repar v willowood trademark complaint

7/28/2019 Repar v Willowood Trademark Complaint

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Jeff S. Pitzer, OSB No. 02084Email: [email protected] S. Geon, OSB No. 97505Email: [email protected] SW Main St., Suite 805Portland, OR 97204Telephone: 503-227-1477Facsimile: 503-227-5839Attorneys for Plaintiff Repar Corporation

lThTlTED STATES DISTRICT COURT

DISTRICT OF OREGONEUGENE DIVISION

REPAR CORPORATION, a Texas Case No.6: 13-cv-l 043corporation,Plaintiff, COMPLAINT FOR TRADEMARKv. INFRINGEMENT, BREACH OF CONTRACT,

AND OTHER CLAIMSWILLOWOOD USA, LLC, an Oregonlimited liability company, and BRIAN (Breach of express contract; breach of implied-inHEINZE, fact contract; quasi-contract/unjust enrichment;Defendants. misappropriation of trade secrets (ORS 646.461 et

seq.); federal trademark infringement (15 U.S.c. 1114, 1116, 1117); federal unfair competition (15U.S.C. 1116, 1117, 1125); common lawtrademark infringement and unfair competition)

_____________ ---l DEMAND FOR JURY TRIALIn support of its Complaint against defendants, plaintiff alleges as follows:

Page 1 - COMPLAINT FOR TRADEMARK INFRINGEMENT,BREACH OF CONTRACT, AND OTHER CLAIMS

Case 6:13-cv-01043-AA Document 1 Filed 06/20/13 Page 1 of 20 Page ID#: 1


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Factual Background5.

The Federal Insecticide, Fungicide and Rodenticide Act ("FIFRA"), 7 U.S.c. 136 et seq., is a comprehensive federal environmental statute that regulates pesticides. Amongother things, FIFRA requires the registration ofpesticides with the U.S. EnvironmentalProtection Agency ("EPA") and bars the sale, use, or distribution of unregistered pesticides. Thechemical "tebuconazole," an agricultural pesticide, is subject to the EPA registrationrequirements ofFIFRA.

6.Since 2008, Repar has distributed two formulations of an agricultural pesticide

that contains tebuconazole. Repar markets these two products under the trade names TEBUCON45 DF and TEBUCON 3.6F.

7.In accordance with the requirements of FIFRA, Repar timely obtained

registrations for these tebuconazole formulations from the EPA.8.

Repar was in the business of marketing and distributing its TEBUCON 45 DF andTEBUCON 3.6F products before Willowood even existed.

9.Willowood was formed in December 2009. Heinze, Willowood's president, had

once been in the business of marketing agricultural pesticides but, after selling his formercompany, was for several years subject to a non-compete agreement.




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10.Heinze had previously met Repar's founder and president, Bhushan Mandava.

When the end of Heinze's non-compete term was approaching, Heinze contacted Mandava todiscuss a potential business relationship. In particular, Heinze was interested in marketing andselling Repar's TEBUCON products in Oregon. Willowood, however, did not have a FIFRAregistration from the EPA that would permit the company to sell or distribute such agriculturalpesticides under its own name.

11.To put himself in a position to lawfully sell and distribute pesticides like Repar's

TEBUCON products, Heinze proposed that Willowood enter into distribution arrangements withRepar allowing Willowood to sell TEBUCON 45 DF and TEBUCON 3.6F under labelsshowing Willowood as the distributor. To facilitate discussions about this proposal, Heinzesigned an EPA "supplemental distribution" agreement (EPA Form 8570-5) for each product.Submissionof this form is a legal requirement for any company to sell an EPA-registeredproduct under its own company name when that company does not have its own registration. Byjointly submitting this form with Repar, Willowood was able to become a lawful distributor or"subregistrant"ofRepar's registered products. Heinze also signed a nondisclosure agreement toprotect the secrecy of product formulas and other proprietary information he and Willowoodmight receive from Repar. Willowood promised Repar that it would not use the nameTEBUCON except for sales authorized under the EPA Form 8570-5 agreement for that product.

12.EPA Form 8570-5 requires that the subregistrant's product be manufactured and

packaged by the same person who manufactures and packages the registrant's product. To meet




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this requirement for Repar's TEBUCON 3.6F product, Willowood and Repar jointly reachedagreement with a third-party formulator/packager in Arkansas. Willowood and Repar alsoentered into a formulating and packaging agreement for TEBUCON 45 DF between themselvesand a third-party formulator/packager in Texas, who sent finished product to both Repar andWillowood under Repar's label. In both instances,Willowood agreed that Repar would be theexclusive supplier of technical grade tebuconazole for both products.

13.Willowood agreed to these terms verbally, and pledged to enter into a written

contract reflecting these terms. In reliance on Willowood's representations regarding Repar'sexclusivity as Willowood's supplier of technical-grade tebuconazole and Willowood'srepresentations regarding confidentiality, Repar disclosed to Willowood its proprietary formulasfor its two formulated TEBUCON products. After it received Repar's formulas, however,Willowood failed to execute a written contract confirming the terms on which the parties hadagreed.

14.In reliance upon and subject to Willowood's representations and agreements,

Repar granted Willowood a license to distribute and sell products in connection with theTEBUCON mark as an EPA subregistrant ofRepar for the TEBUCON 45 DF and 3.6F products,and subject to Repar's quality control. Repar did not grant the license for Willowood to useRepar's TEBUCON mark under any other circumstances. Willowood subsequently marketed thetwo formulated products under Repar's TEBUCON mark and subject to Repar's registration atEPA for these products.




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15.Willowood later approached Repar seeking permission to obtain primary EPA

registrations (as opposed to sub-registrations) for the 45 DF and 3.6F tebuconazole formulations.Willowood asked Repar for assistance in this endeavor, and specifically sought permission tocite Repar's product chemistry data in support of its primary registration applications. In relianceupon Willowood's promises to maintain the confidentiality of this data, to use Repar as its solesupplier of technical-grade tebuconazole, and to use a trade name other than TEBUCON inconnection with Willowood's own products containing tebuconazole, Repar gave Willowoodpermission to cite its data. Again, Willowood pledged to enter into a written contractformalizing this agreement.

16.After Willowood had filed its applications at EPA to register the 45 DF and 3.6F

formulations in its own name, and in direct contravention of its earlier representations andagreements, Willowood reneged on its pledge to sign formal written agreements confirming thatWillowood would purchase technical-grade tebuconazole exclusively from Repar. To thecontrary, Willowood advised Repar that it would not be purchasing tebuconazole from Repar inthe future. At approximately the same time, Willowood entered into subregistration agreementswith another registrant of the two tebuconazole formulations, thereby circumventing Repar as asupplier of technical tebuconazole. On information and belief, Willowood also had the third-party formulator/packager in Texas take surplus technical tebuconazole belonging to Repar anduse it to make a second batch of the 45 DF formulation, which Willowood then sold on its ownaccount. These developments understandably prompted Repar to withdraw its support for




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Willowood's applications for primary EPA registrations. Willowood, however, was able to re-file its applications using data from another supplier, and the applications were successful.

17.Unbeknownst to Repar, Willowood had identified the products in its re-filed EPA

registration applications as "WILLOWOOD TEBUCON 45DF" and "WILLOWOODTEBUCON 3.6 SC," literally, and intentionally, copying outright Repar's TEBUCONtrademark.

18.Willowood subsequently began using Repar's TEBUCON mark in connection

with the sale and distribution of its own tebuconazole products. Repar had not grantedWillowood any license to do this.

19.On information and belief, Willowood's products are also being produced using

Repar's confidential formulas, which were obtained by Willowood under false pretenses.20.

Since at least as early as 2008, Repar has continuously used in the United Statesin interstate commerce the TEBUCON mark in connection with the sale and distribution ofproducts with tebuconazole as the active ingredient. The TEBUCON mark immediately andinherently signified the quality, reputation, and source of these products, and Repar has ownedprotectable trademark rights in the TEBUCON mark beginning with its first use.

21.In addition to its common law trademark rights in the TEBUCON mark, on

August 23, 2011, the U.S. Patent and Trademark Office ("PTO") issued to Repar federal




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trademark registration No. 4,015,686 for the TEBUCON mark for various types of pesticideproducts. Federal trademark registration 4,015,686 is valid and subsisting.

22.As a result of Repar's own use and licensed use of the TEBUCON mark, relevant

consumers understand that the TEBUCON mark distinguishes and identifies Repar's products.As a result of Repar's use and promotion of the TEBUCON mark, the relevant public has cometo associate the TEBUCON mark with Repar.

23.Willowood's unlicensed use of the TEBUCON mark began after Repar

established protectable trademark rights in the TEBUCON mark. Although Willowood'soriginal use ofTEBUCON was licensed and controlled by Repar (notwithstanding thatWillowood ultimately did not abide by all its obligations under the parties' agreement),Willowood's subsequent and current use ofTEBUCON is no longer associated or connectedwith Repar, or licensed, authorized, sponsored, endorsed, or approved by Repar.

24.The products sold by Willowood under the TEBUCON mark are similar to, and

compete with, the goods sold by Repar under the TEBUCON mark, and the parties' products aresold through similar and overlapping channels of trade.

25.Willowood's use of a confusingly similar imitation of Repar's TEBUCON mark

is likely to deceive, confuse, and mislead purchasers and prospective purchasers into believingthat the products offered by Willowood are manufactured by, authorized by, or in some mannerassociated with Repar, which they are not. The likelihood of confusion, mistake, and deception




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engendered by Willowood's misappropriation of Repar 's mark is causing irreparable harm to thegoodwill symbolized by the TEBUCON mark and the reputation for quality that it embodies.

26.On information and belief, Willowood knowingly, willfully, intentionally, and

maliciously adopted and used a confusingly similar imitation of Repar's TEBUCON mark.27.

Willowood continues to improperly and maliciously use the TEBUCON mark inconnection with its products in the marketplace, directly and intentionally infringing Repar'sregistered trademark.

FIRST CLAIM FOR RELIEF(Breach of Express Contract)

(Against Willowood)28.

Plaintiff incorporates and realleges paragraphs 1 through 27 as if fully set forthherein.

29.Repar and Willowood formed two express contracts. The first was for

Willowood's distribution of Repar's TECUCON 45 DF and TEBUCON 3.6F products on a sub-registered basis. The second was for Repar's data support for Willowood's obtaining its ownEPA registrations for the two formulated products it had earlier been distributing on asubregistered basis. The terms of each contract were as described above. Under the firstcontract, Willowood was able to develop a distribution network for tebuconazole products using




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Repar's registrations, product formulas, and trade name. Under the second contract, Willowoodused Repar's product formulas, trade names, and data to obtain its own EPA registrations.

30.Willowood subsequently breached these contracts by, inter alia, not using Repar

as its sole supplier for technical-grade tebuconazole; by distributing tebuconazole using Repar'sTEBUCON trademark without Repar's permission; and by misappropriating the formulas for 45DF and 3.6F for its own use.

31.Willowood's breach ofthe parties' agreements has caused Repar damage in an

amount to be proven at trial, but estimated to be at least $500,000.SECOND CLAIM FOR RELIEF

(Breach of Implied-in-Fact Contract)(Against Willowood)

32.Plaintiff incorporates and realleges paragraphs 1 through 31 as if fully set forth

herein.33.

Willowood's course of conduct and representations manifested its assent to theterms of the proposed agreement between the Repar and Willowood.

34.As a consequence of Willowood' s breach of the implied agreement, Repar is

entitled to damages to be proven at trial but estimated to be at least $500,000.

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FOUTH CLAIM FOR RELIEF(Misappropriation of Trade Secrets)

(ORS 646.461 et seq.)(Against Willowood)


herein.41.

Repar's formulas for TEBUCON 45 OF and TEBUCON 3.6 SC (the "formulas")constituted a trade secret, in that they derive independent economic value from not beinggenerally known to the public or to other persons who could obtain economic value from theirdisclosure or use.

42.Repar took reasonable steps under the circumstances to maintain the secrecy of

the formulas.43.

Willowood misappropriated Repar's trade secrets by using the secrets withoutRepar's consent, when Willowood knew or had reason to know that its knowledge of theformulas was acquired in circumstances requiring that it maintain their secrecy or limit their use.In addition, Repar's disclosure of the formula to Willowood created an implied promise byWillowood not to appropriate the formula for its own use.




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44.Repar is entitled to an order enjoining Willowood's use or disclosure of Repar's

trade secrets, pursuant to ORS 646.463.45.

As a result of the misappropriation, Repar has suffered money damages in anamount to be proven at trial, but estimated to be at least $500,000.

46.Willowood's misappropriation was willful. Pursuant to ORS 646.465(3), Repar

requests punitive damages in the amount twice that of its actual money damages.47.

Because Willowood's misappropriation was willful, Repar is also entitled to itsreasonable attorney fees pursuant to ORS 646.467.

FIFTH CLAIM FOR RELIEF(Federal Trademark Infringement)(Against Willowood and Heinze)


herein.49.

Willowood's use of confusingly similar imitations of Repar's TEBUCON mark islikely to cause confusion, deception, and mistake by creating the false and misleading impressionthat Willowood's products are manufactured, produced, distributed, endorsed, sponsored,approved, or licensed by Repar, or are associated or connected with Repar.




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58.Willowood's actions demonstrate an intentional, willful, and malicious intent to

trade on the goodwill associated with Repar's TEBUCON mark to the great and irreparableinjury ofRepar.

59.Willowood's conduct has caused, and is likely to continue causing, substantial

injury to the public and to Repar. Repar is entitled to injunctive relief and to recoverWillowood's profits, actual damages, enhanced profits and damages, costs, and reasonableattorneys' fees under 15 U.S.C. 1125(a), 1116, and 1117.

60.Heinze authorized, approved, and directed Willowood's acts of unfair

competition. As a result, he is personally liable for those acts.SEVENTH CLAIM FOR RELIEF

(Common Law Trademark Infringement and Unfair Competition)(Against Willowood and Heinze)


herein.62.

Willowood's acts constitute common law trademark infringement and unfaircompetition, and have created and will continue to create, unless restrained by this Court, alikelihood of confusion to the irreparable injury ofRepar. Repar has no adequate remedy at lawfor this injury.




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2. With respect to its Second Claim for Relief, in the alternative to an award under theFirst Claim for Relief, an award of damages against Willowood to be proven at trial,but estimated to be in excess of $500,000;

3. With respect to its Third Claim for Relief, an award of damages against Willowood tobe proven at trial, but estimated to be in excess of $500,000;

4. With respect to its Fourth Claim for Relief, an order enjoining Willowood's use ofRepar's trade secrets, and an award of damages against Willowood to be proven attrial but estimated to be in excess of $500,000, plus interest, plus punitive damages;

5. With respect to its Fif th through Seventh Claims for Relief, the following relief:a. Willowood and all of its agents, officers, employees, representatives,

successors, assigns, attorneys, and all other persons acting for, with, by, through, or underauthority from Willowood, or in concert or participation with Willowood, and each ofthem, be enjoined permanently, from:

i. using Repar's TEBUCON mark or any other copy, reproduction, colorableimitation, or simulation of Repar's TEBUCON mark on or in connectionwith Willowood's products;

ii. using any trademark, logo, design, or source designation of any kind on, orin connection with, Willowood's goods that is a copy, reproduction,colorable imitation, or simulation of, or confusingly similar to Repar'sTEBUCON mark;

111. using any trademark, logo, design, or source designation of any kind on orin connection with Willowood's goods that is likely to cause confusion,mistake, deception, or public misunderstanding that such goods are




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produced or provided by Repar, are sponsored or authorized by Repar, orare in any way connected or related to Repar;

IV. passing off, palming off, or assisting in passing off or palming offWillowood's goods as those of Repar, or otherwise continuing any and allacts of unfair competition as alleged in this Complaint;

b. Willowood be ordered to cease offering for sale, distributing , marketing,promoting, and selling, and to recall and retrieve all products bearing the TEBUCONmark or any other confusingly similar variation, which are in Willowood's possession orhave been shipped by Willowood or under its authority, to any customer, including, butnot limited to, any wholesaler, distributor, distribution center, retail store, consignor, ormarketer, and also to deliver to each such customer or other third party a copy of thisCourt's order as it relates to said injunctive relief against Willowood;

c. Willowood be ordered to deliver up for impoundment and for destruction,all products, boxes, labels, tags, signs, packages, receptacles, advertising, promotionalmaterial, stationary, or other materials in the possession, custody, or under the control ofWillowood that are found to adopt, use, or infringe any of Repar's trademarks, or thatotherwise unfairly compete with Repar and Repar's products;

d. Willowood be compelled to account to Repar for any and all profitsderived by Willowood from the sale or distribution of infringing goods as described inthis Complaint;

e. Willowood and Heinze be ordered to pay all damages resulting from theacts forming the basis of Repar's Fifth through Seventh Claims for Relief;




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f. Based on Willowood's knowing and intentional use of confusingly similarimitations ofRepar's TEBUCON mark, the damages awarded be trebled and the award ofWillowood's profits be enhanced as provided for by 15 U.S.C. 1117(a) and (b);

g. Based on Willowood's willful and deliberate infringement ofRepar'smarks, and to deter such conduct in the future, an award of punitive damages;6. An award of Repar's costs and reasonable attorneys' fees;7. Willowood be required to pay prejudgment and post-judgment interest on the

damages and profits awards; and8. Such other relief as the Court deems just and proper.

Dated: June 20,2013By: sf JeffS. Pitzer

Jeff S. PitzerBryan S. GeonPITZER LAW101 SW Main St., Suite 805Portland, OR 97204Telephone: (503) 227-1477Facsimile: (503) 227-5839Attorneys for Plaintiff REPARCORPORAnON

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repar v willowood trademark complaint

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