Case 3:18-cv-00960-HZ Document 1 Filed 05/31/18 Page 1 of 6

Clifford S. Davidson, OSB No. 125378

cdavidson@sussmanshank.com
SUSSMAN SHANK LLP
1000 SW Broadway, Suite 1400
Portland, OR 97205-3089
Telephone: (503) 227-1111
Facsimile: (503) 248-0130
Attorneys for plaintiff Bob's Red Mill Natural Foods, Inc.

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON
PORTLAND DIVISION

BOB’S RED MILL NATURAL FOODS, Case No. 3:18-cv-960

INC., an Oregon corporation,
COMPLAINT FOR DECLARATORY
Plaintiff, JUDGMENT OF NON-
INFRINGEMENT OF TRADEMARK
vs.

GLUTEN INTOLERANCE GROUP OF

NORTH AMERICA, a Washington
nonprofit corporation,

Defendant.

INTRODUCTION

The purpose of this lawsuit is to obtain a judgment declaring that Bob’s Red Mill

Natural Foods may use a basic symbol, , indicating to consumers that a certain

product is gluten-free, without having to seek the permission of, or pay money to, the

Gluten Intolerance Group of North America.

JURISDICTION AND VENUE

1. Plaintiff Bob’s Red Mill Natural Foods, Inc. (“BRM”) is an Oregon

corporation with its headquarters, and principal place of business, in Milwaukie, Oregon.
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1000 SW BROADWAY, SUITE 1400, PORTLAND, OREGON 97205-3089
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 Case 3:18-cv-00960-HZ Document 1 Filed 05/31/18 Page 2 of 6

2. Defendant Gluten Intolerance Group of North America (“GIG”) is a

Washington nonprofit corporation. BRM is informed and believes, and on the basis of

such information and belief alleges, that GIG’s principal place of business and

headquarters are located in Auburn, Washington.

3. As set forth in detail below in the First Claim for Relief, the Court has

jurisdiction over this civil action pursuant to 28 U.S.C. §§ 2201-2202, the Declaratory

Judgment Act, because there is an actual case or controversy between the parties. The

underlying claim is made pursuant to the Lanham Act, which confers jurisdiction
pursuant to 15 U.S.C. § 1121(a). More generally, the Court has federal question

jurisdiction pursuant to 28 U.S.C. § 1331.

4. Alternatively, the Court has jurisdiction pursuant to 28 U.S.C. § 1332(a).

BRM is a citizen of Oregon and GIG is a citizen of Washington. Over $75,000 is in

controversy as complying with the demands GIG has made through correspondence to

BRM, set forth below, would damage BRM in an amount in excess of that amount.

5. The Court has personal jurisdiction over GIG because GIG does business

in Oregon and has local branches in Oregon, including Portland.

6. This Court is the appropriate venue because the demand letter described

below was sent to BRM in Milwaukie, Oregon, and the property potentially affected by

this action is situated there. This Court is the appropriate divisional venue because

BRM, like most of Milwaukie, is located in Clackamas County.

FIRST CLAIM FOR RELIEF

(Declaratory Judgment—Non-infringement under the Lanham Act)

7. BRM was founded in 1978. It is an employee-owned company that

produces natural, certified organic, and gluten-free milled grain products. It products are

distributed throughout North America and the world. BRM produces over 400 products,

including whole grains ground using stone mills, baking mixes, beans, seeds, nuts,

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SUSSMAN SHANK LLP, ATTORNEYS AT LAW

1000 SW BROADWAY, SUITE 1400, PORTLAND, OREGON 97205-3089
TELEPHONE (503) 227-1111 | FACSIMILE (503) 248-0130
 Case 3:18-cv-00960-HZ Document 1 Filed 05/31/18 Page 3 of 6

dried fruits, spices, and herbs.

8. For over 30 years, BRM has been creating products appropriate for those

seeking to avoid gluten (“gluten-free products”). BRM currently has over 100 gluten-free

products, which include flours, cereals, oats, baking mixes, and grains.

9. BRM goes to great lengths to assure as best as possible that the products

it markets as suitable for those on gluten-free diets meet stringent criteria. BRM has

built a separate facility with specialized machinery. BRM adheres to a standard of 19

parts per million of gluten with respect to products marketed as suitable for consumers
eating gluten-free. BRM has never claimed certification by any outside organization.

There is no federal standard for “gluten-free.”

10. BRM distributes its products to markets, specialty stores, and online

vendors. BRM also sells directly to consumers over the Internet and at its factory store

in Milwaukie, Oregon.

11. When BRM distributes a gluten-free product, it includes on the packaging

some indication that a consumer would understand means that the product is gluten-

free. The indicators that BRM has employed in this fashion have varied over time. One

such indicator, currently in use, comprises a circle containing the letters “GF” and the

words “gluten free”:

12. BRM also uses a similar indicator on its website:

13. On May 17, 2018, without any prior discussions, GIG emailed the

following letter to BRM’s general customer service email address:

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SUSSMAN SHANK LLP, ATTORNEYS AT LAW

1000 SW BROADWAY, SUITE 1400, PORTLAND, OREGON 97205-3089
TELEPHONE (503) 227-1111 | FACSIMILE (503) 248-0130
 Case 3:18-cv-00960-HZ Document 1 Filed 05/31/18 Page 4 of 6

14. GIG’s assertion of rights in the mark is somewhat puzzling. On

February 13, 2018, GIG abandoned its application to register it with the U.S. Patent and

Trademark Office (“USPTO”). The USPTO had refused to register the mark on the

grounds that it was “merely descriptive.” For example, the USPTO found that “GF” was

in the dictionary and meant gluten-free. A copy of the USPTO’s Office Action, in which

the USPTO refused registration of the GF mark, is attached hereto as Exhibit 1.

15. It is also notable that the abandonment occurred one day after GIG

entered into a stipulated dismissal of a lawsuit that it had filed against Jamie Oliver, a

celebrity chef known as “The Naked Chef.” In that lawsuit, which was filed in the

Western District of Washington on September 26, 2017, GIG had sued for infringement

of the GF mark—even though the USPTO had already informed GIG that it was refusing

registration.

16. It is BRM’s position that it may continue to use its circle-GF indicator

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SUSSMAN SHANK LLP, ATTORNEYS AT LAW

1000 SW BROADWAY, SUITE 1400, PORTLAND, OREGON 97205-3089
TELEPHONE (503) 227-1111 | FACSIMILE (503) 248-0130
 Case 3:18-cv-00960-HZ Document 1 Filed 05/31/18 Page 5 of 6

without undergoing GIG’s certification process, which entails both paying for initial

certification and paying for renewal.

17. It is BRM’s position—just as it was the USPTO’s position—that the symbol

is not protectable or registrable as a trademark, and that GIG has no right to

exclusive use of that mark.

18. It is also BRM’s position that a reasonable consumer would not confuse

the indicator with the registered certification mark, , that GIG owns. BRM

does not use the indicator in connection with the word “certified,” and the other

elements of the mark are not protectable as a trademark.

19. There is an actual controversy between the parties as GIG has insisted

that BRM either undergo, and pay for, GIG’s certification process, or stop using the

circle-GF indicator, “or anything confusingly similar thereto” and cease using it on all

products. Presumably, that would require the withholding from store shelves of millions

of dollars’ worth of product. At a minimum, complying with GIG’s demand would require

a significant redesign and marketing process. Either way, the potential damages exceed

$75,000.

WHEREFORE, BRM prays for relief as follows:

A. For a declaration that BRM’s use of the circle-GF indicator in commerce,

including on its website, does not infringe upon any GIG trademark;

B. For a declaration that GIG’s claimed mark is unenforceable and

merely descriptive;

C. For a permanent injunction against GIG, enjoining GIG from claiming that

others may not employ a symbol that comprises a circle containing the

letters “GF”, with or without other words, so long as the word “certified” is

not used in connection with the symbol; and

D. Such other and further relief the Court deems just or proper.

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SUSSMAN SHANK LLP, ATTORNEYS AT LAW

1000 SW BROADWAY, SUITE 1400, PORTLAND, OREGON 97205-3089
TELEPHONE (503) 227-1111 | FACSIMILE (503) 248-0130
 Case 3:18-cv-00960-HZ Document 1 Filed 05/31/18 Page 6 of 6

SUSSMAN SHANK LLP

By s/Clifford S. Davidson
Clifford S. Davidson, OSB No. 125378
(503) 227-1111
Attorneys for plaintiff Bob's Red Mill Natural Foods, Inc.

Page 6 - COMPLAINT

SUSSMAN SHANK LLP, ATTORNEYS AT LAW

1000 SW BROADWAY, SUITE 1400, PORTLAND, OREGON 97205-3089
TELEPHONE (503) 227-1111 | FACSIMILE (503) 248-0130