Beruflich Dokumente
Kultur Dokumente
Document 1
Filed 07/20/15
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TO:
THE JUDGES OF THE UNITED STATES DISTRICT COURT FOR THE DISTRICT
OF OREGON:
Removing party, City of Portland, by its undersigned attorney, respectfully shows this
Court:
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action.
Page 1 NOTICE OF REMOVAL
Case 3:15-cv-01346-HZ
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On June 25, 2015, the above-entitled action was commenced against the City of
Portland in the Circuit Court of the State of Oregon for the County of Multnomah and is now
pending in such court, with the court number 15CV16552.
3.
On June 26, 2015, a copy of the Summons and Complaint in the above-entitled
state action was served upon the Portland City Attorney at the Offices of the City Attorney in
Portland, Oregon.
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28 U.S.C. 1331 and 1338(a) because it is a suit involving a declaration of the Citys federal
and state trademark rights and the enforceability thereof, including the Citys ability to enforce
its trademark rights under the Lanham Act, 15 U.S.C. 1051 et seq. This action is removable
under 28 U.S.C. 1441(a) and (b).
8.
On the date set forth below, a copy of this notice was served on plaintiffs
attorney. On the same date, a copy of this notice was filed with the clerk of the Multnomah
County Circuit Court in which the action was commenced.
WHEREFORE, the City of Portland requests that the above-entitled action be removed
from the Circuit Court of the State of Oregon for the County of Multnomah to the United States
District Court for the District of Oregon.
Dated: July 20, 2015
/s/ J. Scott Moede
J. Scott Moede, OSB #934816
Chief Deputy City Attorney
Telephone: (503) 823-4047
Attorney for Defendant
Page 2 NOTICE OF REMOVAL
Case 3:15-cv-01346-HZ
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RECE VED
IN THE CIRCUIT COURT OF THE STATE OF OREGON
COUNTY OF MULTNOMAH
Vintage Roadside, LLC,
an Oregon Limited Liability Company,
Plaintiff,
v.
The City of Portland,
Defendants.
TO:
YOU ARE HEREBY REQUIRED to appear and defend the complaint filed against you in the above-entitled action within thirty
(30) days from the date of service of this summons upon you and in case of your failure to do so,for want thereof, Plaintiff will apply to the
court for the relief demanded in the complaint.
NOTICE TO THE DEFENDANT:
READ THESE PAPERS CAREFULLY!
You must "appear" in this case or the other side will win
automatically. To "appear" you must file with the court a legal paper
called a "motion" or "answer." The "motion" or "answer" must be
given to the court clerk or administrator within 30 days along with the
required filing fee. It must be in proper form and have proof of
service on the plaintiff's attorney or, if the plaintiff does not have an
attorney, proof of service upon the plaintiff.
ROBERT S IIDER
Attorney of Record for Plaintiff & Trial Attorney
Robert A. Swider OSB #82127
Swider Haver, LLP
621 SW Morrison Street, Suite 1420
Portland OR 97205-3867
(503)241-9577
TO THE OFFICER OR OTHER PERSON SERVING THIS SUMMONS: You are hereby directed to serve a true copy ofthis summons,
together with a true copy of the complaint mentioned therein, upon the individual(s) or other legal entity (ies) to whom or which this
summons is directed, and to make your proof of service upon a separate document which you shall attach here
IIAR
ROBERT A. SWC
Attorney of record for Plaintiff
Case 3:15-cv-01346-HZ
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MULTNOMAH COUNTY
Vintage Roadside,LLC,
an Oregon Limited Liability Company
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PLAINTIFF'S COMPLAINT FOR
DECLARATORY JUDGMENT
AND RELIEF PURSUANT TO
ORS 28.010
Plaintiff,
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v.
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The City of Portland,
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Defendant.
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Plaintiff alleges as follows:
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1.
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asserted against Plaintiff by Defendant the City of Portland. Plaintiff further seeks
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declaratory judgment that any alleged trademark asserted by the City of Portland in the
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2.
Plaintiff Vintage Roadside, LLC, is an Oregon Limited Liability Company.
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3.
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Defendant is the City of Portland.
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/1/
I//
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Page 1 PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
5W1DER HAVER LLP
ATTORNEYS AT LAW
621 S.W. MORRIsON,SUITE 1420
PORTLAND,OR 97205
TELEPHONE'.(503)2264122 FAX: (503)273-0042
RODERT@SWIDERHAVER.coM
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FACTUAL BACKGROUND
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4.
The City of Portland acquired the Portland Oregon Sign pursuant to a Donation
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In July 2011 a Deputy City Attorney on behalf ofthe City ofPortland Bureau of
Internal Business Services filed a Trade and Service Mark Registration with the Oregon
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The Explanation in the Registration Of the Manner in which the mark is used is "[a]n
historical landmark of Portland, Oregon."
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ORS 647.017(1)indicates
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a mark is in use:
(a) On goods that are sold or transported in commerce in this state when the
mark is placed in any manner on:
(A)Goods, other containers or displays associated with the goods or tags or
labels affixed to the goods; or
(B)Documents associated with the goods or the sale of the goods, if the nature
of the goods makes placing the mark on the items identified in subparagraph
(A)of this paragraph impractical.
(b)On services that are rendered in this state when the mark is used or
displayed in selling or advertising the services.
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Page 2 PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
SWIDER HAVER LLP
ATTORNEYS AT LAW
621 S.W. MORRISON,SUITE 1420
PORTLAND,OR 97205
TELEPHONE:(503)226-8122FAR: (503)273-8542
ROBERT@SWIDERHAVER_COM
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9.
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On information and belief Plaintiffs allege that the City of Portland at the time of
filing the Trademark Registration with the Secretary of State was not using the mark in
connection with the sale of goods or services and falsely certified that the mark was in use.
10.
In May ofthis year Defendant the City ofPortland through one of its City Attorneys
contacted a member of the Plaintiff LLC through the e-commerce website Etsy and asserted
that the photographs of the Portland Oregon sign advertised for sale by the Plaintiff on Etsy
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violate the Trademark of the City of Portland in the Portland Oregon Sign.
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an image ofthe sign for any sort of commercial purpose, such as licensing, filming, or
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photography, please contact the Bureau of Internal Business Services. Contact and fee
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The City of Portland charges a fee for licensing the Portland Oregon sign trademark,
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http://www.portlandoregon.gov/bibs/article/529081
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(Unenforceability of Trademark)
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This is a declaratory judgment action under the Trademark Laws of the State of
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Page 3 PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
SWIDER HAVER LLP
ATTORNEYS AT Law
621 S,W. MORRISON,Sum 1420,
PORTLAND,OR 97205
TELEPHONE:(503)226-8122Fax: (503)273.8842
ROBERT@SWIDERHAVER COM
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Oregon ORS 647.005 et seq, and the Uniform Declaratory Judgments Act ORS 28.010 et seq.
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litigation and demand to cease and desist the sale of the Plaintiff's products without obtaining
15.
Pursuant to ORS 28.100 the court may make such award of costs as may seem
(Non-Infringement of Trademark)
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16.
Plaintiff reallages paragraphs 1 through 12.
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17.
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Plaintiff is entitled to declaratory judgment that it is not infringing, has not infringed,
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and is not liable for infringing any enforceable trademark owned by the City of Portland
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relating to the sale of products incorporating all or part of images ofthe Portland Oregon
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Sign.
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Pursuant to ORS 28.100 the court may make such award of costs as may seem
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On its FIRST CLAIM FOR RELIEF a Declaration that the alleged Trademark is
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unenforceable and for an award of costs as may seem just and equitable; and
On its SECOND CLAIM FOR RELIEF a Declaration that the Plaintiff it is not
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infringing, has not infringed, and is not liable for infringing any enforceable trademark owned
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//
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Page 4 PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
SWIDER HAVER LLP
ATTORNEYS AT LAW
621 S,W. MORRISON,SUITE 1420
PORTLAND, OR 97205
TELEPHONE:(503)226-8122FAX: (503)273-8842
ROBERT@SWIDERHAVERCOM
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by the City ofPortland relating to the sale of products incorporating all or part of images of
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the Portland Oregon Sign and for an award of costs as may seem just and equitable.
DATED June 25, 2015.
Swider Haver LLP by
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/s Robert Swider
Robert A. Swider
OSB #82127
of Attorneys for Plaintiff
and Trial Attorney
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Page 5 PLAINTIFFS' COMPLAINT FOR DECLARATORY JUDGMENT AND RELIEF
PURSUANT TO ORS 28.010
SWIDER HAVER LLP
ATTORNEYS AT LAW
621 S.W. MORRISON,SUITE 1420
PORTLAND,OR 97203
TELEPHONE:(503)226-8122FAX: (503)273-8842
EOBERT@SWIDERHAVER.COM
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FILED
JUL -1 9. 2011
411?-1
REGISTRY NUMBER:
OREGON
SECRETARY OF STATE
MAILING ADDRESS:
1) CORRESPONDENT NAME:
ADDRESS:
0Entity)
2) APPLICANT'S NAME:(Owner: Individual or
116.
November 2010
OR IN INTEREST:
11) DATE'MARK WAS FIRST USED IN OREGON BY APPLICANT OR APPLICANT'S PREDECESS
November 2010
12) EXECUTION:
(If applicant Is en entity, a member of a firm, officer of the corporation, officer of the limited liability
0014PIRMATION
PY
CONTACT NAME:(To resolve questions with this filing.)
Kalei Taylor
PHONE NUMBER:(Include area code.)
503-823-4047
290 -Trade and Service Marks - Registration (01/10)
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CERTIFICATE OF SERVICE