Seaberg Company Complaint

7/27/2019 Seaberg Company Complaint

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PAGE 2COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

NATURE OF THIS ACTION

1. This is an action for trademark infringement and unfair competition under the

laws of the United States (The Lanham Act, codified at 15 U.S.C. 1051, et seq.), and the

common law of trademarks.

PARTIES

2. Plaintiff is a corporation organized under the laws of Oregon having its principal

place of business at 27350 S.W. 95th Avenue, Suite 3038, Wilsonville, OR 97070 and is

engaged in the business of manufacturing and selling medical products.

3. Dynarex is a New York corporation, having its principal place of business at 10

Glenshaw Street, Orangeburg, New York 10962.

4 SOS is a California corporation, having its principal place of business at 15705

Strathern #11, Van Nuys, California 91406.

JURISDICTION AND VENUE

5. This Court has subject matter jurisdiction pursuant to 15 U.S.C. 1121 and

28 U.S.C. 1331 and 1338(a).

6. This Court has personal jurisdiction over Defendants at least because Defendants

have substantial contacts in the State of Oregon related to the claims in this action and

Defendants engaged in the wrongful acts alleged herein in the State of Oregon.

7. Venue in this judicial district is proper under 28 U.S.C. 1391(b) and (c).

STATEMENT OF FACTS COMMON TO ALL CLAIMS

8. Plaintiff has been in the business of manufacturing and selling innovative medical

products for over 25 years.

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9. Plaintiff manufactures and sells a line of orthopedic splints having distinctive

orange and blue sides, which are referred to herein as the SAM Splint line.

10. Plaintiff owns United States Trademark Registration No. 3,720,814 (the

Registration). A copy of the Registration Certificate is attached hereto as Exhibit A.

11. Plaintiff first used the trademark denoted in the Registration in commerce in

connection with the goods identified in the Registration at least as early as December 31, 1985.

12. The trademark consists of:

the colors orange and blue as applied to the goods. The color blue

is applied as the color of the material on the entire surface of one

of the opposite sides of the goods, and the color orange is applied

as the color of the material on the entire surface of the other side of

the goods. The colors are thus separately visible on the opposite

sides and both colors are visible along the edges of the goods.

13. This trademark is Registered for use on orthopedic splints.

14. Plaintiff learned that Dynarex is importing into and selling in the United States a

line of splints having a blue side and an orange side, which line is identified as the ActiSplint

line of splints. Photos of two examples of the ActiSplint splint are attached hereto as Exhibit B.

15. Dynarex offers the ActiSplint line of splints throughout the United States,

including in Oregon. Dynarex also advertises the ActiSplint line of splints through its website,

http://dynarexassets.com/. A page from Dynarexs website showing the ActiSplint is attached

hereto as Exhibit C.

16. SOS sells the ActiSplint line of splints throughout the United States, including in

Oregon. SOS also advertises and sells the ActiSplint line of splints directly through its



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http://www.myproship.com/ and http://www.sosproducts.com/ websites. A page from

SOSs website showing the ActiSplint is attached hereto as Exhibit D.

17. Defendants use the color blue for the material of one entire side of the splints and

the color orange for the material of the other entire side.

18. The ActiSplint line of splints has substantially the same commercial impression as

Plaintiffs SAM Splints bearing the Plaintiffs trademark.

19. Defendants use of blue and orange colors for the opposite sides of its ActiSplint

splints is intended to cause consumers to mistakenly believe that the ActiSplint splints are

produced by or originate from Plaintiff.

PLAINTIFFS FIRST CLAIM(Violation of Lanham Act 32Registration)

20. Plaintiff repeats and realleges each of the allegations contained in paragraphs 1

through 19 of this Complaint as if fully set forth herein.

21. The acts of Defendants described above constitute an infringement of Plaintiffs

rights in and under the registration, with consequent damages to Plaintiff and the business and

goodwill associated with and symbolized by the registration and, specifically, give rise to this

claim under 15 U.S.C. 1114.

22. Defendants acts of trademark infringement have caused and are causing great

and irreparable harm to Plaintiff, Plaintiffs goodwill, and Plaintiffs rights in and under the

Registration, in an amount which cannot be adequately determined at this time and, unless

restrained, will cause further irreparable injury and damage, leaving Plaintiffs with no adequate

remedy at law.



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23. By virtue of the Registration, Defendants had constructive notice, at least as early

as December 8, 2009, of Plaintiffs exclusive ownership of and nationwide right to use the

registered trademark.

24. Defendants acts of infringement have been and are being committed with actual

knowledge of Plaintiffs rights and are willful and in gross disregard of Plaintiffs rights.

25. By reason of the foregoing, Plaintiff is entitled to injunctive relief against

Defendants, and anyone associated therewith, to restrain further acts of infringement, and to

recover any damages proven to have been caused by reason of Defendants acts of infringement,

and to recover enhanced damages based upon the willful, intentional, and/or grossly negligent

activities of Defendants.

PLAINTIFFS SECOND CLAIM(Violation of Lanham Act 43)



27. Plaintiff manufactures, advertises, and sells splints bearing the Registered

trademark throughout the United States, including in Oregon.

28. Prior to Defendants conduct that forms the basis for this Complaint, consumers

had come to associate orthopedic splints with a blue side and an orange side exclusively with

Plaintiffs products.

29. Through Plaintiffs promotional efforts, business conduct, and continuous use,

Plaintiffs splints with a blue side and an orange side have become, through widespread and

favorable public acceptance and recognition, assets of substantial value as symbols of Plaintiff,

its high quality products, and its goodwill.



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30. On account of Plaintiffs long and continuous exclusive marking of its splints

with the trademark of the Registration, and substantial advertising and sales of their products,

Plaintiff has established valid and enforceable rights in Plaintiffs splints with a blue side and an

orange side.

31. Notwithstanding Plaintiffs preexisting valid and enforceable rights, Defendants,

without Plaintiffs permission or approval, advertised and sold (or caused to be sold) splints with

a blue side and an orange side in the United States, including in Oregon.

32. As a result of Defendants unauthorized use of Plaintiffs trademark for its splints

with a blue side and an orange side, Plaintiff and Defendants use (and have used) Plaintiffs

trademark in connection with identical and related products and services.

33. Plaintiff and Defendants offer (and have offered) their respective products and

services to customers and/or the relevant consumer base in the same geographical locations and

through the same trade channels.

34. Defendants are direct competitors of Plaintiff.

35. Defendants use of Plaintiffs trademark is not authorized by Plaintiff and is likely

to cause confusion and mistake, and to deceive consumers as to the source or origin of

Defendants products.

36. Plaintiff has been, and continues to be, injured by Defendants unauthorized and

unlawful use of Plaintiffs trademark.

37. Defendants unauthorized use of Plaintiffs trademark, including on Defendants

websites and catalogs, is causing confusion amongpotential purchasers of Plaintiffs products.

38. The acts by Defendants described above constitute infringement of Plaintiffs

rights in and to Plaintiffs trademark, with consequent damages to Plaintiff and the business and



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goodwill associated with and symbolized by Plaintiffs trademark, specifically give rise to this

claim under 15 U.S.C. 1125.

39. Defendants acts of unfair competition have caused and are causing great and

irreparable harm to Plaintiff, Plaintiffs goodwill, and Plaintiffs rights to Plaintiffs trademark,

in an amount which cannot be adequately determined at this time and, unless restrained, will

cause further irreparable injury and damage, leaving Plaintiffs with no adequate remedy at law.

40. On information and belief, Defendants acts of infringement have been and are

being committed with actual knowledge of Plaintiffs prior rights in Plaintiffs trademark, and are

willful and in gross disregard of Plaintiffs rights.


Defendants, and anyone associated therewith, to restrain further acts of unfair competition, and

to recover any damages proven to have been caused by reason of Defendants aforesaid acts of

unfair competition, and to recover enhanced damages based upon the willful, intentional, and/or

grossly negligent activities of Defendants.

PLAINTIFFS THIRD CLAIM(Common Law Trademark Infringement)



43. On account of its long and continuous use ofPlaintiffs trademarkand substantial

advertising and sales of its products, Plaintiff has established common law trademark rights in

Plaintiffs trademark.

44. The acts by Defendants described above constitute an infringement of Plaintiffs

common law rights in and to the use ofPlaintiffs trademark, with consequent damages to



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Plaintiff and the business and goodwill associated with and symbolized by Plaintiffs trademark,

and, specifically, give rise to this action under the common law of trademarks.

45. Defendants acts of trademark infringement have caused and are causing great

and irreparable harm to Plaintiff, Plaintiffs goodwill andPlaintiffs rights in and to Plaintiffs

trademark, in an amount which cannot be adequately determined at this time and, unless

restrained, will cause further irreparable injury and damage, leaving Plaintiff with no adequate

remedy at law.

46. On information and belief, Defendants acts of infringement have been and are

being committed with actual knowledge of Plaintiff prior rights in Plaintiffs trademark, and are

willful and in gross disregard of Plaintiffs rights.


Defendants, and anyone associated therewith, to restrain further acts of infringement, and to

recover any damages proven to have been caused by reason of Defendants aforesaid acts of

infringement, and to recover enhanced damages based upon the willful, intentional, and/or

grossly negligent activities of Defendants.

PRAYER

WHEREFORE, Plaintiff prays for the following relief:

A. A permanent nationwide injunction enjoining Defendants, their employees,

agents, officers, directors, attorneys, representatives, successors, affiliates, subsidiaries and

assigns, and all those in concert or participation with any of them from:

(1) imitating, copying, using, reproducing, registering, attempting to register

and/or displaying a configuration of splints with a blue side and an orange side or



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any splint configuration which colorably imitates or is confusingly similar to

Plaintiffs trademark;

(2) using any other false description or representation or any other thing

calculated or likely to cause confusion, deception, or mistake in the marketplace

with regard to Plaintiffs trademark; and

(3) importing, selling, or offering for sale any products which colorably

imitate or are confusingly similar to Plaintiffs trademark, including the

ActiSplint line of products;

B. An award of damages to compensate for the infringement by Defendants of

Plaintiffs trademark in an amount to be proven at trial, including Plaintiffs actual damages and

Defendants profits attributable to the infringement;

C. An order directing Defendants to deliver up for destruction all materials and

matter in their possession or custody or under their control that infringes Plaintiffs trademark,

including, without limitation, all advertising and promotional materials;

D. An award of Plaintiffs attorneys fees, treble actual damages, and treble damages

based upon an accounting of Defendants profits, including all statutory enhancements, other

enhancements, and attorneys fees, on account of the willful nature of Defendants acts as

provided in 15 U.S.C. 1117;

E. An order directing Defendants to undertake corrective advertising in a form,

manner, and frequency that is acceptable to Plaintiff and the Court; and



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F. Such other relief, in law or in equity, to which Plaintiff may be entitled, or which

this Court may deem just and proper.

DATED: July 22, 2013 Respectfully submitted,

CHERNOFF VILHAUER LLP

/s/ Susan D. Pitchford

Donald B. Haslett, OSB No. 772158Susan D. Pitchford, OSB No. 980911

Telephone: (503) 227-5631

Attorneys for Plaintiff

JURY DEMAND

Pursuant to Federal Rules of Civil Procedure 38(b), Plaintiff hereby demands a trial by

jury as to all issues so triable in this action.

CHERNOFF VILHAUER LLP

/s/ Susan D. Pitchford

Donald B. Haslett, OSB No. 772158Susan D. Pitchford, OSB No. 980911

Telephone: (503) 227-5631

Attorneys for Plaintiff


Seaberg Company Complaint

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