Vicki L. Smith, OSB No.

854410
smithv@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

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

PENDLETON WOOLEN MILLS, INC., an

Oregon corporation, A
Plaintiff, COMPLAINT
(Trademark Infringement, Unfair
v. Competition, Trademark Dilution, Unfair and
Deceptive Trade Practices, Declaratory
THE ROUND UP ASSOCIATION, an Judgment Regarding Registration)
Oregon corporation,
DEMAND FOR JURY TRIAL
Defendant.

Plaintiff Pendleton Woolen Mills, Inc. ("plaintiff' or "Pendleton") files this Complaint

and states as follows:

1. This is an action for trademark infringement, unfair competition and dilution,

unfair and deceptive trade practices, and declaratory judgment arising out of the Trademark Act

of 1946, 15 U.S.c. § 1051 et seq. (2002) ("the Lanham Act"); the Declaratory Judgment Act,

§§ 2201-2202; the Oregon Unlawful Trade Practices Act, ORS §§ 646.605-646.656 (2009); the

Oregon anti-dilution statute, ORS 647.107 (2009); and the common law.

PAGE 1 - COMPLAINT

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PORTLAND, OREGON 97204-31 58

50J 778.2100 FA X, 503.778 2200

 2. Defendant is marketing and selling fragrance products under a trademark that is

confusingly similar to Pendleton's trademarks as set forth below. Defendant's use of the

trademark is likely to cause confusion, mistake, or deception as to the affiliation, connection, or

association of Defendant with Pendleton, or as to the origin of Defendant's goods, or as to their

sponsorship or approval by Pendleton, and is likely to dilute the distinctive quality of

Pendleton's trademarks.

THE PARTIES
3. Plaintiff Pendleton Woolen Mills, Inc. is a corporation organized and existing

under the laws of the state of Oregon, with a principal place of business at 220 NW Broadway,

Portland, Oregon, 97209.

4. Defendant The Round Up Association is a corporation organized and existing

under the laws of the state of Oregon, with a principal place of business at 1205 S W Court,

Pendleton, Oregon, 97801.

JURISDICTION AND VENUE

5. This 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 Pendleton's state and common law claims pursuant to

28 U.S.C. § 1367.

6. This Court has personal jurisdiction over Defendant under 28 U.S.C. § 1331

because Defendant has distributed, sold, or offered for sale merchandise under the infringing

trademark within this state, has engaged in acts or omissions within this state causing injury, has

manufactured, distributed, sold, or offered for sale products used or consumed within this state in

the ordinary course of trade, resides in this state, or otherwise has made or established contacts

within this state sufficient to permit the exercise of personal jurisdiction.

7. Venue is proper in this District pursuant to 28 U.S.C. § 1391 because Defendant

resides in this District and/or is subject to personal jurisdiction in this District. Moreover, a

PAGE 2 - COMPLAINT

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
0054360569/5070188 .1 PORTLAND, OREGON 97204·3158
503 .778 .2100 FAX 503 .778.2200
substantial part of the events or omissions giving rise to the claims herein occurred in this

District and, upon information and belief, important and relevant records are located in this

District.

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 Pendleton and thus resides in this Division.

FACTUAL BACKGROUND
9. Pendleton owns numerous federal registrations issued by the U.S. Patent and

Trademark Office ("USPTO") for the trademark PENDLETON for use on a variety of goods.

See Certificates of Registration Nos. 3,574,742, 3,555,536, 3,574,743, 3,568,773, 3,718,175,

3,297,528, 3,049,323, 2,951,453, 1,980,970, 2,059,665, 1,218,445, 913,742, and 514,710

attached as Exhibits 1-13, incorporated herein and made a part hereof. Pendleton also owns

numerous federal registrations for marks containing the term PENDLETON, including

PENDLETON COLORPLA Y, Reg. No. 3,680,928; PENDLETON ESTATE VINEYARDS &

WINERY, Reg. No. 3,662,604; PENDLETON ECO-WISE WOOL, Reg. No. 3,638,636;

PENDLETON HOME, Reg. No. 2,713,136; PENDLETON HOME COLLECTION, Reg.

No. 2,717,244; PENDLETON ORIGINALS, Reg. No. 2,276,567; PENDLETON ORIGINALS

BORN IN OREGON, Reg. No. 2,395,884; NOR' WESTER WEAR BY PENDLETON, Reg.

No. 2,276,748; PENDLETON STUDIO, Reg. No. 2,117,014; BEAVER STATE BY

PENDLETON, Reg. No. 1,814,471; COUNTRY CLOTHES BY PENDLETON, Reg.

No. 800,729; WARRANTED TO BE A PENDLETON PENDLETON WOOLEN MILLS

PORTLAND, OREGON SINCE 1863, Reg. No. 2,053,150; WARRANTED TO BE A

"PENDLETON" PENDLETON WOOLEN MILLS PORTLAND, OREGON, Reg.

Nos. 777,919, 777,908, and 663,602; SIR PENDLETON, Reg. No. 715,837; and PENDLETON

49'ER, Reg. No. 666,627. Collectively, the PENDLETON trademarks are referred to herein as

the "PENDLETON Marks."

PAGE 3 - COMPLAINT

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
005436.0569/5070188.1 PORTLAND, OREGON 97204-3158
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 10. As an example of Pendleton's long-term use of its PENDLETON Marks,

Pendleton has been using PENDLETON on blankets and throws since at least as early as 1895

and on apparel since at least as earl)' as 1912.

11. In addition to sales of products and services pursuant to the registrations listed in

paragraph 9 above, Pendleton has sold numerous additional products under the mark

PENDLETON and marks including "PENDLETON" together with other words. For example,

Pendleton has used the mark PENDLETON in connection with scented lotions, soaps, and other

scented bath products since at least 2006.

12. As a result of Pendleton's promotion and sale of products under the

PENDLETON Marks, the PENDLETON Marks have gained significant recognition and

goodwill among the purchasing public.

13. The PENDLETON Marks have acquired distinctiveness with respect to the

products and services sold under them.

14. Since at least as early as 1997, Defendant has been a licensee of Pendleton and

thus acknowledged Pendleton's ownership and rights in the PENDLETON Marks via a license

agreement between the parties related to sales of apparel.

15. In addition, since at least as early as 2003, Defendant has either expressly or

constructively acknowledged Pendleton's ownership and rights in the PENDLETON Marks via a

trademark licensing arrangement that has existed since about 2003 between Pendleton and a third

party and likewise between Defendant and the same third party. The products produced via the

aforementioned arrangement are c?-branded with Pendleton's PENDLETON mark and marks

owned by Defendant and acknowledge Pendleton's ownership of the PENDLETON mark.

16. Defendant is currently selling or in the past has sold personal products, including

fragrances, under PENDLETON ROUND-UP (the "Infringing Mark"), a mark that is

confusingly similar to the PENDLETON Marks when used on goods similar or related to the

PAGE 4 - COMPLAINT

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
005436056915070188 .1 PORTLAND. OREGON 97204-3158
503 .778 .2100 FAX 503.778.2200
various goods and services offered by Pendleton. Defendant's products sold under the Infringing

Mark compete with Pendleton's products sold under the PENDLETON Marks.

17. Defendant's use of the Infringing Mark includes, but is not limited to, using a

form, format, or design that emphasizes solely the PENDLETON portion of the Infringing Mark.

18. On information and belief, Defendant has encouraged and/or allowed the

manufacturer and/or distributor of its fragrance products to use and apply to register the mark

PENDLETON FRAGRANCES for use on fragrance products, which is nearly identical and

confusingly similar to the PENDLETON Marks.

19. Defendant's activities are likely to cause confusion, mistake, and deception as to

the affiliation, connection, or association of Defendant with Pendleton, and as to the origin,

sponsorship, or approval of Defendant's goods or commercial activities.

20. By causing such a likelihood of confusion, mistake, and deception, Defendant is

inflicting irreparable harm to the goodwill symbolized by the PENDLETON Marks, for which

Pendleton has no adequate remedy at law.

FIRST CLAIM FOR RELIEF

(Federal Trademark Infringement, 15 U.S.c. § 1114)

21. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1

through 20 above as if fully set forth herein.

22. The PENDLETON Marks 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

Pendleton's high quality products.

23. Defendant's use of the Infringing Mark is likely to cause confusion, deception,

and mistake by creating the false and misleading impression that Defendant's goods are

manufactured or distributed by Pendleton, or are associated or connected with Pendleton, or have

the sponsorship, endorsement, or approval of Pendleton.

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LANE POWELL PC
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0054360569/5070188.1 PORTLAND, OREGON 97204-3158
SOl 7782100 FAX 50l.778 .2200
 24. Defendant's use of the Infringing Mark that is confusingly similar to Pendleton's

federally registered PENDLETON Marks is in violation of 15 US.c. § 1114, and Defendant's

activities have caused and, unless enjoined by this Court, will continue to cause a likelihood of

confusion and deception of members of the trade and public and, additionally, irreparable harm

and injury to Pendleton's goodwill and reputation as symbolized by the federally registered

PENDLETON Marks, for which Pendleton has no adequate remedy at law.

25. Defendant's actions demonstrate an intentional, willful, and malicious intent to

trade on the goodwill associated with Pendleton's federally registered PENDLETON Marks to

Pendleton's great and irreparable injury and are in knowing and willful violation of Pendleton's

rights under 15 US.c. § 1114(a).

26. As a direct and proximate result of Defendant's conduct, Pendleton has suffered

damages to its valuable PENDLETON Marks and other damages in an amount to be proven at

trial.

27. Defendant has cause.d and is likely to continue causing substantial injury to the

public and to Pendleton, and Pendleton is entitled to injunctive relief and to recover Defendant's

profits, actual damages, enhanced profits and damages, costs, and reasonable attorneys' fees

under 15 US.c. §§ 1114,1116, and 1117.

SECOND CLAIM FOR RELIEF

(Federal Unfair Competition, 15 U.S.c. § 1125(a))

28. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1

through 27 above as if fully set forth herein.

29. Defendant's infringement of the PENDLETON Marks constitutes a false

designation of origin, or a false or misleading description or representation of fact, which is

likely to cause confusion, or to cause mistake, or to deceive as to Defendant's affiliation,

connection, or association with Pendleton, and as to the origin of Defendant's products, or as to

the sponsorship or approval of Defendant's products by Pendleton.

PAGE 6 - COMPLAINT

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
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 30. Upon information and belief, Defendant has intentionally and willfully used the

Infringing Mark in disregard of Pendleton's rights.

31. As a direct and proximate result of Defendant's conduct, Pendleton has suffered

damages to its valuable PENDLETON Marks and other damages in an amount to be proven at

trial.

32. Pendleton has no adequate remedy at law, and if Defendant's activities are not

enjoined, Pendleton will continue to suffer irreparable harm and injury to its goodwill and

reputation.

THIRD CLAIM FOR RELIEF

(Federal Trademark Dilution, 15 U.S.C. § 1125(c))

33. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1

through 32 above as if fully set forth herein.

34. Pendleton has extensively and continuously promoted, advertised, and used the

PENDLETON Marks in the U.S. for more than a century and the marks have thereby acquired

distinctiveness and become famous and well-known symbols of Pendleton's goods and services.

35. Defendant's use of the Infringing Mark began after the PENDLETON Marks

became famous.

36. Defendant is making commercial use of the Infringing Mark that dilutes and is

likely to dilute the distinctiveness of Pendleton's PENDLETON Marks by eroding the public's

exclusive identification of these famous marks with Pendleton, tarnishing and degrading the

positive associations and prestigious connotations of the marks, and otherwise lessening the

capacity of the marks to identify and distinguish goods and services.

37. Defendant's actions demonstrate an intentional, willful, and malicious intent to

trade on the goodwill associated. with Pendleton's PENDLETON Marks to the great and

irreparable inj ury of Pendleton.

PAGE 7 - COMPLAINT

LANE POWELL PC
60 I SW SECOND AVENUE, SUITE 2100
0054360569/5070188 .1 PORTLAND, OREGON 97204-) 158
50) 7782100 FAX 50) .778.2200
 38. Defendant's conduct has caused, and is likely to continue causing, substantial

injury to Pendleton's goodwill and business reputation, and dilution of the distinctiveness and

value of Pendleton's famous and distinctive PENDLETON Marks, in violation of

15 U.S.c. §§ 1125(c), 1116, and 1117.

FOURTH CLAIM FOR RELIEF

(Oregon Trademark Dilution, ORS 647.107)

39. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1

through 38 above as if fully set forth herein.

40. Defendant's acts set forth above violate Oregon laws, and particularly

ORS 647.107, in that Defendant has diluted the distinctive quality of the PENDLETON Marks,

causing irreparable harm to Pendleton's goodwill and business reputation. Pendleton is entitled

to injunctive relief and to recover damages, costs, and reasonable attorneys' fees.

FIFTH CLAIM FOR RELIEF

(Common Law Trademark Infringement and Unfair Competition)

41. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1

through 40 above as if fully set forth herein.

42. Defendant's acts constitute common law trademark infringement and unfair

competition, and have created and will continue to create a likelihood of confusion to the

irreparable injury of Pendleton and its PENDLETON Marks unless restrained by this Court, as

Pendleton has no adequate remedy at law for this injury.

43. On information and belief, Defendant acted with full knowledge of Pendleton's

use of, and statutory and common law rights to, the PENDLETON Marks and without regard to

the likelihood of confusion of the public created by Defendant's activities.

44. Defendant's actions demonstrate an intentional, willful, and malicious intent to

trade on the goodwill associated with the PENDLETON Marks to the great and irreparable injury

of Pendleton.

PAGE 8 - COMPLAINT

LANE POWELL PC
601 SW SECOND AVENUE, SUITE2100
005436.0569/5070188.1 PORTLAND, OREGON 97204-3 158
5037782100 FAX : 503.778.2200
 45. As a result of Defendant's acts, Pendleton has been damaged in an amount not as

yet determined or ascertainable. At a minimum, however, Pendleton is entitled to injunctive

relief, an accounting of Defendant's profits, damages, and costs. Further, in light of the

deliberately fraudulent and malicious use of confusingly similar imitations of the PENDLETON

Marks, and the need to deter Defendant from similar conduct in the future, Pendleton

additionally is entitled to punitive d~ages .

SIXTH CLAIM FOR RELIEF

(Unfair and Deceptive Trade Practices, ORS 646.605 to 646.656)

46. Pendleton repeats and realleges each of the allegations set forth in paragraphs 1

through 45 above as if fully set forth herein.

47. Defendant's unauthorized use of the PENDLETON Marks have caused and are

likely to continue to cause Pendleton ascertainable loss.

48. Defendant has been and is intentionally and willfully passing off its goods as

those of Pendleton, causing a likelihood of confusion or misunderstanding as to the source,

sponsorship, or approval of Def~ndant's goods, causing a likelihood of confusion as to

Defendant's affiliation, connection, or association with Pendleton, and/or otherwise damaging

the public.

49. Defendant's unauthorized use of confusingly similar imitations of the

PENDLETON Marks has caused and is likely to cause substantial injury to the public and to

Pendleton, and Pendleton is entitled to injunctive relief and to recover damages, costs, and

reasonable attorneys' fees.

SEVENTH CLAIM FOR RELIEF

(Declaratory Judgment Regarding Registration, 15 U.S.c. § 1119,28 U.S.c. § 2201)

50. Pendleton repeats and reaUeges each of the allegations set forth in paragraphs 1

through 49 above as if fully set forth herein.

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. LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
005436 .0569/5070188 .1 PORTLAND, OREGON 97204·3158
503 .778.2100 FAX 503.778 .2200
 51. On July 15, 2010, Defendant filed an intent-to-use application in the USPTO to

register the mark PENDLETON ROUND-UP for "Fragrances" in International Class 3, and was

assigned application serial number 85/085,903.

52. Pendleton's registrations for the PENDLETON Marks have earlier filing dates

than Defendant's application for PENDLETON ROUND-UP for use on fragrances, hence

Pendleton's registrations have priori.ty over Defendant's application.

53. Pendleton's use of the mark PENDLETON in connection with scented lotions,

soaps, and other scented bath products, which are categorized in the same International

Classification as fragrances, predates the filing date of Defendant's application to register

PENDLETON ROUND-UP for use on fragrances.

54. Prior to the Defendant's application filing date of July 15, 2010, Pendleton had

been using the mark PENDLETON in interstate commerce in connection with candles, scented

lotions, scented soaps, and other scented bath products for several years. These goods are similar

or related to, and in the same International Classification as, fragrances. Hence, Pendleton's use

has priority over Defendant's applic~tion.

55. The goods on which Defendant intends to use and is using its PENDLETON

ROUND-UP mark, as evidenced by Defendant's application, are similar and/or related to the

goods on which Pendleton uses its PENDLETON Marks, as evidenced by Pendleton's

registrations and common law uses described herein.

56. Defendant's mark P'E NDLETON ROUND-UP IS nearly identical III sight and

sound and includes within it Pendleton's PENDLETON mark.

57. Defendant's PENDLETON ROUND-UP mark so resembles Pendleton's

PENDLETON Marks as to be likely to cause confusion, mistake, or deception, when used in

connection with related goods, with!n the meaning of 15 U.S.C. § 1052( d).

58. During the examination of Defendant's PENDLETON ROUND-UP mark, the

USPTO issued two office actions refusing registration of the mark. In its second office action,

PAGE 10 - COMPLAINT

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601 SW SECOND AVENUE, SUITE 2100
005436.056915070188.1 PORTLAND, OREGON 97204-3158
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the USPTO denied Defendant's claim of acquired distinctiveness based on prior registrations.

The USPTO indicated that Defendant could "submit evidence that the relevant purchasing

community would be likely to ~ee the proposed mark, and more importantly the term

"PENDLETON", as [a] trademark when used in connection with fragrances."

59. PENDLETON ROUND-UP for fragrances IS incapable of acqumng

distinctiveness because (a) of Pendleton's longstanding and continuous use of the various

PENDLETON marks for a wide variety of goods and services; (b) Pendleton has priority in the

International Class that includes fragrances; (c) Defendant's mark has not acquired

distinctiveness for the goods identified in Defendant's application because Defendant's use has

not been substantially exclusive or continuous; (d) the goods in Defendant's application are not

the same or related to the goods or services in its prior registrations on which it bases its claim of

acquired distinctiveness; and (e) ~ny evidence submitted by Defendant showing consumers'

recognition of PENDLETON as a trademark for fragrances should be discounted or disregarded

based on Pendleton's various PENDLETON marks, which have priority and acquired

distinctiveness prior to Defendant's application filing date.

60. Pendleton will be damaged by the registration Defendant seeks because the

registration will assist and support 'Defendant in the confusing and misleading use of the mark

PENDLETON ROUND-UP and will give color of exclusive statutory rights to Defendant in

violation and derogation of Pendleton's prior rights.

61. Accordingly, Defendant has no right to register the mark PENDLETON ROUND­

UP for use on fragrances.

DEMAND FOR JURY TRIAL

62. Plaintiff respectfully demands a trial by jury on all claims and issues so triable.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Pendleton Woolen Mills, Inc. respectfully prays for judgment as

follows:

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LANE POWELL PC
601 SW SECOND A VENUE, SUITE 2100
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 1. That Defendant and all of its agents, officers, employees, representatives,

successors, assigns, attorneys, and all other persons acting for, with, by, through, or under

authority from Defendant, or in copcert or participation with Defendant, and each of them, be

preliminarily and permanently enjoined from:

a. using the PENDLETON Marks, or any confusingly similar variations

thereof, in connection with Defendant's goods;

b. using any trademark, service mark, name, logo, design, or source

designation of any kind on or in connection with Defendant's goods that is a copy, reproduction,

colorable imitation, simulation of, confusing similar to, or in any way similar to the trademarks,

service marks, names, or logos of Pendleton;

c. using any trademark, servIce mark, name, logo, design, or source

designation of any kind on or in coonnection with Defendant'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 Pendleton, or are sponsored or authorized by Pendleton or are in any

way connected or related to Pendleton;

d. using any trademark, service mark, name, logo, design, or source

designation of any kind on or in connection with Defendant's goods that dilutes or is likely to

dilute the distinctiveness of the trademarks, service marks, names, or logos of Pendleton; and

e. passing off, palming off, or assisting in passing off or palming off,

Defendant's goods as those of Pendleton, or otherwise continuing any and all acts of unfair

competition as alleged in this Comp)aint.

2. That Defendant account for and pay over to Pendleton profits realized by

Defendant by reason of its unlawful acts herein alleged and that the amount of damages for

trademark infringement of the PENDLETON Marks be increased by a sum not exceeding three

times the amount thereof as provided by law.

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601 SW SECOND AVENUE, SUITE 2100
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 3. That Pendleton 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 Defendant's willful and intentional conduct.

4. That the Court declare that Defendant has no right to register the PENDLETON

ROUND-UP mark for use on "Fragrances," or on any goods similar or related to the goods and

services offered by Pendleton.

5. That the Court order Defendant to abandon the U.S. trademark application for

PENDLETON ROUND-UP for use on "Fragrances" in International Class 3, serial number

85/085,903.

6. That Pendleton be awarded reasonable attorneys' fees, costs, and disbursements

incurred herein.

7. That Pendleton be awarded prejudgment interest.

8. That Pendleton be awarded such other and further relief as the Court deems just

and equitable.

DATED: May 16,2011

LANE POWELL PC

By~~~=-~-=~~~~~~_________
Vicki L. Smith, OSB No. 854410
Parna A. Mehrbani, OSB No. 053235
Telephone: 503.778.2100
Attorneys for Plaintiff Pendleton Woolen Mills,
Inc., an Oregon corporation

PAGE 13 - COMPLAINT

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
005436.056915070188.1 PORTLAND, OREGON 97204-3 [58
503 .778 .2 [00 FAX 503.778.2200
Int. Cl.: 33
Prior U.S. as.: 47 and 49
Reg. No. 3,574,742
United States Patent and Trademark Office Registered Feb. 17, 2009

TRADEMARK
PRINCIPAL REGISTER

PENDLETON

PENDLETON WOOLEN MILLS, INC. (OREGON THE MARK CONSISTS OF STANDARD CHAR­
CORPORATION) ACTERS WITHOUT CLAIM TO ANY PARTICULAR
FONT, STYLE, SIZE, OR COLOR.
220 NW BROADWAY

PORTLAND, OR 972W OWNER OF U.S. REG. NO. 2,953,861.

SEC. 2(F).
FOR: DISTILLED SPIRITS, IN CLASS 33 (U.S. CLS.
47 AND 49). SER. NO. 77-336,487, FILED 11-26-2007.

FIRST USE 4-3-2003; IN COMMERCE 5-7-2003. KAREN BRACEY, EXAMll'o1NG ATTORl"EY

EXHI B1T---r-.I_;.­
PAGE I
Int. CI.: 20
Prior U.S. as.: 2, 13,22,25,32, and 50
Reg. No. 3,555,536
United States Patent and Trademark Office Registered Dec. 30, 2008

TRADEMARK
SUPPLEMENTAL REGISTER

PENDLETON

PENDLETON WOOLEN MILLS, INC. (OREGON
CORPORAnON)
220 NW BROADWAY
PORTLAND, OR 972W
FOR: SOFAS; CHAJRS; TABLES; BEDS; OTTO·
MANS; DRESSERS; CHESTS; l"IGHTSTANDS; MIR·
THE MARK CONSISTS OF STANDARD CHAR·
ACTERS WITHOUT CLAIM TO ANY PARTICULAR
FONT, STYLE, SIZE, OR COLOR.
OWNER OF U.S. REG. NOS. 2,713,136, 3,049,323,
AND OTHERS.

RORS, IN CLASS 20 (U.S. CLS. 2, 13,22, 25,32 AND SER. NO. 77-336,514, FILED P.R. 11·26·2007; ANI'.

50). S.R. 11·17·2008.

FIRST USE 0-0·2001; IN COMMERCE 0-0·2001 KAREN BRACEY, EXAMJi'."ING ATTORNEY

EXHIBIT
PAGE
{L
~
Int. CI.: 21
Prior U.S. as.: 2, 13, 23, 29, 30, 33, 40 and 50
Reg. No. 3,574,743
United States Patent and Trademark Office Registered Feb. 17, 2009

TRADEMARK
PRINCIPAL REGISTER

PENDLETON

PENDLETON WOOLEN MILLS, INC. (OREGON THE MARK CONSISTS OF STANDARD CHAR­
CORPORATION) ACTERS WITHOUT CLAIM TO ANY PARTICULAR
220 NW BROADWAY FONT, STYLE, SIZE, OR COLOR.
PORTLAND, OR 97209

FOR: DINNERWARE, NAMELY, PLATTERS, OWNER OF U.S . REG. NOS. 2,713,136, 3,049,323
PITCHERS, PLATES, BOWLS, BEVERAGE GLAS­ AND OTHERS.

SES, MUGS; WASTE BASKETS; TOWEL HOLDERS

IN THE NATURE OF BARS, RAlLS AND RINGS;

SOAP DISPENSERS; TOOTHBRUSH HOLDERS; SEC. 2(F).

SOAP DISHES; CUPS; BASKETS OF WICKER,

STRAW, WOOD OR CLOTH; VASES; COASTERS

NOT OF PAPER AND NOT BEING TABLE UNEN. SER . NO. 77-336,531, FILED 11-26-2007.

IN CLASS 21 (U.S. CLS. 2,13,23,29,30,33,40 AND 50).

FIRST USE 4-1-2002; IN COMMERCE 4-1-2002. KAREl\' BRACEY, EXAMn-.lNG ATTORl\EY

EXHIBIT~J=-_
PAGE I
Int. CI.: 25
Prior U.S. as.: 22 and 39
Reg. No. 3,568,773
United States Patent and Trademark Office Registered Jan. 27, 2009

TRADEMARK
SUPPLEMENTAL REGISTER

PENDLETON
PENDLETON WOOLEN MILLS, INC. (OREGON THE MARK CONSISTS OF STANDARD CHAR­
CORPORATION) ACTERS WITHOUT CLAIM TO ANY PARTICULAR
220 NW BROADWAY FONT, STYLE, SIZE, OR COLOR.
PORTLAND, OR 972f1j OWNER OF U.S. REG. NOS. 913,742, 2,059,665,
AND OTHERS.
FOR: FOOTWEAR, IN CLASS 25 (U.S. CLS. 22 AND
39). SER. NO. 77-531,405, FILED P.R. 7-25-2008; AM . S.R.
12-12-2008.

FIRST USE 8-<l-2006; IN COMMERCE 8-<l-2006. MICHAEL SOUDERS, EXAMINING ATTORNEY

EXHIBIT 4 ,
II.....:.......----:_

PAGE.__
 PENDLETON
Reg. No.3,718,175 P ENDLETON WOOLEN MlLLS, INC. (OREGON CORPORATION)
Registered Dec. 1,2009 220 NW BROADWAY
PORTLAND, OR 97209

In t. CI.: 33 FOR WINE, IN CLASS 33 (U.S. CLS. 47 AND 49).

FIRST US E 10-18-2005~ IN COMMERCE 10-18-2005.

TRADEMARK .
PRlNClPAL REGlSTER TIm MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR­
TICULAR FONT, STYLE, SIZE, OR COLOR .

OWNER OF u .S. REG . NOS. 2,953,861 AND 3,574,742.

SEC. 2( 1' ).

SER. NO. 77-725,073, F1LED 4-29-2009.

CAROLTNEWOOD, EXAMINTNGAITORNEY

l) irr~1 I!r of tho: UnilC'iJ SUite:. l'tlCcnl ;"nd r"raUemark Office-

EXHIBIT ~.~ .

" _-r--=-~~_

PAGE,_
Int. CI.: 30
Prior U.S. 0.: 46
Reg. No. 3,297,528
United States Patent and Trademark Office . Registered Sep. 25, 2007

TRADEMARK
PRINCIPAL REGISTER

PENDLETON

PENDLETON WOOLEN MILLS, INC. (OREGON THE MARK CONSISTS OF STANDARD CHAR­
CORPORATION) ACTERS wrrnOUT CLAIM TO ANY PARTICULAR
220 NW BROADWAY FONT, STYLE, SIZE, OR COLOR.
PORTLAND, OR 972r:B

FOR: BARBECUE SAUCE, IN CLASS 30 (U.S. CL. SER. NO. 78-842,174, FILED 3-21-2006.
46).

FIRST USE 3-18-2007; IN COMMERCE 3-18-2007. GINA HAYES, EXAMINING ATIORNEY

EXHIBIT~(~O__
PAGE [
Int. Cis.: 18, 24 and 35
Prior U.S. Os.: 1, 2,3,22,41,42,50, 100, 101 and 102
United States Patent and Trademark Office
TRADEMARK
SERVICE MARK
PRINCIPAL REGISTER
PENDLETON
PENDLETON WOOLEN MILLS, INC. (OREGON
CORPORATION)
220 NW BROADWAY
PORTLAND, OR 972083030
FOR: TOTE BAGS, OVERNIGHT BAGS, BACK­
PACKS, DUFFEL BAGS, SATCHELS, SADDLE
BAGS, COSMETIC CASES SOLD EMPTY, TOILET­
RY CASES SOLD EMPTY, SHAVING BAGS SOLD
EMPTY, LEATHER BLANKET CARRIERS, CAN­
VAS WOOD CARRIERS, LEATHER KEY CHAINS,
AND DOG APPAREL, IN CLASS 18 (U.S. CLS. 1,2,3,
22 AND 41).
FIRST USE 1-0-1981; IN COMMERCE 1-0-1981.
FOR: BLANKETS, NAMELY, BED BLANKETS,
CHILDREN'S BLANKETS, BLANKETS FOR OUT­
DOOR USE AND WOOLEN BLANKETS; BLAI'<'KET
THROWS, LINENS, TOWELS, PILLOWS, CUR­
TAINS, WOOLEN FABRIC, TEXTILE WALL HANG­
INGS, CLOTH COASTERS, TABLE RUNNERS,
OVEN MITTS, AND FIREPLACE MITTS, IN CLASS
24 (U.S. CLS. 42 AND 50).
FIRST USE 0-0-1895; IN COMMERCE 0-0-1895.
FOR: RETAIL STORE SERVICES, MAIL ORDER
CATALOG SERVICE, AND ONLINE RETAIL STORE
SERVICES FEATURING A WIDE VARIETY OF
HOUSEHOLD AND CONSUMER GOODS, SUCH
Reg. No. 3,049,323
Registered Jan. 24, 2006
AS CLOTHING, FOOTWEAR, HEADGEAR, AND
ACCESSORIES THEREFOR, JEWELRY , BLAN­
KETS, BEDDING, LINENS, PILLOWS, FABRIC,
FURNITURE, RUGS, HOME FURNISHINGS AND
ACCESSORIES FOR BATH, KlTCHEN, OFFICE,
AND HOUSEHOLD, HOUSEWARES AND KlTCH­
EN UTENSILS, LUGGAGE, BAGS, AND ACCES­
SORIES THEREFOR, TRAVEL ITEMS, BOOKS,
PAPER GOODS, PRINTED MATTER, ARTWORK,
TOYS, HOUSEHOLD AND HOLIDAY DECORA­
TIONS, COLLECTIBLES, COMPACT DISCS AND
DISC CASES, COMPUTER ACCESSORIES, AND
PET PRODUCTS, IN CLASS 35 (U.s. CLS. 100, 101
AND 102).
FIRST USE 0'{)-1995; IN COMMERCE 0-0-1995.
THE MARK CONSISTS OF STANDARD CHAR­
ACTERS WITHOUT CLAIM TO ANY PARTICULAR
FONT, STYLE, SIZE, OR COLOR.
OWNER OF U.S. REG. NOS. 514,710,2,717,244 AND
OTHERS.
SEC. 2(F).
SER. NO. 78452,195, FILED 7-16-2004.
MARlA-VICTORIA SUAREZ, EXAMINING ATTOR­
NEY
EXHIBIT T
PAGE I
Int. 0.: 14
Prior U.S. Os.: 2, 27, 28 and 50
Reg. No. 2,951,453
United States Patent and Trademark Office Registered May 17, 2005

TRADEMARK
PRINCIPAL REGISTER

PENDLETON

PENDLETON WOOLEN MILLS, INC. (OREGON OWNEROFU.S. REG. NOS. 514,710, 2,713,136 AND
CORPORATION) OTHERS.
220 NW BROADWAY
PORTLAND, OR 97208 SEC.2(F).
FOR: JEWELRY ANTI WATCHES, IN CLASS 14
(U.S. CLS. 2, 27, 28 AND 50). SER. NO. 78-310,260, FILED 10-7-2003.

FIRST USE 7-13-2001; IN COMMERCE 7-13-2001. ROBERT COGGINS, EXAMII'<1~G ATTORNEY

EXHIBIT Z;
PAGE I
Int. 0.: 25

Prior U.S. CIs.: 22 and 39

Reg. No. 1,980,970
United States Patent and Trademark Office Registered June 18, 1996

TRADEMARK

PRINCIPAL REGISTER

PENDLETON

PENDLETON WOOLEN MILLS, INC. AND SLIPPERS , IN CLASS 25 (U.S. CLS. 22

(OREGON CORPORATION) AND 39).
220 N.W. BROADWAY FIRST USE 0--0--1912; IN COMMERCE
PORTLAND, OR 97209 0-0-1912.
OWNER OF U.S. REG . NOS. 664,870, 1,351,761
AND OTHERS.
FOR: MEN'S WEAR AND WOMEN'S WEAR, SEC. 2(P).
NAMELY COATS, JACKETS, SHIRTS,
BLOUSES, SWEATERS, SKIRTS, DRESSES, SER. NO. 74- 684,919, FILED 6-5-1995.
SHORTS, PANTS, SLACKS, TROUSERS,
ROBES, VESTS, CAPS, HATS, TIES; CLOTH· KATHERINE STOJDES, EXAMINING ATTOR·
ING ACCESSORIES, NAMELY MUFFLERS NEY

Y
EXHIBIT-"'"""!"''---­
PAGE !
Int. Cl.: 25
Prior U.S. CIs.: 22 and 39
Reg. No. 2,059,665
United States Patent and Trademark Office Registered May 6, 1997

TRADEMARK
PRINCIPAL REGISTER

PENDLETON WOOLEN MILLS (OREGON FIRST USE 5-0-\996; IN COMMERCE

CORPORATION) 5-0-\996.
220N.W. BROADWAY OWNER OF U.S. REG. NOS. 664,870, 678,237,
PORTLAND, OR 97209 AND 777,908.
THE LINING IN THE DRAWING IS A FEA­
TURE OF THE MARK AND IS NOT INTEND­
FOR : MEN'S WEAR, NAMELY SHIRTS, ED TO INDICATE COLOR.
JACKETS, COATS, TROUSERS, LOUNGING SEC. 2(F).
ROBES, MUFFLERS, SOCKS AND CAPS; AND
WOMEN'S WEAR, NAMELY COATS, JACKETS, SN 74-568,276, FILED 8-31- I994.
SHIRTS, SHORTS, SLACKS, LOUNGING
ROBES, DRESSES, BLOUSES AND SWEATERS, ROBERT C. CLARK JR., EXAMINING AlTOR­
IN CLASS 25 (U.S. CLS. 22 AND 39). NEY

EXHIBIT 10

PAGE I

 .... J

Int. Cl.: 24

Prior U.S. Cl.: 42

Reg. No. 1,218,445

United States Patent and Trademark Office Registered Nov. 30, 1982

TRADEMARK

PrincipaJ Register

Pendleton Woolen Mills (Oregon corporation) For: BLANKETS, in CLASS 24 (U.S. CI. 42).

218 SW. JefTenon Sl First use 1963; in commerce 1963.

PortiBnd, cneg. 97201 Owner of U.S. Reg. No. 778,253.

Ser. No. 333,249, filed Ocl 19, 1981.

PAUL F. GAST, Examining Attorney

EXHIBIT-+-\-,-'_
P.AGE \
Int. CI.: 25
Prior U.S. C1.: 39
Reg. No. 913,742
United States Patent and Trademark Office Registered JUDe 8, 1971
10 'IOear Renewal Renew.1 Term Bellins June 8, 1991

TRADEMARK

PRINCIPAL REGISTER

PENDLETON

PENDLETON WOOLEN MILLS FOR, BOYS' OUTER SHIRTS AND

(OREG ON CORPORATION) JACKETS. MEN 'S OUTER SHIRTS AND
220 N.W. BROADWAY KNIT SHIRTS. ROBES, VESTS. JACK·
PORTLAND, OR 97209 ETS, SWEATERS AND SLACKS, IN
CLASS 39' (1IIT. CL. 2S)..
FIRST USE 1- 9- 1968; IN COMMERCE
OWNER OF U.S. REG. NOS. 184,711 ,
1- 9-1968.
778,253 AND OTHERS.
SER . NO. 72-334,116. FILED 7-31-1969.

In testimony whereof I have hereunto set my hand

and caused the seal of The Patent and Trademark
Office to be affIXed on Oct. 8, 1991.

COMMISSIONER Of PATENTS AND TRADEMARKS

EXHIBIT~1d-=---_
PAGE,_ _I<--_
lJat. a.: 24
PrIor v.s. a.: 42 Res. No. 514,710
UDited States PateDt ad Trademark Office R~ered Sep. 6, 1lN9
IleDenl OG DIlle Scp. 19. 1989

TRADEMARK

PRINCIPAL REGISTER

PENDLETON

PENDLETON WOOLEN MIu..s FOR: PIECE 00005 AND BLANKEn>

(OREGON CORPORATION)
218 s. W. JEI'I'ERSON SIlU!ET
PORll..AND. OR 97201
OWNER OF U.S. REG. NO. 184.711.
OF WOOL, carroN. SILK, RAYON.
NYLON. AND 0THEJl NATIJRAL AND
SYNTIIETIC PlBRES. IN CLASS 42 (INT.
CL. 24).
FIRST USE 12-1)-1903; IN COMMERCE
12-15- 1903.

SEC. 2(1').

SER . NO. 535.994: PILED ~27-1947.

/11 testimolly whereof / hove hereulltO m my Iumd

and caused the _I of The Patellt and Trademark
OffICe ,. be affixed 011 Sq. 19. 1989.

COMMISSIONER OF PATENTS AND TRADEMARKS

EXHIBIT \~
PAGE \
"1S 44 (Rev 12/07)
CIVIL COVER SHEET
The JS 44 civil cover sheetand the information contained herein neither replace nor supplement the filing and service ofpJeadings or other papers as required by law, except as provided
by local rules of court. This fonn, approved by the Judicial Conference of the United States in September 1974, IS required for the use of the Clerk of Court for the purpose ofmitiating
the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)

I. (a) PLAINTIFFS DEFENDANTS

PENDLETON WOOLEN MILLS, INC., an Oregon corporation, THE ROUND UP ASSOCIATION, an Oregon corporation,

(b) County of Residence of First Listed Plaintiff ..:.M:.;.::u;..:lt;..:no=..:..;.m;.:a::.;.h:.-_____ County of Residence of First Listed Defendant _U_m_a_ti_lI_a________
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE IN LAND CONDEMNATION CASES , USE THE LOCATION OFTHE
LAND INVOLVED.

CV '11 - 5 92 '
(c) Attorney 's (Firm Name, Address, and Telephone Numbell' Attorneys (If Known)
Vicki L. Smith and Parna A. Mehrbani 1 Lane Powell PC 1
601 SW Second Avenue, Suite 21001 Portland, OR 97204-31581
7 .21
II. BASIS OF JURISDICTION (Place an "X" in One Box Only) III. CITIZENSHIP OF PRINCIPAL P ARTIES(Place an "X" in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
o I U.S. Government I!!I 3 Federal Queslion PTF DEF PTf DEI'
Plaintiff (U.S. Government Not a Party) Citizen of This State 0 I I o
Incorporated or Principal Place 0 4 0 4
of Business In This State

o 2 U.S. Government o 4 Diversity Cilizen of Another State o 2 0 2 Incorporated and Principal Place o 5 0 5
Defendant of Business In Another State
(Indicate Citizenship of Parties in Item 11\)
o 3 0 3 Foreign Nation o 6 0 6

IV NA TU RE OF SUIT (Place an "X" in One Box Onlv)

o
o
110
120
C(]NTRACT
Insurance
Marine 0
PERSONAL INJURY
310 Airplane
TORTS
PERSONAL INJURY
0 362 Personal Injury -
o
o
FORFEITUREIPENALTY
610 Agricull1Jre
620 Other Food & Drug
o
o
BANKRU.PTC~

422 Appeal 28 USC 158

423 Withdrawal
-- ~ .~

0
0
~RSTATUTES

400 State Reapportionment

410 Antitrust
.1

0 130 Miller Act
o 140 Negotiable Instrument
o 150 Recovery of Overpayment
& Enforcemenl ofJudgment
o 151 Medicare Act
o 152 Recovery of Defaulted
Student Loans
(Exc!. Veterans)
0 153 Recovery of Overpayment
of Veteran 's Benefits
0 160 Stockholders' Suits
o 190 Other Contract
o 195 Contract Product Liability
o 196 Franchise
REAL PROPERTY
o 210 Land Condemnation
o 220 Foreclosure
o 230 Rent Lease & Ejectment
o 240 Torts to Land
o 245 Tort Product Liability
o 290 All Other Real Ptoperty
0 315 Airplane Ptoduct Med. Malpractice o 625 Drug Related Seizure 28 USC 157 0 430 Banks and Banking
Liability 0 365 Personal Injury - of Ptoperty 21 USC 881 0 450 Commerce
0 320 Assault, Libel & Product Liability o 630 Liquor Laws PROPERTY RIGHTS 0 460 Deportalion
Slander 0 368 Asbestos Personal o 640 R.R. & Truck o 820 Copyrights 0 470 Racketeer Influenced and
0 330 Federal Employers ' Injury Product o 650 Airline Regs. o 830 Patenl Corrupt Organizations
Liability Liability o 660 Occupational J8I 840 Trademark 0 480 Conswner Credit
0 340 Marine PERSONAL PROPERTY SafetylHealth 0 490 CablelSat TV
0 345 Marine Product 0 370 Other Fraud o 690 Other 0 810 Selective Service
Liability 0 371 Truth in Lending ABOR ., • . SOC IAI ,SEC JR _y o .. ' 0 850 Securities/Commodities/
0 350 Motor Vehicle 0 380 Other Personal o 710 Fair Labor Standards o 861 HIA (I395ff) Exchange
0 355 Motor Vehicle Property Damage Act o 862 Black Lung (923) 0 875 CuslOmer Challenge
Product Liability 0 385 Property Damage o 720 LaborlMgml. Relations o 863 D1WCIDIWW (405(g» 12 USC 3410
0 360 Other Personal Ptoduct Liability o 730 LaborlMgmt.Reporting o 864 SSlD Title XVI 0 890 Other Statutory Actions
Iniury
.. -
& Disclosure Act o 865 RSI(405(g» 0 891 Agricultural Acts
CIVIL RIGHTS pRISONER PETJTl NS o 740 Railway Labor Act FEDERAL TAX SUITS 0 892 Economic Stabilization Act
0 441 Voting 0 sio Motions to Vacate o 790 Other Labor Litigation o 870 Taxes (U.S. Plaintiff 0 893 Environmental Mailers
0 442 Employment Sentence o 791 Empl. Ret. Inc. or Defendant) 0 894 Energy Allocation Act
0 443 Housing! Habeas Corpus: Security Act o 871 IRS-Third Party 0 895 Freedom of Information
Accommodations 0 530 General 26 USC 7609 Act
0 444 Welfare 0 535 Death Penalty IMMIGRATJON 0 900Appeal of Fee Detennination
0 445 Amer. wlDisabilities- 0 540 Mandamus & Other o 462 Naturalization Application Under Equal Access
Employment 0 550 Civil Rights o 463 Habeas Corpus - to Juslice
0 446 Amer. wlDisabilities - 0 555 Prison Condition Alien Detainee 0 950 Constitutionality of
Other o 465 Other Immigration State Statutes
0 440 Other Civil Rights Actions

V. ORIGIN (Place an "X" in One Box Only) Appeal to District

illl Original o 2 Removed from 0 3 Remanded from o 4 Reinstated or
Transferred from 0 5
0 6 Multidistrict 7 Judge from
Magistrate o
Proceeding State Court Appellate Court Reopened
another district Litigation
s eci Jud ment
Cite the U .S. Civil Statute under which you are filing (Do nol eile jurisdictional slatutes unless diversity):
VI. CAUSE OF ACTION ~~"".S"",..':"C,-".S""e""'c":'ti""onCl..-!.,;10""'5<....:1..."e""'t""'se""""-_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __

VII. REQUESTED IN
COMPLAINT:

VIII. RELATED CASE(S)

(See instructions) :
IF ANY JUDGE DOCKET NUMBER

DATE

05/16/2011
FOR OffiCE USE ONLY

RECEIPT # APPL YING IFP JUDGE MAG. JUDGE

-------- AMOUNT ------- ----------- ------ -----------------