kassab jewelers, inc. v. joseph kassab

7/29/2019 Kassab Jewelers, Inc. v. Joseph Kassab

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COMPLAINT FOR TRADEMARK INFRINGEMENT,

UNFAIR COMPETITION, DILUTION, AND BREACH OF CONTRACT

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

PORTLAND DIVISION

KASSAB JEWELERS, INC.,

Plaintiff,

v.

JOSEPH KASSAB and J. KASSAB

JEWELERS & CUSTOM DESIGN, INC.,

an Oregon Corporation, d/b/a JOEKASSAB JEWELERS,

Defendants.

Civil No. _________

COMPLAINT FOR TRADEMARK

INFRINGEMENT, UNFAIR

COMPETITION, DILUTION, AND

BREACH OF CONTRACT

Kevin M. Hayes, OSB #012801

Email: [email protected]

Jeffrey S. Love, OSB #873987

Email: [email protected]

KLARQUIST SPARKMAN, LLP

121 S.W. Salmon Street, Suite 1600Portland, Oregon 97204

Telephone: 503-595-5300Facsimile: 503-595-5301

Margaret E. Schroeder, OSB #025748

Email: [email protected] HELTERLINE LLP

805 S.W. Broadway, Suite 1900

Portland, OR 97205Telephone: 503-224-5560

Facsimile: 503-224-6148

Attorneys for Plaintiff

KASSAB JEWELERS, INC.

Case 3:13-cv-00074-MO Document 1 Filed 01/15/13 Page 1 of 12 Page ID#: 1


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Plaintiff Kassab Jewelers, Inc. (Kassab Jewelers), through its attorneys, complains of

Defendants Joseph Kassab and J. Kassab Jewelers & Custom Design, Inc., one or both of whom

is doing business asJoe Kassab Jewelers, and alleges as follows, upon knowledge with respect to

itself and its own acts, and upon information and belief as to all other matters:

I. THE KASSAB JEWELERS MARKS AND THE NATURE OF THE ACTION

1. This is an action at law and in equity to remedy acts of trademark infringementand unfair competition under federal and Oregon law, all caused by Defendants unauthorized

use in commerce of Plaintiff Kassab Jewelers KASSAB JEWELERS and KASSAB trade

names, trademarks and service marks (hereinafter, the Asserted Kassab Jewelers Marks). In

addition, this action seeks to remedy Defendant Joseph Kassabs breach of his contract not to use

the Asserted Kassab Jewelers Marks other than as permitted under such contract.

2. Kassab Jewelers is the owner of a federally registered, incontestable service markfor the mark KASSAB JEWELERS for retail jewelry store services and wholesale jewelry store

services, registered on the Principal Register of the United States Patent and Trademark Office as

United States Trademark Registration No. 1,960,490. A true copy of this registration is attached

hereto as Exh. A. The mark was registered on March 5, 1996.

3. Kassab Jewelers is also the owner of Oregon state trademark registrations for thetrademark KASSAB (Registration No. T/S 38370) for jewelry, jewelry design services, retail and

wholesale jewelry store and jewelry sales services and KASSAB JEWELERS (Registration No.

T/S 38369) for jewelry, jewelry design services, retail and wholesale jewelry store and jewelry

sales services. True copies of the registrations for these marks are attached hereto as Exhs. B

and C. These marks were both registered in Oregon on March 22, 2005.



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4. Kassab Jewelers further owns the common law trade names, trademarks andservice marks KASSAB JEWELERS and KASSAB, based on its extensive use of those

marks in the Portland area and elsewhere for its jewelry services and products since at least

1990.

5. Pursuant to 15 U.S.C. 1065, Kassab Jewelers federal registration for the markKASSAB JEWELERS became incontestable in April 2001 upon its filing of the appropriate

documents with the Patent and Trademark Office.

6. Defendants recently opened a store at the Bridgeport Village shopping mall inTigard, Oregon, under the name JOE KASSAB JEWELERS (as can be seen in the screen

capture from the malls website copied below):



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7. The parties have an agreement dated January 27, 2005 (the 2005 Agreement)(attached as Exh. D) that restricts Defendants use of JOE KASSAB JEWELERS to only the two

locations in Portland at which Defendant had stores in 2005: a store at Clackamas Town Center

and a store at the Lloyd Center shopping mall. The Lloyd Center store location has since closed

8. The 2005 Agreement prohibits Defendants use of JOE KASSAB JEWELERS fora store at any other location other than those two licensed locations.

9. The 2005 Agreement further states that outside of the two licensed locations inPortland, Defendant Joseph Kassab, and any company of which he is now an officer or majority

owner, which includes Defendant J. Kassab Jewelers & Custom Design, Inc., would not use

KASSAB, alone or in combination with any one or more other letters, words, marks, or designs,

in connection with a jewelry business as a business name, trademark, and/or service mark.

10. Defendants complied with the 2005 Agreement by not using the word KASSABwhen they opened a jewelry store at the corner of SW Broadway and Alder St. in Portland under

the name Joseph K. Wedding Rings next door to Plaintiffs Portland store.

11. The Bridgeport Village shopping mall in Tigard, Oregon is not one of the twolocations where Defendants use of JOE KASSAB JEWELERS is allowed under the 2005

Agreement.

12. Defendants use of JOE KASSAB JEWELERS for the Bridgeport Villageshopping mall jewelry store breaches Defendants agreement not to use a name or mark

comprising KASSAB as set forth in the 2005 Agreement and also constitutes infringement of

Plaintiffs trademark rights in the Asserted Kassab Jewelers Marks.

13. Defendant Joseph Kassabs license agreement with Plaintiff precludes Defendantsfrom challenging the validity of the Asserted Kassab Jewelers Marks.



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II. THE PARTIES

14. Plaintiff Kassab Jewelers is a corporation organized and existing under the lawsof the state of Oregon with its principal place of business at 529 SW Broadway, Portland, Oregon,

97205-3425. Kassab Jewelers is located and does business within this judicial district.

15. Defendant J. Kassab Jewelers & Custom Design, Inc. is an Oregon corporationwith its principal place of business at 12000 SE 82nd Ave. #2068, Happy Valley, Oregon.

Defendant J. Kassab Jewelers & Custom Design, Inc. is doing business in this judicial district.

16. Defendant Joseph Kassab is an individual and the President of Defendant J.Kassab Jewelers & Custom Design, Inc. Defendant Joseph Kassab is doing business in this

judicial district.

17. One or both Defendants are believed to be doing business as Joe Kassab Jewelersat the Clackamas Town Center and now at the Bridgeport Village shopping mall in Tigard,

Oregon.

III. JURISDICTION AND VENUE

18. This Court has jurisdiction over the subject matter of this action because this actionarises under the Federal Trademark Act, 15 U.S.C. 1051-1127, jurisdiction being conferred in

accordance with 15 U.S.C. 1121 and 28 U.S.C. 1331 and 1338. Supplemental jurisdiction

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 Defendants

are doing and transacting business within, and have committed the acts complained of herein, in

this judicial district.



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IV. THE FACTS

A. Kassab Jewelers Products and Services

19. Kassab Jewelers is a Portland, Oregon-based provider of retail and wholesalejewelry store services and premium jewelry and jewelry designs marketed and sold under the

Asserted Kassab Jewelers Marks. Since at least as early as 1990, Kassab Jewelers and its

predecessors in interest have provided quality jewelry store services in Portland and the

surrounding areas. Kassab Jewelers uses the Asserted Kassab Jewelers Marks at its retail store

located at 529 SW Broadway, Portland, Oregon, photographs of which are attached hereto as

Exh. E; at its two other retail stores located at 310 State Street #106 in Lake Oswego, Oregon,

and in the Washington Square Mall located at 9306 S.W. Washington Square Road in Tigard,

Oregon; on its website at www.kassabjewelers.com (a recent screen captures from select pages

from this website are attached hereto as Exh. F); and otherwise in commerce in connection with the

sale and marketing of jewelry, including on sales tags, product packaging, labels, signs, letterhead,

business cards and advertisements.

20. Kassab Jewelers enjoys a strong reputation in the trade locally and regionally for itssignature services offered under the Asserted Kassab Jewelers Marks and has enjoyed this

reputation for a long time. An example of its reputation is shown in the February 2005 Portland

Tribune article on Valentines Day gifts, attached hereto as Exh. G, picturing the Asserted

Kassab Jewelers Marks in connection with the Kassab Jewelers store as a recommended

destination for jewelry purchases. This strong reputation has caused the Asserted Kassab

Jewelers Marks to come to signify Kassab Jewelers products and services in the minds of

consumers, in whom the Asserted Kassab Jewelers Marks evoke favorable images of Kassab

Jewelers and its products and services. In at least the Portland metropolitan area, the Asserted



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Kassab Jewelers Marks are widely recognized as a designation of the source of the Plaintiffs

services.

21. Since at least as early as March 1990, Kassab Jewelers has continuously providedits products and services in commerce under the Asserted Kassab Jewelers Marks in Portland and

the surrounding area. Kassab Jewelers has spent significant sums in the advertising and promotion

of its products and services offered under the Asserted Kassab Jewelers Marks.

B. Defendants Infringing Acts

22. Defendants recently commenced prominent use, in commerce, of KassabJewelers and Kassab in the name and mark Joe Kassab Jewelers to identify the source of a

jewelry business at the Bridgeport Village shopping mall in Oregon, just south of Portland.

23. By explicitly using Kassab and Kassab Jewelers in the name and mark fortheir jewelry business Joe Kassab Jewelers, Defendants are infringing upon the Asserted

Kassab Jewelers Marks.

24. By using the name and mark Joe Kassab Jewelers outside of the two licensedlocations in Portland, Oregon, Defendant Joseph Kassab has breached his agreement not to use

KASSAB, alone or in combination with any one or more other letters, words, marks, or designs,

in connection with a jewelry business as a business name, trademark, and/or service mark.

25. Consumers of jewelry store services have been actually confused by Defendantsuse of the name and mark Joe Kassab Jewelers at the Bridgeport Village shopping mall,

mistakenly associating Defendants store there with Plaintiff.

26. Defendants actions are knowing, willful, and without Plaintiffs authorization, andDefendants are directly, contributorily, and vicariously liable for the resulting acts of unfair

competition, trademark infringement, and breach of contract.



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V. CAUSES OF ACTION

A. Unfair Competition

27. Kassab Jewelers repeats and re-alleges each and every allegation contained in theabove paragraphs of this Complaint as though fully set forth herein.

28. This cause of action for unfair competition arises under Section 43(a)(1) of theLanham Act, 15 U.S.C. 1125 (a)(1), and Oregon state common law.

29. Defendants use of the Asserted Kassab Jewelers Marks in commerce as allegedhereinabove is likely to cause confusion, mistake, or deception as to the affiliation, connection, or

association of Defendants with Plaintiff Kassab Jewelers or as to the origin, sponsorship, or

approval of the products and services of Defendants and those of Plaintiff Kassab Jewelers, and

misrepresents the nature, characteristics, and qualities of these products and services.

30. The acts of Defendants constitute unfair competition in violation of Section43(a)(1) of the Lanham Act, 15 U.S.C. 1125(a)(1), and unfair competition under Oregon

common law.

31. Kassab Jewelers is without an adequate remedy at law because Defendants unfaircompetition has caused irreparable injury to Kassab Jewelers, and unless said acts are enjoined by

this Court, they will continue and Kassab Jewelers will continue to suffer irreparable injury.

32. Defendants acts of unfair competition, if not enjoined, will cause Kassab Jewelersto sustain monetary damages, loss, and injury.

B. Trademark Infringement

33. Kassab Jewelers repeats and realleges each and every allegation contained in theabove paragraphs of this Complaint as though fully set forth herein.



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34. The acts of Defendants constitute trademark infringement in violation of 15 U.S.C. 1114(1)(a), ORS 647.095, and Oregon common law.

35. Defendants use of the Asserted Kassab Jewelers Marks as alleged hereinabove islikely 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 Defendants goods

and services are in some way legitimately connected with, sponsored or licensed by, or otherwise

related to Kassab Jewelers.

36. Defendants use of the Asserted Kassab Jewelers Marks was made with actual orconstructive knowledge of Kassab Jewelers rights in the Asserted Kassab Jewelers Marks.

37. Defendants use of the Asserted Kassab Jewelers Marks in Tigard, Oregon, iswithout Kassab Jewelers consent or permission.

38. Defendants acts of trademark infringement, unless enjoined, will cause KassabJewelers to sustain monetary damages, loss, and injury.

C. Dilution

39. Kassab Jewelers repeats and realleges each and every allegation contained in theabove paragraphs of this Complaint as though fully set forth herein.

40. The acts of Defendants constitute dilution in violation of ORS 647.107.41. Defendants use of the Asserted Kassab Jewelers Marks as alleged hereinabove

causes and are likely to cause consumers to associate the Asserted Kassab Jewelers Marks with

Defendants and its products and services, and thereby reduces their effectiveness in identifying

and advertising Kassab Jewelers products and services.

42. Defendants use of the Asserted Kassab Jewelers Marks was made with actual orconstructive knowledge of Kassab Jewelers rights in the Asserted Kassab Jewelers Marks.



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43. Defendants use of the Asserted Kassab Jewelers Marks is without KassabJewelers consent or permission.

44. Kassab Jewelers is without an adequate remedy at law because Defendantsdilution of the Asserted Kassab Jewelers Marks has caused irreparable injury to Kassab Jewelers,

and unless said acts are enjoined by this Court, they will continue and Kassab Jewelers will

continue to suffer irreparable injury.

D. Breach of Contract

45. Kassab Jewelers repeats and realleges each and every allegation contained in theabove paragraphs of this Complaint as though fully set forth herein

46. By using the name and mark Joe Kassab Jewelers outside of the two licensedlocations in Portland, Oregon, Defendants have breached their agreement set forth in the 2005

Agreement not to use KASSAB, alone or in combination with any one or more other letters,

words, marks, or designs, in connection with a jewelry business as a business name, trademark,

and/or service mark.

47. Kassab Jewelers is without an adequate remedy at law because Defendantsbreach of the agreement has caused irreparable injury to Kassab Jewelers, and unless said acts

are enjoined by this Court and the Court orders specific performance of the contract, the acts will

continue and Kassab Jewelers will continue to suffer irreparable injury.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Kassab Jewelers prays that, pursuant to 15 U.S.C. 1116 to

1125 and Oregon state law:



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A. The Court finds that Kassab Jewelers owns valid and subsisting trademark rightsin the Asserted Kassab Jewelers Marks.

B. Defendants be held liable under each claim for relief set forth in this Complaint.C. The Court grant an injunction that Defendants, their affiliated companies, and

its/their agents, servants, employees, and attorneys, and all other persons in active concert or

participation with them, be enjoined from using KASSAB and/or KASSAB JEWELERS

(however spelled or punctuated, whether capitalized, abbreviated, singular or plural, printed or

stylized, whether alone or in combination with any word(s), punctuation or symbol(s), and

whether used in caption, text, orally or otherwise), or any other reproduction, counterfeit, copy,

colorable imitation or confusingly similar variation of KASSAB or KASSAB JEWELERS, as a

trademark or service mark, trade name or domain name, or in advertising, distribution, sale, or

offering for sale of products and/or services.

D. The Court order as part of the injunction that Defendants file with the Court andserve on Plaintiff within thirty days after the service on the Defendants of the injunction, a report

in writing under oath setting forth in detail the manner and form in which the Defendants have

complied with the injunction.

E. Defendants be required to pay to Kassab Jewelers its reasonable attorneys feesand disbursements incurred herein, pursuant to 15 U.S.C. 1117 and the equity powers of this

Court.

F. Defendants be required to pay Kassab Jewelers the costs of this action.



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G. The Court award Kassab Jewelers such other and further relief as this Courtdeems just and equitable.

Respectfully submitted,

Dated: January 15, 2013 By: _s/ Kevin M. Hayes______________

Kevin M. Hayes, OSB #012801Email: [email protected]

Jeffrey S. Love, OSB #873987

Email: [email protected] SPARKMAN, LLP

121 S.W. Salmon Street, Suite 1600

Portland, Oregon 97204Telephone: 503-595-5300

Facsimile: 503-595-5301

Margaret E. Schroeder, OSB #025748Email: [email protected]

BLACK HELTERLINE LLP

805 S.W. Broadway, Suite 1900Portland, OR 97205

Telephone: 503-224-5560

Facsimile: 503-224-6148

Attorneys for Plaintiff

KASSAB JEWELERS, INC.


kassab jewelers, inc. v. joseph kassab

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