Beruflich Dokumente
Kultur Dokumente
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Defendant.
Plaintiff S&B Associates, Inc. d/b/a HospitalityVision (HospitalityVision) brings this
Complaint against Defendant Guest Impressions, Inc. (Guest Impressions), and alleges as
follows:
1.
and doing business in Oregon and Washington. HospitalityVisions integrated hotel product
offeringsmarketed under its federally registered Concierge ToGo trademarkreplace
static, printed hotel directories with on-screen content that allows users to access up-to-date
information about a hotel, its amenities, and surrounding attractions. This action arises out of
SCHWABE, WILLIAMSON & WYATT, P.C.
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Attorneys at Law
Pacwest Center
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This is an action for trademark infringement and unfair competition arising under
the federal Lanham Act, 15 U.S.C. 1051 et seq., for unlawful trade practices arising under
Oregon state law, ORS 646.605 et seq., and for common law trademark infringement and
unfair trade practices.
3.
Concierge ToGo trademark for mobile app and related services, registration number 4,494,431,
a copy of which is attached as Exhibit 1 hereto (the Concierge ToGo Trademark).
4.
competition and unlawful trade practices by intentionally passing itself off as HospitalityVision,
or as affiliated with HospitalityVision.
5.
Impressions from further infringing the Concierge ToGo Trademark or otherwise unfairly
competing with HospitalityVision, together with damages from Guest Impressions infringing
activity and unfair competition, as well as attorneys fees and costs.
THE PARTIES
6.
its principal place of business at 123 NW Seventh Street, Corvallis, Oregon. HospitalityVision
owns the HospitalityVision Trademark.
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violations against Guest Impressions arise under the laws of the United States, including 35
U.S.C. 1051 et seq. This Court has original jurisdiction over this subject matter pursuant to 28
U.S.C. 1331, 1332, and 1338 and 15 U.S.C. 1121. The Court has supplemental jurisdiction
over HospitalityVisions state law claims pursuant to 28 U.S.C. 1367.
9.
This Court has personal jurisdiction over Guest Impressions because it transacts
and solicits business in the State of Oregon, including with respect to the infringement of the
HospitalityVision Trademark and other unlawful activity at issue in this case.
10.
Venue is proper in this judicial district under 28 U.S.C. 1391(b) & (c) because
a substantial part of the events giving rise to HospitalityVisions claim occurred here, including
all events giving rise to HospitalityVisions unfair competition and unlawful trade practices
claims, and the witnesses and information pertaining to those events are located here. On
information and belief, Guest Impressions regularly transacts and solicits business in this district,
including with respect to the infringing activities at issue in this case. Additionally,
HospitalityVision is headquartered in Oregon, and witnesses and information that may be
adduced by HospitalityVision are located in Oregon.
PROCEDURAL BACKGROUND AND RELATED ACTION
11.
registration is also the subject of a declaratory judgment action in the United States District
Court for the Southern District of California, styled Guest Impressions, Inc. v. S&B Associates,
Inc., Case No. 3:16-cv-00109-H-MDD, filed January 15, 2016.
12.
Southern District of California action for lack of personal jurisdiction and as an improper
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anticipatory suit, or in the alternative, to transfer venue to this Court. Oral argument on
HospitalityVisions motion is scheduled for April 4, 2016.
FACTUAL BACKGROUND
A.
virtual concierge app in the United States. Concierge ToGo provides hotel and other
hospitality guests with a virtual concierge to tour their hotel, discover hotel amenities, provide
links to guest services, and offer information on local attractions and restaurants, among other
features. This replaces static, printed hotel directories with dynamic, on-screen content that
allows users to access up-to-date information about the hotel and surrounding attractions.
14.
information to that specific hotel, including by working directly with hotel personnel to collect
information concerning local attractions, restaurants and other up-to-date information. As such,
HospitalityVision has generated substantial value and goodwill in the Concierge ToGo brand
and associated trademark.
16.
under the Concierge ToGo trademark registered to HospitalityVision March 11, 2014, on the
Principal Register as U.S. Registration No. 4,494,431.
17.
provided by its on-screen directory and app, as well as on in-room letters directing hotel guests
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to the online content, and other physical materialssuch as stand-up cutoutsdisplayed by its
hotel customers.
18.
In addition to the Concierge ToGo Trademark, each in-room letter also contains
a prominently featured Quick Response Code (QR Code). By scanning the QR code with their
mobile device, guests are able to access the mobile web version of its Concierge ToGo app,
making available in mobile form all of the directory information collected and provided by
HospitalityVision.
B.
Staprans Barlow was visiting the Clarion Hotel in Portland, Oregon, which had previously
entered into an agreement with HospitalityVision to offer Concierge ToGo services, including
an on-screen presentation, printed materials in each room and in the hotel lobby, and a
customized mobile app with information relevant to Clarion guests.
20.
Ms. Barlow attempted to access the Concierge ToGo app using her mobile
phone to scan the QR code on the in-room letter bearing the Concierge ToGo logo. Rather
than being routed to the Concierge ToGo app and associated content, she was shocked to
instead be redirected to Plaintiffs Conciergo start page and pop-up advertising relating to the
infringing Conciergo site.
21.
she found that she had been re-directed to a second-rate service that simply feeds the user results
from the website www.yelp.com, which collects user reviews of restaurants and attractions.
22.
The owner of the Clarion, Nick Patel, told Ms. Barlow that the redirection had
been suggested and implemented by two men who approached him about installing their mobile
concierge service.
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On information and belief, the men who caused the redirection to Guest
Impressions Conciergo site falsely suggested to Mr. Patel that they were affiliated with
HospitalityVision and thereby induced him to accept installation of their inferior service.
C.
Guest Impressions applied to register its Conciergo mark in an August 17, 2015
Trademark registration revealsthat the marks are used to identify nearly identical goods and
services:
Concierge ToGo Registration
Conciergo Application
27.
Ms. Barlow visited the Rodeway Hotel in Eugene, Oregon to offer placement of
HospitalityVisions materials and services in the hotel.
28.
The hotel proprietors told Ms. Barlow that they had already tried to install that
Concierge ToGo or Go, but that it was incompatible with the hotels Wi-Fi configuration.
29.
The proprietors also told Ms. Barlow that one of them had met with the
COMPLAINT
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Ms. Barlow was forced to explain that HospitalityVision was unaffiliated with Guest
Impressions, and that unlike Guest Impressions redirection protocol, the Concierge ToGo
service is not dependent on a given Wi-Fi configuration.
31.
HospitalityVisions ownership and use of the Concierge ToGo Trademark at the time it
adopted the Conciergo name, as it filed for registration of the Conciergo mark after a Guest
Impressions representative saw HospitalityVisions Concierge ToGo presentation at a trade
show in Las Vegas, Nevada in May 2015.
32.
Impressions cease its use of the infringing Conciergo name and mark in connection with its
goods and services.
34.
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The U.S. Trademark Office duly and legally issued federal trademark registration
number 4,494,431 to the Concierge ToGo Trademark on March 11, 2014, and that registration
is valid and subsisting.
38.
continuously from October 26, 2012 through to the present to designate itself as the source of its
on-screen hotel directory goods and services.
39.
40.
By using the confusingly similar Conciergo mark in connection with sales and
promotion of its competing, and inferior, hotel directory services, defendant Guest Impressions is
infringing HospitalityVisions rights in the Concierge ToGo Trademark in violation of 15
U.S.C. 1114.
43.
users to HospitalityVisions service, and instead re-directing users to its own inferior service,
Guest Impressions has used and/or is using copies or colorable imitations of the Concierge
ToGo Trademark in a manner that is likely to confuse, deceive and cause mistake among
consumers and therefore infringes HospitalityVisions rights in the Concierge ToGo
Trademark in violation of 15 U.S.C. 1114.
44.
infringements of the Concierge ToGo Trademark, in that: (i) the Concierge ToGo Trademark
is unique and valuable property, injury to which cannot adequately be compensated by monetary
damages; (ii) the infringement injures and threatens to continue to injure HospitalityVisions
reputation and goodwill; and (iii) the injury resulting to HospitalityVision from Guest
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Impressions wrongful conduct, and the conduct itself, are continuing, and HospitalityVision
would be required to bring a multiplicity of suits to achieve full redress for the injuries caused
thereby.
45.
Trademark will continue to cause irreparable injury to HospitalityVision, both during the
pendency of this action and thereafter. HospitalityVision is therefore entitled to an order from
this Court preliminarily and permanently enjoining Guest Impressions and its agents, employees
and others acting in concert with them, from directly or indirectly infringing the Concierge
ToGo Trademark in any manner, including by using any mark, design or logo that is
confusingly similar to the Concierge ToGo Trademark in connection with the sale, offer for
sale, advertising, or promotion of hotel directory goods or services.
46.
Plaintiff is further entitled to recover its attorneys fees and other costs herein.
COUNT II
LANHAM ACT VIOLATIONS (15 U.S.C. 1125)
47.
The acts of Guest Impressions alleged herein, including but not limited to its use
of a mark confusingly similar to the Concierge ToGo Trademark in connection with hotel
directory goods and services, are likely to cause confusion, or to cause mistake, or to deceive as
to the affiliation, connection, or association of Guest Impressions with HospitalityVision, or as to
the sponsorship or approval of Guest Impressions goods, services or commercial activities by
HospitalityVision.
49.
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exists between Guest Impressions, and its goods and services, and HospitalityVision, and its
goods and services. On information and belief, these deceptive actions include expressly
representing to one or more hoteliers that Guest Impressions and HospitalityVision are one and
the same company, or that they share an affiliation or association.
51.
conduct of Guest Impressions, in that: (i) Guest Impressions actions injure and threaten to
continue to injure HospitalityVisions unique and valuable property, injury to which cannot
adequately be compensated by monetary damages; (ii) the wrongful acts of Guest Impressions
injure and threaten to continue to injure HospitalityVisions reputation and goodwill; and (iii) the
injury resulting to HospitalityVision from Guest Impressions wrongful conduct, and the conduct
itself, are continuing, and HospitalityVision would be required to bring a multiplicity of suits to
achieve full compensation for the injuries caused thereby.
52.
Unless restrained, the foregoing wrongful acts of Guest Impressions will continue
to cause irreparable injury to HospitalityVision, both during the pendency of this action and
thereafter. HospitalityVision is therefore entitled to an order from this Court preliminarily and
permanently enjoining Guest Impressions and their agents, employees and others acting in
concert with them, from directly or indirectly: (i) manufacturing, producing, distributing,
circulating, selling, offering for sale, advertising, promoting or displaying any hotel directory
product or service using any confusingly similar name or mark that tends to relate or connect
such product or service to HospitalityVision or to any goods or services offered, provided, sold,
manufactured, sponsored, approved by or connected with HospitalityVision; or (ii) making any
false description or representation of origin concerning any goods or services offered by Guest
Impressions.
COUNT III
UNLAWFUL TRADE PRACTICES (ORS 646.608)
53.
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The acts of Guest Impressions alleged herein, including but not limited to its use
of the Concierge ToGo Trademark or a confusingly similar mark on or in connection with the
products and services it offers to the publicas well as its misrepresentation of itself as
HospitalityVision in order to tie that mark to its servicesconstitute unlawful business or trade
practices under Oregon law.
55.
The acts of Guest Impressions alleged herein constitute a passing off of Guest
conduct of Guest Impressions, in that: (i) Guest Impressions actions injure and threaten to
continue to injure HospitalityVisions unique and valuable property, injury to which cannot
adequately be compensated by monetary damages; (ii) the wrongful acts of Guest Impressions
injure and threaten to continue to injure HospitalityVisions reputation and goodwill; and (iii) the
injury resulting to HospitalityVision from Guest Impressions wrongful conduct, and the conduct
itself, are continuing, and HospitalityVision would be required to bring a multiplicity of suits to
achieve full compensation for the injuries caused thereby.
57.
Unless restrained, the foregoing wrongful acts of Guest Impressions will continue
to cause irreparable injury to HospitalityVision, both during the pendency of this action and
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thereafter. HospitalityVision is therefore entitled to an order from this Court preliminarily and
permanently enjoining Guest Impressions and their agents, employees and others acting in
concert with them, from directly or indirectly: (i) manufacturing, producing, distributing,
circulating, selling, offering for sale, advertising, promoting or displaying any product or service
that tends to relate or connect such product or service in any way to HospitalityVision or to any
goods or services offered, provided, sold, manufactured, sponsored, approved by or connected
with HospitalityVision; or (ii) making any false description or representation of origin
concerning any goods or services offered for sale by Guest Impressions.
COUNT IV
COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
58.
since at least as early as October 26, 2012, HospitalityVision has acquired common law rights in
that mark at least within that geographic area.
60.
The acts of Guest Impressions alleged herein, including but not limited to its use
of the Concierge ToGo mark or a confusingly similar mark on or in connection with the products
and services it offers to the public are likely to cause confusion, to cause mistake, and to deceive
consumers and the public at large as to the affiliation, connection, or association of Guest
Impressions with HospitalityVision, or vice versa, or as to the origin, sponsorship, or approval of
Guest Impressions hotel directory services by HospitalityVision, or vice versa.
61.
unfair competition and have created and will continue to create a likelihood of confusion,
thereby causing irreparable harm to HospitalityVision, including, without limitation, injury to its
reputation and business identity, resulting in lost revenue and profits and diminished goodwill
and reputation. HospitalityVision has no adequate remedy at law for this injury.
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malicious intent on the part of Guest Impressions to trade on the goodwill associated with
HospitalityVisions mark and to cause confusion, to cause mistake, and to deceive the public
about the source or affiliation of Guest Impressions services.
63.
HospitalityVisions federal trademark registration for the Concierge ToGo Trademark, and that
Guest Impressions infringement has been deliberate and willful, in violation of 15 U.S.C.
1114 and 1125;
B.
A judgment and declaration that Guest Impressions has engaged in unfair trade
A judgment and declaration that Guest Impressions has committed common law
in favor of HospitalityVision and against Guest Impressions, pursuant to Oregon state common
law, 15 U.S.C. 1117, and as otherwise provided by law;
F.
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An award of pre- and post-judgment interest at the maximum rate allowed by law;
J.
1116(a), enjoining Guest Impressions and its agents, servants, officers, directors, employees,
affiliated entities and all persons acting in concert or privity with them, from infringing the
Concierge ToGo Trademark (including by use of the Conciergo mark and name), from
misrepresenting itself or its services, or from other conduct in violation of HospitalityVisions
rights, including unfairly competing with HospitalityVision in any manner whatsoever, and
further requiring Guest Impressions to account for and destroy, or deliver up for destruction, all
goods, advertisements, packaging, or other promotional materials bearing an infringing name or
mark;
K.
the court and serve on HospitalityVision a report in writing under oath setting forth in detail the
manner and form in which Guest Impressions has complied with the injunction;
L.
Office to reject Guest Impressions application to register its infringing Conciergo mark; and
M.
Such other and additional relief as this Court deems just and proper.
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