Beruflich Dokumente
Kultur Dokumente
DISTRICT OF OREGON
PORTLAND DIVISION
Defendant.
Plaintiff, Icebreaker Limited ("Plaintiff'), for its Complaint against defendant Gilmar
S.P.A. ("Defendant"), states and alleges as follows:
NATURE OF THE ACTION
Plaintiff seeks a declaratory judgment that it has not infringed and will not infringe any
trademark purportedly owned by Defendant, a seller offashion apparel. There isa need for such
reliefbecause Defendant has asserted that Plaintiffis infringing and will infringe its rights in
several trademarks containing the term ICE, and because Defendant has formally opposed
registration ofPlaintiffs ICEBREAKER trademark, for apparel goods and retail store services,
with the United States Patent & Trademark Office ("USPTO").
PARTIES
5. The Court has subject matter jurisdiction over the claims pursuant to 28 U.S.C. §§
2201 et seq., 28 U.S.C. §§ 1331 (federal question), 1338(a) (trademark action), and 28 U.S.C.
§ 1332. Venue is proper under 28 U.S.C. § 1391(b) because, on information and belief, plaintiff
resides in thisdistrict, defendant has no business residence in the United States, defendant sells
its products throughout the United States including in this judicial district, and a substantial part
of the events giving rise to the claim occurred here.
BACKGROUND FACTS
10. Defendant is, on information andbelief, a seller of fashion apparel products, and
claims use and ownership of numerous trademarks containing the term ICE with such products.
11. Defendant has asserted that Plaintiffs use of the trademark and trade name
14. The Oppositions and the Cancellation have been consolidated by the TTAB (with
Opposition No. 91167875 asthe parent case), and are currently in the discovery period. A copy
of the Board's March 1,2011 scheduling order is attached as Exhibit D hereto.
15. Defendant has asserted that Plaintiff's use of its ICEBREAKER trademark and
trade name infringes Defendant's purported rights in at least the following trademark
16. OnJanuary 18,2011, in a meeting between counsel forthe parties, counsel for
Defendant stated unequivocally that Plaintiff must change its ICEBREAKER mark and trade
name.
17. Defendant's recent demand that Plaintiff stop using its valuable ICEBREAKER
trademark andtrade name as created an objective threat that Defendant intends to take additional
and further legal action against Plaintiff unless Plaintiff accedes to Defendant's demand.
CLAIMS FOR DECLARATORY RELIEF
COUNT 1
Retail Services will infringe any rights owned by Defendant in Defendant's ICE Marks, or
constitute unfair competition under federal or state lawwith respect to such marks.
20. There are numerous third partytrademarks containing the term ICE usedand
federally registered with apparel products in the United States.
21. No entity has a right to monopolize theterm "ICE" in connection with apparel
products.
22. There has been no confusioncreated by Plaintiffs use of the ICEBREAKER
trademark and trade name in connection with Plaintiffs Apparel Goods and Plaintiffs Retail
Services and any of Defendant's ICE marks, despite several years of overlap in the marketplace.
23. There is no likelihood of confusion between Plaintiffs trademark and trade name
ICEBREAKER, as used with Plaintiffs Apparel Goods and Plaintiffs Retail Services, and any of
Defendant's ICE Marks, as used with Defendant's apparel products.
24. Plaintiffhas not violated Defendant's rights in any of Defendant's ICE Marks, or
committed unfair competition with respect to any such marks, by itsuse of the ICEBREAKER
trademark and trade name with Plaintiffs Apparel Goods and Plaintiffs Retail Services.
25. Plaintiffwill not violate Defendant's rights in any of Defendant's ICE Marks, or
commit unfair competition with respect to any such marks, by its use of the ICEBREAKER
trademark and trade name withPlaintiffs Apparel Goods and Plaintiffs Retail Services.
26. Plaintiffis entitled to declaratory judgment that it has not infringed any of
Defendant's ICEMarks, or committed unfair competition with respect to any such marks, by
reason of its use of the trademark and trade name ICEBREAKER with Plaintiffs Apparel Goods
COUNT2
(Abandonment)
27. The allegations ofparagraphs 1-26 above are hereby incorporated by reference as
if fully set forth herein.
28. On information and belief, Defendant has ceased use of each of the marks in the
Cancellation Registrations.
29. On information and belief, Defendanthas an intent not to resume use of each of
the marks in the Cancellation Registrations.
30. On information and belief, Defendant has ceased use of each of the marks in the
Cancellation Registrations for atleast three consecutive years following the corresponding
registration date for each such mark.
31. The marks in the Cancellation Registrations havebeen abandoned, and those
registrations should be canceled.
PRAYER FOR RELIEF
3. The marks listed in the Cancellation Registrations have been abandoned, and the
Cancellation Registrations should be canceled.
D. For such further and other relief as the Court deems just and proper.