Kevin M. Hayes, OSB No.

01280
kevin.hayes@klarquist.com
KLARQUIST SPARKMAN, LLP
One World Trade Center, Suite 1600
121 S. W. Salmon Street
Portland, Oregon 97204-2988
Telephone: 503-595-5300
Facsimile: 503-228-9446
Counsel for Plaintiff
METAL-TECH CAGE, LLC.
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
PORTLAND DIVISION
METAL-TECH CAGE, LLC., an Oregon Civil - 0:3 0 8 - 4;r
limited liability corporation,
Plaintiff, COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR
v. COMPETITION
JASON DEMELLO, an individual d/b/a!
DEMELLO OFFROAD of California JURY TRIAL DEMANDED
Defendant.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

Case 3:12-cv-00308-ST Document 1 Filed 02/21/12 Page 1 of 14 Page ID#: 1
Plaintiff METAL-TECH CAGE, LLC. ("Metal-Tech"), through its attorneys, complains
of Defendant JASON DEMELLO doing business as DEMELLO OFFROAD ("DeMello") and
alleges as follows, upon knowledge with respect to itself and its own acts, and upon information
and belief as to all other matters:
I. THE METAL-TECH TRADEDRESS AND THE NATURE OF THE ACTION
1. Plaintiff, Metal-Tech owns a federally registered trade mark for its design of a
vehicle rub rail. Metal-Tech's mark is registered on the Principal Register as U.S. Federal
Trademark Registration No. 4,010,850. A true copy of this registration is attached hereto as Exh.
A. The mark was registered on August 16,2011, based on an application filed December 23,
2009. A drawing from Metal-Tech's Federal Trademark Registration No. 4,010,850 showing its
federally registered rub rail design is shown below:
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2. DeMello is selling vehicle rub rails that look so much like Metal-Tech's prior and
federally registered trade dress for Metal-Tech's rub rails that at least one consumer, who was
apparently not aware that Plaintiff was first, stated that [he/she] thought that Plaintiff, Metal-
Tech, had copied DeMello's junior design.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
Case 3:12-cv-00308-ST Document 1 Filed 02/21/12 Page 2 of 14 Page ID#: 2
3. DeMello itself has even acknowledged that it copied the design for its rub rails
stating: "1 know were [sic] not the first to use this design, but we get a fair amount of request
[sic] for them."
4. Accordingly, Metal-Tech bring this action at law and in equity to remedy acts of
trademark infringement and unfair competition under federal and Oregon law, all caused by
Defendant's unauthorized use in commerce of Metal-Tech's federally registered trade dress in its
non-functional design for its rub rails (hereinafter, "the Asserted Metal-Tech Mark").
II. THE PARTIES
5. Plaintiff is a corporation organized and existing under the laws of the State of
Oregon with its principal place of business at Suite A 1000 Commerce Parkway, Newberg,
Oregon,97132. Plaintiff is located and does business within this judicial district.
6. Defendant Jason Demello is an individual from the State of California with a
place of business at 12785 Magnolia Ave .. Riverside, California, 92503. Defendant is doing
business in this judicial district.
III. JURISDICTION AND VENUE
7. This Court has jurisdiction over the subj ect matter of this action because this action
arises under the Federal Trademark Act, 15 U.S.C. 1051-1127, jurisdiction being confelTed in
accordance with 15 US.c. 1121 and 28 US.C. 1331 and 1338. Supplemental jurisdiction
over the causes of action under Oregon state law is proper as those causes of action are
substantially related to the causes of action over which the Court has original jurisdiction, pursuant
to 28 US.c. 1338(b) and 1367. Venue is proper under 28 U.S.C. 1391(b) in that Defendant
is doing and transacting business within, and has committed acts complained of herein, in this
judicial district and targeted at this judicial district.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 2
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IV. THE FACTS
A. Metal-Tech's Products
8. Metal-Tech is a Newberg, Oregon-based company that manufactures and sells
equipment for off-road vehicles, such as roll cages, rub rails, bumpers and fender kits. Since at
least 2000, Metal-Tech has provided quality off-road equipment to off-road vehicle enthusiasts.
Metal-Tech sells its goods all over the United States, including in Oregon and California.
9. Since as early as June 2004 Metal-Tech has been marketing its vehicle rub rail
shown in the drawing below.
10. Metal-Tech's design has enjoyed significant commercial success and consumers
all over the nation, and even abroad, recognize the design as meaning that the rub rail is from
Metal-Tech. In particular, the kick-out portion of Metal-Tech's design (shown above in the top
of the drawing) is a feature that sets Metal-Tech's design apart from its competitors and causes
consumers to recognize the design as exclusively Metal-Tech's.
11. With regard to the recognition of Metal-Tech' s design by consumers, Plaintiff had
a poll conducted in which over 97 percent of respondents selecting between photographs of
different rub rail designs were able to correctly select Plaintiffs rub rail due to its distinctive
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 3
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design. Moreover, respondents providing reasons for their selection in many cases explained
that it was Plaintiffs distinctive kick-out that caused them to recognize the rub rail as Plaintiffs.
For example, one respondent stated: "that rear kickout is a metal tech giveaway."
12. As concerns the kick-out, a distinctive design feature of the Asserted Metal-Tech
Mark is the two piece design with the second piece having a kick-out portion, as shown below.
This provides a more streamlined appearance to the kick-out portion of the rub rail as compared
to traditional one piece designs, giving a valuable distinctiveness to Plaintiff's design.
rearward piece
of tubing f o m l . . ~
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forward piece of tubing
13. For illustrative purposes only, copied below are two examples of actual products
distributed by Plaintiff that embody its federally registered design.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 4
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14. In addition to its Federal Trademark rights based on Federal Trademark
Registration No. 4,010,850, Metal-Tech is also the owner of the common law trade dress rights
in its registered design based on its extensive use of its trade dress for its rub rails in Oregon and
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 5
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elsewhere, which has caused the consuming public to associate Plaintiff's design with Plaintiff as
the source of the rub rails (also "the Asserted Metal-Tech Mark"). These rights accrued prior to
Defendant offering its infringing rub rails.
15. Pursuant to 15 U.S.C. 1 057(b), Plaintiff's certificate of registration is primajacie
evidence of the validity of the registered mark and of Federal Trademark Registration No.
4,010,850, of the record owner's ownership of the mark, and of the owner's exclusive right to
use the registered mark in commerce on or in connection with the goods or services specified in
the certificate.
16. Plaintiff's federal statutory trademark rights in its federally registered design based
on its Federal Trademark Registration No. 4,010,850 begin as of the filing date of the application
that matured into the registration, namely on December 23, 2009.
B. Defendant's Infringing Acts
17. Defendant markets knock-offs of Plaintiff's rub rail that look so much like the
Asserted Metal-Tech Mark that consumers are likely to be confused as to the source or origin of
the products and/or as to the association, sponsorship or endorsement between Plaintiff and
Defendant.
18. Examples of such infringing rub rails sold by Defendant are shown in the
photographs below, the first of which is an excerpt from Defendant's November 9,2010, post to
fjcruiserforums.com and the second of which is an excerpt from Defendant's website at
http://www.demello-ofTroad.com/catalog/product info.php?cPath=61 62&products id=310:
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19. Defendant has sold one or more of the above or other rub rails comprising a two-
piece design and kick-out into Oregon.
20. Defendant also maintains an online retail store at www.demello-offroad.com.
Copied below is a screen capture from page for that store where Defendant offers or offered in
the period from 2010-2011 the rub rails shown in Paragraph 18.
21. Defendant is targeting Oregon for sales of products that include its infringing
products, such as what Defendant calls its "3 stage hybrid kick out sliders," (which are
advertised on its website and shown in the screen capture copied above).
22. Defendant knew when it sold its products into Oregon, including infringing
products such as Defendant's "3 stage hybrid kick out sliders," that Plaintiff is based in
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 8
Case 3:12-cv-00308-ST Document 1 Filed 02/21/12 Page 9 of 14 Page ID#: 9
Newberg, Oregon. In this regard, for example, Plaintiff refers to its rub rails as having a "two
stage" design, which consumers recognize as a design originating with Plaintiff, and Defendant
is attempting intentionally to cause consumers to think of Plaintiff by referring to its new design
for its rub rails as a "3 stage" kick out.
23. Defendant knew that the effects of Defendant's infringement would be felt by
Plaintiff in Newberg, Oregon.
24. Plaintiff requested that Defendant stop offering copies of Plaintiffs rub rails in a
letter dated October 3, 2011.
25. In response, Plaintiff is believed to have quit selling the rub rail shown below on
the left and redesigned its rub rail to have the still infringing design shown below on the right.
26. Plaintiff advised Defendant by email dated October 11, 2011, that the Defendant's
new design (shown in the rightmost photograph of Paragraph 25) was still too close to Plaintiffs
trade dress and would infringe.
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27. Defendant nevertheless proceeded to sell and offer for sale rub rails having the
design shown in the rightmost photograph of Paragraph 25, which Defendant sells for a list price
of US$499.00.
28. Defendant's actions are knowing, willful and without Plaintiffs authorization,
and Defendant is directly, contributorily, and vicariously liable for the resulting acts of unfair
competition and trademark infringement.
V. CAUSES OF ACTION
A. Unfair Competition
29. Metal-Tech repeats and re-alleges each and every allegation contained in the above
paragraphs of this Complaint as though fully set forth herein.
30. This cause of action for unfair competition arises under Section 43 (a)(1 ) of the
Lanham Act, 15 U.s.c. 1125(a)( 1), and Oregon State common law.
31. Defendant's use of the Asserted Metal-Tech Mark in commerce as alleged
hereinabove is likely to cause confusion, mistake, or deception as to the affiliation, connection, or
association of Defendants with Plaintiff or as to the origin, sponsorship, or approval of the products
and services of Defendants and those of Plaintiff, and misrepresents the nature, characteristics, and
qualities of these products and services.
32. The acts of Defendants constitute unfair competition in violation of Section
43(a)(1) of the Lanham Act, 15 U.S.c. 1125(a)(1), and unfair competition under Oregon
common law.
33. Metal-Tech is without an adequate remedy at law because Defendant's unfair
competition has caused irreparable injury to Metal-Tech, and unless said acts are enjoined by this
Court, they will continue and Metal-Tech will continue to suffer irreparable injury.
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34. Defendant's acts of unfair competition, ifnot enjoined, will cause Metal-Tech to
sustain monetary damages, loss, and injury in an amount to be detennined in this action.
B. Trademark Infringement
35. Metal-Tech repeats and realleges each and every allegation contained in the above
paragraphs of this Complaint as though fully set forth herein.
36. The acts of Defendants constitute trademark infringement in violation of 15 U.S.c.
1114(1)(a), and Oregon common law.
37. Defendant's use of the Asserted Metal-Tech Mark as alleged hereinabove is likely
to cause confusion, mistake, or deception as to the source, sponsorship, or approval of the
products and services of Defendants in that others are likely to believe that Defendant ' s goods
and services are in some way legitimately connected with, sponsored or licensed by, or otherwise
related to Metal-Tech.
38. Defendant's use of the Asserted Metal-Tech Mark was made wi th actual or
constructive knowledge of Metal-Tech' s rights in the Asserted Metal-Tech Mark.
39. Defendant's use of the Asserted Metal-Tech Mark is without Metal-Tech's
consent or pennission.
40. Defendant' s acts of trademark infringement, unless enjoined, will cause Metal-
Tech to sustain monetary damages, loss, and injury in an amount to be determined in this action.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Metal-Tech prays that, pursuant to the Federal Trademark Act,
15 U.S.C. 1051-1127 and Oregon State law:
A. The Court finds that Metal-Tech owns valid and subsisting trademark rights in the
Asserted Metal-Tech Mark.
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B. Defendant be held liable under each claim for relief set forth in this Complaint.
C. Defendant, its agents, servants, employees, and attorneys, and all other persons in
active concert or participation with them, be immediately and permanently enjoined from using
the Asserted Metal-Tech Mark, or any other reproduction, counterfeit, copy, colorable imitation
or confusingly similar variation of the Asserted Metal-Tech Mark, as a trademark or service
mark (including trade dress), or in advertising, distribution, sale, or offering for sale of
Defendant's products and/or services.
D. Defendant be required to pay to Metal-Tech all damages Metal-Tech has suffered
and will suffer by reason of Defendant's unlawful acts set forth herein, together with legal
interest from the date of accrual thereof.
E. Defendant be required to account for and pay to Metal-Tech all profits wrongfully
derived by Defendant through its unlawful acts set forth herein, together with legal interest from
the date of accrual thereof.
F. Defendant be required to pay to Metal-Tech its reasonable attorneys' fees and
disbursements incurred herein, pursuant to 15 U.S.c. 1117 and the equity powers of this Court.
G. Defendant be required to pay Metal-Tech the costs of this action.
H. The Court award Metal-Tech enhanced profits and damages and such other and
further relief as this Court deems just and equitable.
DEMAND FOR JURY TRIAL
Metal-Tech hereby makes demand for a trial by jury pursuant to Rule 38 of the Federal
Rules of Civil Procedure as to all issues herein so triable.
Dated: February 21,2012
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kevin.hayes@kJarquist.com
KLARQUIST SPARKMAN, LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, Oregon 97204-2988
Telephone: 503-595-5300
Facsimile: 503-228-9446
Counsel for Plaintiff
METAL-TECH CAGE, LLC.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 13
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