FILED17 liN 1115:15USDC-oRP

Kevin M. Hayes, OSB No. 01280

kevin.hayes@klarquist.com
Jeffrey S. Love, OSB No. 87398
jeffrey.love@klarquist.com
KLARQUIST SPARKMAN, LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, Oregon 97204-2988
Telephone: 503-595-5300
Facsimile: 503-228-9446
Counsel for Plaintiff
METAL-TECH CAGE, LLC.
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
PORTLAND DIVISION
METAL-TECH CAGE, LLC., an Oregon
limited liability corporation,
Plaintiff,
v.
JOHN SUNDQUIST, an individual d/b/a/
WHITE KNUCKLE OFF ROAD
PRODUCTS ofCahfomia
Defendant.
Civil Ac'&V ~ 1 1 - 1 39 4 - BR _-.
COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR
COMPETITION
JURY TRIAL DEMANDED
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 1 of 15 Page ID#: 1
Plaintiff METAL-TECH CAGE, LLC. ("Metal-Tech"), through its attorneys, complains
of Defendant JOHN SUNDQUIST doing business as WHITE KNUCKLE OFF ROAD
PRODUCTS ("White Knuckle") and alleges as follows, upon knowledge with respect to itself
and its own acts, and upon infonnation and belief as to all other matters:
I. THE METAL-TECH TRADEDRESS AND THE NATURE OFTHE ACTION
1. This is an action at law and in equity to remedy acts of trademark infringement
and unfair competition under federal and Oregon law, all caused by Defendant's unauthorized
use in commerce of Metal-Tech's federally registered trade dress in its non-functional design for
its Illb rails (hereinafter, "the Asserted Metal-Tech Mark").
2. Plaintiff owns a federally registered trade mark for its design of a vehicle rub rail.
Metal-Tech's mark is registered on the Principal Register as U.S. Federal Trademark
Registration No. 4,010,850. A true copy of this registration is attached hereto as Exh. A. The
mark was registered on August 16,2011, based on an application filed December 23,2009.
3. Pursuant to 15 U.S.c. 1057 (b), Plaintiff's certificate of registration is prima
facie evidence of the validity of the registered mark and of the registration of the mark, of the
record owner's ownership of the mark, and of the owner's exclusive right to use the registered
mark in commerce on or in connection with the goods or services specified in the certificate.
4. PlaintifT's federal statutory trademark rights in its federally registered design
based on its Federal Trademark Registration No. 4,010,850 begin as of the filing date of the
application that matured into the registration, namely on December 23,2009.
5. A drawing from Metal-Tech's Federal Trademark Registration No. 4,010,850
showing its federally registered rub rail design is shown below:
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 2 of 15 Page ID#: 2
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6. A distinctive design feature of the Asserted Metal-Tech Mark is the two piece
design with the second piece having a "kick-out" portion, as shown below. This provides a more
streamlined appearance to the kick-out portion of the rub rail as compared to traditional one
piece designs, giving a valuable distinctiveness to Plaintiffs design.
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7. For illustrative purposes, copied below are two examples of actual products
distributed by Plaintiffthat embody its federally registered design.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 2
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 3 of 15 Page ID#: 3
8. In addition to its Federal Trademark rights based on Federal Trademm"k
Registration No. 4,010,850, Metal-Tech is also the owner of the common law trade dress rights
in its registered design based on its extensive use of its trade dress for its rub rails in Oregon and
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 3
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 4 of 15 Page ID#: 4
elsewhere, which has caused the consuming public to associate Plaintiff s design with Plaintiff as
the source of the rub rails (also "the Asserted Metal-Tech Mark"). These rights accrued prior to
Defendant offering its infringing rub rails.
9. Defendant has been using the Asserted Metal-Tech Mark in its own rub rails
without authorization from, and over the objection of, Plaintiff, and with full knowledge of
Plaintiffs prior use and federal registration.
10. For example, despite Plaintiffs federally registered trade dress rights in the
design of the rub rail on the left, which Plaintiff offers in commerce, Defendant sells the rub rail
on the right (bottom left of picture).
Example of Plaintifrs Federally Example of Defendant's Design
A commenter in the off road forum maintained by IH8MUD (at
http://foTUm.ih8mud .com/80-series-tech/ 481 779-whi te-knuckIe-offroad -sliders-insrtalIed-2.html )
stated concerning the White Knuckle rub rails: "my MT [Metal-Tech] Sliders are the same on
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 4
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 5 of 15 Page ID#: 5
both sides and these white knuckle sliders are obviously an imitation ofMT's as far as looking
exactly like them ... " (the screen capture copied below is an excerpt from that forum).
11. Defendant's use of the Asserted Metal-Tech Mark unfairly trades offofMetal
Tech's rights in its trade dress by, among other things, confusing consumers as to whether
Defendant ' s goods are associated with Plaintiff.
12. Plaintiff requested Defendant to stop selling products whose design embodies
Plaintiffs Asserted Metal-Tech Mark in a letter dated October 3,2011. Instead of complying,
Defendant threatened to take legal action in a Federal District Court in a letter dated October 31 ,
2011.
II. THE PARTIES
13. Plaintiffis a corporation organized and existing under the laws of the State of
Oregon with its principai place of business at Suite A 1000 Commerce Parkway, Newberg,
Oregon, 97132. Plaintiff is located and does business within this judicial district.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 5
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 6 of 15 Page ID#: 6
14. Defendant John Sundquist d/b/a White Knuckle Off Road Products is an
individual from the State of California with a place of business at 9630 Mesa Vista Street, Apple
Valley, California, 92308. Defendant is doing business in this judicial district.
III. JURISDICTION AND VENUE
15. 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, jUllsdiction being conferred in
accordance with 15 U.s.C. 1121 and 28 U.S.c. 133 I and 1338. Supplemental jUllsdiction
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 Defendant
is doing and transacting business within, and has committed acts complained of herein, in this
judicial district and targeted at this judicial district.
IV. THE FACTS
A. Metal-Tech's Products
16. Metal-Tech is a Newberg, Oregon-based company that manufactures and sells
equipment for off-road vehicles, such as roll cages, rub rails, bumpers and fender kits. Since at
least 2000, Metal-Tech has provided quality off-road equipment to off-road vehicle enthusiasts.
Metal-Tech sells its goods all over the United States, including in Oregon and California.
17. Since as early as June 2004 Metal-Tech has been marketing its vehicle rub rail
shown in the drawing below.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 6
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 7 of 15 Page ID#: 7
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18. Metal-Tech's design has enjoyed significant commercial success and consumers
all over the nation, and even abroad, recognize the design as meaning that the rub rail is from
Metal-Tech. In particular, the kick-out p0l1ion ofMetal-Tech's design (shown above in the top
of the drawing) is a feature that sets Metal-Tech' s design apart from its competitors and causes
consumers to recognize the design as exclusively Metal-Tech's.
19. With regard to the recognition ofMetal-Tech's design by consumers, Plaintiff had
a poll conducted in which over 97 percent of respondents selecting between photographs of
different rub rail designs were able to correctly select Plaintiff's rub rail due to its distinctive
design. Moreover, respondents providing reasons for their selection in many cases explained
that it was Plaintiff's distinctive kick-out that caused them to recognize the rub rail as Plaintiff's.
For example, one respondent stated: "that rear kickout is a metaltech giveaway."
B. Defendant's Infringing Acts
10. Defendant markets knock-otIs of Plaintiff's rub rail that look so much like
Plaintiffs trade dress that consumers are likely to be confused as to the source or origin of the
products and/or as to the association, sponsorship or endorsement between Plaintiff and
Defendant.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 7
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 8 of 15 Page ID#: 8
21. Examples of such infringing rub rails sold by Defendant are shown in the
photographs below, which are excerpts from Defendant's website at http://www.white
knuckleoffroad.com:
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 8
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 9 of 15 Page ID#: 9
Bolt-On/Bare Metal
22. Defendant has sold one or more of the above or other rub rails having a two-piece
design and kick-out into Oregon.
23. Defendant also maintains an online retail store at http://www.white
knuckleoffroad.com. Copied below is a screen capture from the home-page for that store:
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 9
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 10 of 15 Page ID#: 10
durable hand.,..ade Rock SlIden where qualty III second to none.
From magaZIne faatures to Independent reviews end customer
testimonies, the quality of our products have been proven. Whether
you ere a trtal drtver or rock crawler, our Rock Sliders are up to the
challenge.
24. Ahhough difficult to read, in the background on the upper left, Defendant offers
shipping to 48 states, which are believed to be the contiguous United States, including Oregon.
25. Defendant is targeting Oregon for sales of products that include its infringing
products such as Defendant's "Toyota FJ Cruiser Rock Sliders," as advertised on its website and
shown in the screen capture copied above.
26. Defendant knew when it sold its products into Oregon, including infringing
products such as Defendant's "Toyota FJ Cruiser Rock Sliders," that Plaintiff is based in
Newberg, Oregon.
27. Defendant knew that the effects of Defendant's infringement would be felt by
Plaintiff in Newberg, Oregon.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 10
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 11 of 15 Page ID#: 11
28. Defendant further advertises its products for sale nationally, such as in the
nationally circulated "4WD Toyota Owner," a magazine that is also circulated in Oregon.
Defendant touts that its FJ Cruiser Rock Sliders, such as those shown above in Paragraph 24,
were "featured in 4WD Toyota Owner magazine" on its website at www.white
knuckleoffroad.com/fjcruiser.htm.
29. Plaintiff requested that Mr. Sundquist and White Knuckle stop offering copies of
Plaintiff's rub rails in a letter dated October, 3, 2011.
30. In response, in a letter dated October 31,2011, to Plaintiff's counsel in Portland,
Oregon, White Knuckle admitted that Metal-Tech "is the rightful owner" of U.S. Federal
Trademark Registration No. 4,010,850 for the Asserted Metal-Tech Mark.
31. However, White Knuckle claimed that its design did not infiinge and went on to
threaten suit (i.e., that it would "proceed with action to protect its rights at the TTAB and/or
appropriate FDe.").
32. Defendant's actions are knowing, willful and without Plaintiff's authorization,
and Defendants are directly, contributorily, and vicariously liable for the resulting acts of unfair
competition and trademark infiingement.
V. CAUSES OF ACTION
A. Unfair Competition
33. MetaJ-Tech 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) ofthe
Lanham Act, 15 U.S.C. 1125(a)(1), and Oregon State common law.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 11
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 12 of 15 Page ID#: 12
"
35. Defendant's use ofthe Asserted Metal-Tech Mark in commerce 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 products
and services of Defendants and those of Plaintiff, and misrepresents the nature, characteristics, and
qualities of these products and 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. Metal-Tech is without an adequate remedy at law because Defendant's unfair
competition has caused ineparable injury to Metal-Tech, and unless said acts are enjoined by this
Court, they will continue and Metal-Tech will continue to suffer irreparable injury.
38. Defendant's acts of unfair competition, ifnot enjoined, will cause Metal-Tech to
sustain monetary damages, loss, and injury in an amount to be determined in this action.
B. Trademark Infringement
39. Metal-Tech repeats and realleges each and every allegation contained in the above
paragraphs of this Complaint as though fully set forth herein.
40. The acts of Defendants constitute trademark infringement in violation of 15 U.S.c.
l114(1)(a), and Oregon common law.
41 . Defendant's use of the Asserted Metal-Tech Mark 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 Defendant's goods
and services are in some way legitimately connected with, sponsored or licensed by, or otherwise
related to Metal-Tech.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 12
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 13 of 15 Page ID#: 13
42. Defendant's use of the Asserted Metal-Tech Mark was made with actual or
constructive knowledge of Metal-Tech' s rights in the Asserted Metal-Tech Mark.
43. Defendant's use of the Asserted Metal-Tech Mark is without Metal-Tech's
consent or permission.
44. Defendant's acts of trademark infiingement, unless enjoined, will cause Metal-
Tech to sustain monetary damages, loss, and injury in an amount to be determined in this action.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Metal-Tech prays that, pursuant to the Federal Trademark Act,
15 U.S.c. 1051-1127 and Oregon State law:
A. The Court finds that Metal-Tech owns valid and subsisting trademark rights in the
Asserted Metal-Tech Mark.
B. Defendant be held liable under each claim for relief set forth in this Complaint.
C. Defendant, its agents, servants, employees, and attorneys, and all other persons in
active concert or participation with them, be immediately and permanently enjoined from using
the Asserted Metal-Tech Mark, or any other reproduction, counterfeit, copy, colorable imitation
or confusingly similar variation of the Asserted Metal-Tech Mark, as a trademark or service
mark (including trade dress), or in advertising, distribution, sale, or offering for sale of
Defendant's products and/or services.
D. Defendant be required to pay to Metal-Tech all damages Metal-Tech has suffered
and will suffer by reason of Defendant's unlawful acts set forth herein, together with legal
interest from the date of accrua thereof.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 13
Case 3:11-cv-01394-BR Document 1 Filed 11/17/11 Page 14 of 15 Page ID#: 14
E. Defendant be required to account for and pay to Metal-Tech all profits wrongfully
derived by Defendant through its unlawful acts set forth herein, together with legal interest from
the date of accrual thereof.
F. Defendant be required to pay to Metal-Tech its reasonable attorneys' fees and
disbursements incurred herein, pursuant to 15 U.S.c. 1117 and the equity powers of this Court.
G. Defendant be required to pay Metal-Tech the costs of this action.
H. The Court award Metal-Tech enhanced profits and damages and such other and
further relief as this Court deems just and equitable.
DEMAND FOR JURY TRIAL
Metal-Tech hereby makes demand for a trial by jury pursuant to Rule 38 of the Federal
Rules of Civil Procedure as to all issues herein so tI;able.
Dated: November 17,2011
Kevin M. Hayes, OS
kevin.ha es (i klar uist.c
I
Jeffrey S. Love, OSB o. 87398
jeffrey.love@klarquist.com
KLARQUIST SPARKMAN, LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, Oregon 97204-2988
Telephone: 503-595-5300
Facsimile: 503-228-9446
Counsel for Plaintiff
METAL-TECH CAGE, LLC.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 14
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