Mackenzie Architecture Complaint

COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON
PORTLAND DIVISION

MACKENZIE ARCHITECTURE, INC.,
an Oregon Corporation,

Plaintiff,

v.

MACKENZIE ENGINEERING, INC.
d/b/a MACKENZIE, an Oregon
Corporation, and
GROUP MACKENZIE
INCORPORATED ARCHITECTURE
PLANNING & INTERIOR DESIGN, a
Washington Corporation,

Defendants.

Civil No. 0:14-cv-00886

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR
COMPETITION

DEMAND FOR JURY TRIAL

Kevin M. Hayes, OSB #012801
Email: kevin.hayes@klarquist.com
KLARQUIST SPARKMAN, LLP
121 S.W. Salmon Street, Suite 1600
Portland, Oregon 97204
Telephone: 503-595-5300
Facsimile: 503-595-5301

Attorney for Plaintiff
Mackenzie Architecture, Inc.
Case 3:l4-cv-00886-AA Document l Filed 06/02/l4 Page l of l4 Page lD#: l

Page 1
Plaintiff Mackenzie Architecture, Inc., doing business as Mackenzie Architecture,
through its attorneys, complains of Defendant Mackenzie Engineering, Inc.s,
(Mackenzie Engineering) use of the mark MACKENZIE and Defendant Group
Mackenzie Incorporated Architecture Planning & Interior Design (Group Mackenzie)
use and registration of the mark MACKENZIE (collectively Defendants), and alleges
as follows, upon knowledge with respect to itself and its own acts, and upon information
and belief as to all other matters:
I. THE MACKENZIE ARCHITECTURE MARK
AND THE NATURE OF THE ACTION
1. Mackenzie Architecture owns the mark MACKENZIE ARCHITECTURE
and has been using the mark for at least nearly a decade for its architecture services.
2. Before Mackenzie Architecture adopted its MACKENZIE
ARCHITECTURE mark, it used other marks comprising MACKENZIE.
3. Until recently, Defendant, Mackenzie Engineering used the mark GROUP
MACKENZIE for its engineering services, which also included, in some cases,
architecture services. It is believed that Defendant Group Mackenzie also used the mark
GROUP MACKENZIE for its engineering services, which also included, in some cases,
architecture services. It is unclear which of Defendants actually own the mark GROUP
MACKENZIE as Mackenzie Engineering has stated that the mark is its mark, but Group
Mackenzie is the listed owner of the trademark registration that was for GROUP
MACKENZIE and has been improperly amended to MACKENZIE alone (Reg. No.
2091725). It is believed that Mackenzie Engineering and Group Mackenzie are related
entities acting in concert with each other.
Case 3:l4-cv-00886-AA Document l Filed 06/02/l4 Page 2 of l4 Page lD#: 2

Page 2
4. It is believed that one or both of Defendants used the mark GROUP
MACKENZIE for their services from around sometime around 1996 until about August
2013.
5. In that time period, it is believed that Plaintiff and Defendants were able to
coexist using their respective marks, MACKENZIE ARCHITECTURE and GROUP
MACKENZIE.
6. But then, around August 2013, Defendants dropped GROUP from the
mark GROUP MACKENZIE and began operating under the mark MACKENZIE alone.
7. Defendants change to simply MACKENZIE usurps rights in all
MACKENZIE formative marks and confuses consumers into mistakenly believing that
Defendants and Plaintiff are associated, or that one is infringing the other.
8. Making the situation even worse in this case, Defendant Mackenzie
Engineering also uses the Internet search heading for its website Mackenzie
!Architecture , which is of course, Plaintiffs mark.
9. Plaintiff brings this suit to stop Defendants from causing confusion with
Plaintiffs MACKENZIE ARCHITECTURE mark.
II. THE PARTIES
10. Plaintiff Mackenzie Architecture Inc. is an Oregon corporation operating
in the state of Oregon with its principal place of business in Portland, Oregon. Plaintiff is
located and does business within this judicial district.
11. Defendant Mackenzie Engineering, Inc. is an Oregon corporation
operating in the state of Oregon with its principal place of business in Portland, Oregon.
Defendant is located and does business within this judicial district.

Page 3
12. Defendant Group Mackenzie Incorporated Architecture Planning &
Interior Designs Trademark Registration No. 2091725 states that Group Mackenzie is a
Washington Corporation. Thus, it is believed that it is a Washington Corporation.
Group Mackenzies principal place of business is believed to be in Portland, Oregon, as
Trademark Registration No. 2091725 states that the address for Group Mackenzie is in
Portland, Oregon. Defendant is located and does business within this judicial district.
III. JURISDICTION AND VENUE
13. This Court has jurisdiction over the subject matter of this action because
this action arises under the Federal Trademark Act, 15 U.S.C. 1051-1127, jurisdiction
being conferred in accordance with 15 U.S.C. 1121 and 28 U.S.C. 1331 and 1338.
Supplemental jurisdiction over the causes of action under Oregon state law is proper as
those causes of action are substantially related to the causes of action over which the Court
has original jurisdiction, pursuant to 28 U.S.C. 1338(b) and 1367. Venue is proper
under 28 U.S.C. 1391(b) in that Defendants are transacting business within this judicial
district and have committed acts complained of herein in this judicial district (or those acts
have been aimed at and felt within this judicial district).
IV. THE FACTS
14. Plaintiff has used the mark and been known as MACKENZIE
ARCHITECTURE for architectural services since at least as early as 2005.
15. Plaintiffs owners (Hilary Mackenzie) father, Tom Mackenzie, was a
founder of Defendant Mackenzie Engineering, Inc. in the 1960s. On information and
belief, Defendants were aware of Plaintiffs use of MACKENZIE ARCHITECTURE
since at least 2005 and other MACKENZIE formative marks since at least the 1990s.

Page 4
16. Defendants did not begin use of the mark MACKENZIE alone until about
August 2013. Before that time, Defendants did not use the mark MACKENZIE alone for
their services. Instead, Defendants used the mark GROUP MACKENZIE for their
services.
17. Defendants did not begin use of Mackenzie !Architecture , shown
below in Defendant Mackenzie Engineering, Inc.s Internet search heading until
sometime in or after August 2013.

18. Defendants use an Internet search heading comprising
Mackenzie !Architecture in connection with offering architecture services to third
parties.
19. Defendants use the mark MACKENZIE alone in connection with offering
architecture services to third parties.

Page 5
20. Defendant Mackenzie Engineering, Inc. has taken telephone calls for
Mackenzie Architecture and answered affirmatively that it was Mackenzie
Architecture when asked. Defendant has then transferred the callers to employees in its
architectural services department. A person in Defendants employ has also admitted that
Defendants change to use of MACKENZIE alone for architecture services could cause
confusion with MACKENZIE ARCHITECTURE.
21. Defendant Group Mackenzie is listed as the owner of federal trademark
registration no. 2,091,275, which was initially for the mark GROUP MACKENZIE for
architectural services; engineering services in the fields of civil, structural and
transportation engineering.
22. Defendant Group Mackenzie amended trademark registration no.
2,091,275 from GROUP MACKENZIE to simply MACKENZIE by deleting GROUP in
or about August 2013.
23. To amend trademark registration no. 2,091,275, Defendant Group
Mackenzie told the United States Patent and Trademark Office that: The removal of the
term GROUP does not impact the commercial impression of the GROUP
MACKENZIE mark and that consumers are unlikely to have assigned any meaning
to the term GROUP as a source identifier, and have instead perceived the term
MACKENZIE as the source of the GROUP MACKENZIE mark, and that dropping
GROUP does not constitute a material alternation of the original mark.
24. Defendant was wrong.
25. The mark MACKENZIE and the mark GROUP MACKENZIE have
different commercial impressions and are not interchangeable.

Page 6
26. The two marks are different in at least that the first conveys the
commercial impression that the mark owner and source of the services operate as a
group, while the second carries no such connotation and conveys no such commercial
impression.
27. Defendant Mackenzie Engineering, Inc. has even admitted that GROUP
MACKENZIE conveys the commercial impression that the services offered under the
mark are a full range of integrated design services and that the mark owner employs
shareholder system.
28. Moreover, Defendant Group Mackenzie deleted the first word of its mark -
and placement of a word as first in a mark tends to make that term dominant in a mark
and be remembered by consumers. Thus, GROUP in GROUP MACKENZIE likely
served as a differentiating element.
29. Regarding its change of its mark from Mackenzie Engineering, Inc. to
GROUP MACKENZIE back in the 1990s, and highlighting the special commercial
impression that Defendant Mackenzie Engineering, Inc. believed was conveyed by
GROUP MACKENZIE, Defendant Mackenzie Engineering, Inc. has stated that: The
new name [GROUP MACKENZIE] reflects the full range of integrated design services
and heralds a change in company ownershipmoving toward a shareholder system in
which employees are vested in the firm's success. (See the screen capture copied

Page 7
below).

30. The mark MACKENZIE alone lacks the commercial impression of a full
range of integrated design services and a shareholder system of company ownership.
31. The Patent and Trademark Office did not republish Defendant Group
Mackenzies new mark, MACKENZIE, to allow the public to oppose Defendant Group
Mackenzies registration of the mark. Thus, Plaintiff had no chance to oppose the
registration.
32. Defendants actions are knowing, willful, and without Plaintiffs
authorization. Defendants are liable for the resulting acts of unfair competition, and
trademark infringement.

Page 8
V. CAUSES OF ACTION
A. Unfair Competition
33. Plaintiff, Mackenzie Architecture, 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) of
the Lanham Act, 15 U.S.C. 1125 (a)(1), and Oregon state common law.
35. Defendants use of the MACKENZIE and Mackenzie !Architecture ,
in commerce for architecture services as alleged hereinabove is likely to cause confusion,
mistake, or deception as to the affiliation, connection, or association of Defendants with
Plaintiff or as to the origin, sponsorship, or approval of the services of Defendants and
those of Plaintiff, and misrepresents the nature, characteristics, and qualities of those
services.
36. The acts of Defendants constitute unfair competition in violation of Section
43(a)(1) of the Lanham Act, 15 U.S.C. 1125(a)(1), and unfair competition under Oregon
common law.
37. Plaintiff is without an adequate remedy at law because Defendants unfair
competition is causing irreparable injury to Plaintiff, and unless said acts are enjoined by
this Court, they will continue and Plaintiff will continue to suffer irreparable injury.
38. Defendants acts of unfair competition, if not enjoined, will cause Plaintiff
to sustain monetary damages, loss, and injury.
B. Trademark Infringement
39. Plaintiff repeats and realleges each and every allegation contained in the
above paragraphs of this Complaint as though fully set forth herein.

Page 9
40. The acts of Defendants constitute trademark infringement in violation
Oregon common law.
41. Defendants use of MACKENZIE and Mackenzie !Architecture ,as
alleged hereinabove is likely to cause confusion, mistake, or deception as to the source,
sponsorship, or approval of the products and services of Defendants in that others are
likely to believe that Defendants services are in some way legitimately connected with,
sponsored or licensed by, or otherwise related to Plaintiff.
42. Defendants use of MACKENZIE and Mackenzie !Architecture ,
was made with actual or constructive knowledge of Plaintiffs rights in MACKENZIE
ARCHITECTURE.
43. Defendants use of MACKENZIE and Mackenzie !Architecture , is
without Plaintiffs consent or permission.
44. Defendants acts of trademark infringement, unless enjoined, will cause
Plaintiff to sustain monetary damages, loss, and injury.
C. Improper Amendment
46. Defendant Group Mackenzies amendment of trademark registration no.
2,091,275 was improper.
47. The Patent and Trademark Office should not have allowed Defendant
Group Mackenzie to amend trademark registration no. 2,091,275 from GROUP
MACKENZIE to MACKENZIE.
Case 3:l4-cv-00886-AA Document l Filed 06/02/l4 Page l0 of l4 Page lD#: l0

Page 10
48. GROUP MACKENZIE and MACKENZIE have different commercial
impression.
49. The Court should utilize its power under 15 USC 1119 to rectify the
trademark register to change Defendant Group Mackenzies registration back to GROUP
MACKENZIE.
D. Improper Ownership
51. Defendant Group Mackenzies trademark registration no. 2,091,275 is
indicated in United States Patent and Trademark Office records as being owned by
GROUP MACKENZIE INCORPORATED ARCHITECTURE PLANNING &
INTERIOR DESIGN CORPORATION WASHINGTON 0690 SW BANCROFT
STREET PO BOX 69039 PORTLAND OREGON 97201.
52. United State Patent and Trademark Office assignment records indicate that
Registration No. 2091725 for GROUP MACKENZIE was assigned from
Mackenzie/Saito & Associates, P.C. to Group Mackenzie Incorporated Architecture
Planning & Interior Design on September 30, 1996.
53. On information and belief and according to the Washington Secretary of
State records there is and has been no Washington entity known as Group Mackenzie
Incorporated Architecture Planning & Interior Design.
54. As it appears that Registration No. 2091725 was assigned to a non-existent
entity, the Court should utilize its power under 15 USC 1119 to rectify the trademark
register to cancel Registration No. 2091725.
Case 3:l4-cv-00886-AA Document l Filed 06/02/l4 Page ll of l4 Page lD#: ll

Page 11
PRAYER FOR RELIEF
WHEREFORE, Plaintiff, Mackenzie Architecture, prays that, pursuant to 15
U.S.C. 1116 to 1125 and Oregon state law:
A. The Court finds that Plaintiff owns valid and subsisting trademark rights
in MACKENZIE ARCHITECTURE.
B. Defendants be held liable under each claim for relief set forth in this
Complaint.
C. The Court grant an injunction that Defendants, their affiliated companies,
and their agents, servants, employees, and attorneys, and all other persons in active
concert or participation with them, be enjoined from using MACKENZIE alone (however
spelled or punctuated, whether capitalized, abbreviated, singular or plural, printed or
stylized, whether alone or in combination with any word(s), punctuation or symbol(s),
and whether used in caption, text, orally or otherwise), or any other reproduction, copy,
colorable imitation or confusingly similar variation of MACKENZIE alone, as a
trademark or service mark, trade name or domain name, or in advertising, distribution,
sale, or offering for sale of architectural services.
D. The Court grant an injunction that Defendants, their affiliated companies,
and their agents, servants, employees, and attorneys, and all other persons in active
concert or participation with them, be enjoined from using the term MACKENZIE
adjacent the term ARCHITECTURE, such as in Mackenzie !Architecture .
E. The Court order as part of the injunction and pursuant to 15 U.S.C.
1116(a) that Defendants file with the Court and serve on Plaintiff within thirty days
after the service on the Defendants of the injunction, a report in writing under oath setting

Page 12
forth in detail the manner and form in which the Defendants have complied with the
injunction.
F. The Court utilize its power under 15 USC 1119 to order the Patent and
Trademark Office to rectify the trademark register by cancelling trademark registration
no. 2,091,275 or changing Defendant Group Mackenzies trademark registration no.
2,091,275 back to GROUP MACKENZIE.
G. Defendants be required to pay to Plaintiffs damages from Defendants use
of MACKENZIE alone for architectural services, pursuant to 15 U.S.C. 1117 and the
equity powers of this Court.
H. Defendants be required to pay to Plaintiff profits made in connection with
their use of MACKENZIE alone for architectural services, pursuant to 15 U.S.C. 1117
and the equity powers of this Court.
I. Defendants be required to pay to Plaintiff its reasonable attorneys fees
and disbursements incurred herein, pursuant to 15 U.S.C. 1117 and the equity powers
of this Court.
J. Defendants be required to pay Plaintiff the costs of this action.

K. The Court award Plaintiff such other and further relief as this Court deems
just and equitable.
Respectfully submitted,

Dated: June 2, 2014 By: _s/ Kevin M. Hayes______________
Kevin M. Hayes, OSB #012801
Email: kevin.hayes@klarquist.com
Klarquist Sparkman, LLP
121 S.W. Salmon Street, Suite 1600
Portland, Oregon 97204
Telephone: 503-595-5300

Page 13
Facsimile: 503-595-5301

Attorneys for Plaintiff
Mackenzie Architecture, Inc.


Mackenzie Architecture Complaint

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COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

IN THE UNITED STATES DISTRICT COURT

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