leatherman tool group trademark complaint

8/10/2019 Leatherman Tool Group Trademark Complaint

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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.

Case 3:14-cv-00823-MO Document 34 Filed 12/10/14 Page 1 of 13


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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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(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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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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(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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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


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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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


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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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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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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leatherman tool group trademark complaint

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