibits 1 and 2, respectively.

its nationwide use.

above, are collectively referred to herein as the HEART Mark.

PAGE 3 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

to the same lots of ultra-premium green coffee that Heart purchases.

service, and high quality related goods from Heart.

about January to March 2017.

PAGE 4 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

and a half (.1 mile) from Hearts SW 12th Avenue caf.

services highly related to those offered by Heart.

27. The word Pizza in Defendants trade name is wholly descriptive.

commented on their related pizza restaurant.

31. In response, Defendants refused to cease use of their infringing mark.

services in direct competition with Heart.

PAGE 5 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

FIRST CLAIM FOR RELIEF

(Unfair Competition, 15 U.S.C. 1125(a))

products or services, and as to Defendants affiliation, connection, or association with Heart, or as

to the sponsorship or approval of the Defendants products or services by Heart, in violation of

quality products and services.

Heart, when they do not.

37. There is actual confusion occurring as a result of Defendants conduct described

adequate remedy at law.

PAGE 6 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

knowing and willful violation of Hearts rights under 15 U.S.C. 1125(a).

1116, and 1117.

SECOND CLAIM FOR RELIEF

(Trademark Infringement in Violation of ORS 647.095)

Number 46513 for the word mark HEART.

45. Defendants conduct is likely to cause confusion, or to cause mistake, or to deceive

Defendants services with Heart, in violation of ORS 647.095.

has developed in the HEART Mark, all to the damage of Heart.

for which Heart has no adequate remedy at law.

THIRD CLAIM FOR RELIEF

(Common Law Trademark Infringement and Unfair Competition)

PAGE 7 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION

no adequate remedy at law for this injury.

confusion of the public created by their activities.

51. Defendants actions demonstrate an intentional, willful, and malicious intent to

determined or ascertainable. At a minimum, however, Heart is entitled to injunctive relief, an

accounting of Defendants profits, and Hearts damages, and costs.

the future, Heart is additionally entitled to punitive damages.

PRAYER FOR RELIEF

WHEREFORE, Heart respectfully prays for judgment as follows:

1. That judgment be entered in favor of Heart and against Defendants on each of

2. That Defendants and any principals, agents, servants, employees, successors,

Defendants, be preliminarily and permanently enjoined from:

Mark in connection with Defendants services;

PAGE 8 - COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION