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Page 1 FIRST AMENDED COMPLAINT
DAVIS WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610(503) 241-2300 main (503) 778-5299 fax
JOHN F. MCGRORY, JR., OSB #[email protected] L. FENDALL, OSB #[email protected] WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400Portland, Oregon 97201-5610Telephone: (503) 241-2300Facsimile: (503) 778-5299
Of Attorneys for Plaintiff
IN THE UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
AT PORTLAND
LEATHERMAN TOOL GROUP, INC., anOregon Corporation,
PLAINTIFF,
v.
ARMITAGE HARDWARE ANDBUILDING SUPPLY, INC., an IllinoisCorporation, d/b/a ARMITAGE DIRECTandLEATHERMANTOOL.COM,
DEFENDANT.
Case No. 3:14-cv-00823-MO
FIRST AMENDED COMPLAINT
Trademark Infringement (15 U.S.C.1114), Unfair Competition and FalseDesignation of Origin (15 U.S.C.1125(a)), and Common Law UnfairCompetition
DEMAND FOR JURY TRIAL
For its Complaint against Defendant Armitage Hardware and Building Supply
(Defendant), Plaintiff Leatherman Tool Group, Inc. (Leatherman Tool) alleges as follows:
JURISDICTION AND VENUE
1. This is an action for trademark infringement, unfair competition and false
designation of origin arising under the Lanham Act, 15 U.S.C. 1051, et seq., and for unfair
competition under the laws of the State of Oregon.
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DAVIS WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
(503) 241-2300 main (503) 778-5299 fax
2. This Court has jurisdiction over this action pursuant to 28 U.S.C. 1331,
1338(a) and (b), and 15 U.S.C. 1121 because it arises under the Lanham Act, 15 U.S.C.
1051, et seq. Jurisdiction over the Oregon common-law claim is also appropriate as this
claim is so related to the claims under the Lanham Act that it forms part of the same case and
controversy, and hence falls within the scope of this Courts supplemental jurisdiction pursuant
to 28 U.S.C. 1338(b) and 1367.
3. This Court has personal jurisdiction over Defendant because Defendant has
engaged in unlawful and purposeful conduct directed towards Leatherman Tool, an Oregon
corporation, and therefore has caused injury to Leatherman Tool in Oregon. Venue is proper inthe District of Oregon pursuant to 28 U.S.C. 1391(b) because a substantial part of the events
giving rise to these claims occurred in Oregon, and because Defendant is subject to personal
jurisdiction in Oregon.
THE PARTIES
4. Leatherman Tool is an Oregon corporation, with its principal place of business in
Portland, Oregon. Leatherman Tool manufactures and distributes engineered multi-tools, pocket
tools, and knives that are designed for outdoor, tactical, professional, and general use.
Leatherman Tools products are distributed throughout the United States and internationally.
5. Defendant is an Illinois corporation, with its principal place of business in
Chicago, Illinois. On information and belief, Defendant owns and operates both Armitage Direct
and leathermantool.com, an online retail website that sells multi-tools, pocket tools, and knives
that are manufactured by Leatherman Tool.
LEATHERMAN TOOLS TRADEMARK AND BUSINESS
6. Since 1983, Leatherman Tool has engineered, manufactured, and sold high
quality multi-tools, pocket tools, and knives.
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DAVIS WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
(503) 241-2300 main (503) 778-5299 fax
9. Leatherman Tool has expended substantial time and resources promoting and
advertising its products under the LEATHERMAN mark both throughout the United States and
internationally. Due to the widespread promotion of the LEATHERMAN mark, consumers,
potential consumers, and the general public have come to rely upon the LEATHERMAN mark
as an indication that the products sold under the name or mark originate from or are otherwise
associated with Leatherman Tool.
10. Additionally, consumers, potential consumers, and the general public associate
the LEATHERMAN mark with exceptional design, quality, and customer service. As a result of
this recognition, Leatherman Tool has developed significant goodwill and reputation and derivessubstantial value from use of the LEATHERMAN mark to identify their products and business.
DEFENDANTS UNLAWFUL CONDUCT
11. Defendant is currently neither an authorized distributor nor an authorized reseller
of Leatherman Tools products, and is not authorized to sell LEATHERMAN brand products
online. Defendant is not authorized by Leatherman Tool to operate a website for the sale of
Leatherman Tool products, and is not authorized to use the LEATHERMAN mark. Defendant,
nonetheless, is using the LEATHERMAN mark in connection with its website, email
solicitations, and services in a manner which is confusingly similar to Leatherman Tools own
official website, www.leatherman.com, and services.
12. Any prior permission by Leatherman Tool, whether express or implied, regarding
Defendants use of the LEATHERMAN mark or Defendant's website has been revoked.
13. Despite the fact that Defendant is not authorized to distribute or sell Leatherman
Tool products online, Defendant promotes and sells multi-tools, pocket tools, and knives
designed manufactured by Leatherman Tool on its website, leathermantool.com, which
prominently says "Leathermantool.com" on the top of every page. A true and correct copy of a
screenshot of Defendants leathermantool.com homepage as is appeared when this lawsuit was
initiated is attached hereto as Exhibit 1.
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DAVIS WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
(503) 241-2300 main (503) 778-5299 fax
used on Defendants leathermantool.com website (a) as of the filing of the lawsuit, and (b) as of
the filing of this Amended Complaint, are attached hereto as Exhibit 3.
17.
Defendants use of the leathermantool.com domain name and website, and
Defendant's use of the LEATHERMAN mark in the meta tags for its website, is not only
intended but likely to misdirect consumers intending to purchase Leatherman Tool products from
Leatherman Tools website at www.leatherman.com by taking these consumers or potential
consumers directly to Defendants infringing website. For instance, a search on web browser
Google.com using the search term leatherman tool ranks Defendants leathermantool.com
website highly among its many search results. True and correct screenshots of this search onGoogle.com (a) as of the filing of the lawsuit, and (b) as of the filing of this Amended
Complaint, are attached hereto as Exhibit 4.
18. Defendant has also used the LEATHERMAN mark in sending email solicitations
to sell goods via its infringing website.
19. Defendants use of the LEATHERMAN mark in the URL leathermantool.com,
the text and meta tags of its infringing website, and it its email solicitations, are likely to cause
confusion, to cause mistake, or to deceive consumers and the public into believing that
Defendants leathermantool.com website is associated with and/or sponsored or endorsed by
Leatherman Tool. Indeed, Defendant's use of the LEATHERMAN mark has already caused
confusion among consumers.
20. Defendants use of the LEATHERMAN mark in the domain name and website is
also more than is reasonably necessary to describe and conduct Defendants business of selling
multi-tools, pocket tools, and knives manufactured by Leatherman Tool.
21. Leatherman Tool has had constructive or actual notice of Defendants
leathermantool.com website for fourteen years.
22. Leatherman Tool initially filed this suit on May 19, 2014. Leatherman Tools
initial complaint sought damages and injunctive relief.
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DAVIS WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
(503) 241-2300 main (503) 778-5299 fax
23. Leatherman Tool is no longer seeking damages for past infringement. Leatherman
Tool concedes that Leathermans delay establishes unreasonable delay for the purposes of
establishing a laches defense as to any claim for damages based on Defendants past
infringement and that such damages are therefore barred due to Leathermans delay. However,
despite the conceded delay in bringing this suit, the elements of laches have not been established
as to any claim by Leatherman Tool for prospective injunctive relief.
FIRST CLAIM FOR RELIEF
(Trademark Infringement Lanham Act 15 U.S.C. 1114)
24.
Leatherman Tool realleges and incorporates by reference the allegations
contained in Paragraphs 1 through 23 above.
25. The LEATHERMAN mark is distinctive, has become well-recognized in the
mind of consumers, potential consumers, and the general public with Leatherman Tools
products, and has come to represent the goodwill and reputation associated with Leatherman
Tools products and customer service.
26. Without Leatherman Tools current authorization or permission, and having
knowledge of Leatherman Tools rights in the LEATHERMAN mark, and the fact that
Defendants infringing leathermantool.com domain and website uses marks identical and/or
confusingly similar to the LEATHERMAN mark, Defendant is using and operating
leathermantool.com to sell Leatherman Tool products in direct competition with Leatherman
Tool, diverting consumer internet traffic to Defendants infringing website.
27. Defendants unlawful and unauthorized use of the LEATHERMAN mark in
conjunction with its infringing leathermantool.com domain and website, is likely to cause
confusion, or to cause mistake, or to deceive consumers, potential consumers, and the public into
believing that Defendants infringing website originates from, is associated with, or is otherwise
authorized by Leatherman Tool in violation of 15 U.S.C. 1114.
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DAVIS WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
(503) 241-2300 main (503) 778-5299 fax
28. As a result of Defendants infringement, Leatherman Tool is likely to be injured,
either by a direct diversion of sales from Leatherman Tool to Defendant, or by a lessening of
goodwill or reputation associated with Leatherman Tools products.
29. Leatherman Tool has no adequate remedy at law and, if the Defendants activities
are not enjoined, Leatherman Tool will continue to suffer irreparable harm and injury to its
goodwill and reputation.
30. Defendants unlawful and unauthorized use of the LEATHERMAN mark in
connection with its infringing leathermantool.com domain and website is both knowing and
intentional, and thus Defendants actions constitute exceptional, willful, and deliberate conduct,entitling Leatherman Tool to recover its reasonable attorneys fees and costs incurred in
connection with this lawsuit pursuant to 15 U.S.C. 1117.
SECOND CLAIM FOR RELIEF
(Unfair Competition and False Designation of Origin Lanham Act 15 U.S.C. 1125(a))
31. Leatherman Tool realleges and incorporates by reference the allegations
contained in Paragraphs 1 through 30 above.
32. Defendants infringing leathermantool.com domain and website offers the same
nature and type of products sold and offered for sale by Leatherman Tool, and therefore
Defendants unlawful, unauthorized, and willful use of the LEATHERMAN mark in connection
with leathermantool.com is likely to cause confusion among consumers, potential consumers,
and the general public.
33. Defendants unlawful use of the LEATHERMAN mark in connection with its
infringing leathermantool.com domain and websiteError! Hyperlink reference not valid. is
likely to cause confusion, or to cause mistake, or to deceive consumers, potential consumers, and
the public into believing that Defendants infringing website originates from, is associated with,
or is otherwise authorized by Leatherman Tool in violation of 15 U.S.C. 1125(a).
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DAVIS WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
(503) 241-2300 main (503) 778-5299 fax
34. As a result of Defendants improper use of the LEATHERMAN mark in
connection with its infringing leathermantool.com domain and website, Leatherman Tool is
likely to be injured, either by a direct diversion of sales from Leatherman Tool to Defendant, or
by a lessening of goodwill or reputation associated with Leatherman Tools products.
35. Leatherman Tool has no adequate remedy at law and, if the Defendants activities
are not enjoined, Leatherman Tool will continue to suffer irreparable harm and injury to its
goodwill and reputation.
36. Defendants unlawful use of the LEATHERMAN mark in connection with its
infringing domain and website is both knowing and intentional, and thus Defendants actionsconstitute exceptional, willful, and deliberate conduct, entitling Leatherman Tool to recover its
reasonable attorneys fees and costs incurred in connection with this lawsuit pursuant to
15 U.S.C. 1117.
THIRD CLAIM FOR RELIEF
(Common Law Unfair Competition)
37. Leatherman Tool realleges and incorporates by reference the allegations
contained in Paragraphs 1 through 36 above.
38. As a result of Leatherman Tools efforts in designing, manufacturing, and
promoting Leatherman Tools products, Leatherman Tool has built-up valuable goodwill in the
LEATHERMAN mark. As such, the LEATHERMAN mark has not only become associated
with Leatherman Tools products, but has also come to represent Leatherman Tools exceptional
design, quality, and customer service.
39.
Defendant, with full knowledge of Leatherman Tools ownership and interest in
the LEATHERMAN mark, is using such mark in operating its leathermantool.com domain and
website in order to divert consumer traffic to defendants infringing website. Defendants
unauthorized and unlawful use of the LEATHERMAN mark in connection with
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DAVIS WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
(503) 241-2300 main (503) 778-5299 fax
control and supervision of Leatherman Tool, or otherwise sponsored, approved, or endorsed by
Leatherman Tool.
2.
Defendant be ordered to modify its website so that it prominently identifies
Defendant at the top of each page of the website, along with a prominent disclaimer, also at the
top of each page of the website, indicating Defendant is not affiliated with Leatherman Tool;
with the cost of such modifications to be paid for by Leatherman Tool.
3. Defendant be ordered to move its website to a new domain, with the cost of the
new domains registration to be paid for by Leatherman Tool; and to cancel, forfeit, or transfer
the domain name leathermantool.com to Leatherman Tool, at which point Leatherman Tool, atits own cost, will host a website at leathermantool.com which (1) clearly indicates that the
website formerly located at leathermantool.com and operated by Armitage has moved to a new
domain; (2) provides a link to Armitages website at its new domain; (3) provides a link to
Leatherman Tools own website at leatherman.com; and (4) will remain online for a period of
two (2) years, or whatever period of time this Court deems just and equitable.
4. Defendant be ordered to file with this Court and serve on Leatherman Tools
counsel within thirty (30) days after the Courts issuance of a judgment, a report setting forth in
detail the manner and form in which Defendant has complied with Paragraphs 1 through 3 of
Leatherman Tools Prayer for Relief.
5. Defendant be required to pay costs of suit, including reasonable attorneys fees
and expert witness fees.
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DAVIS WRIGHT TREMAINE LLP1300 S.W. Fifth Avenue, Suite 2400
Portland, Oregon 97201-5610
6. Leatherman Tool be granted such other and further relief as this Court deems just
and equitable.
DATED this __ day of December, 2014.
DAVIS WRIGHT TREMAINE LLP
By /s/ John F. McGrory, Jr.John F. McGrory, Jr., OSB #[email protected] L. Fendall, OSB #[email protected]: (503) 241-2300
Facsimile: (503) 778-5299
Of Attorneys for Plaintiff
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