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EUGENE DIVISION
PLAINTIFF,
COMPLAINT
V. (FEDERAL UNFAIR COMPETITION, OREGON
TRADENAME/TRADEMARK DILUTION, AND
WESTCARE FOUNDATION, INC., a Nevada COMMON LAW TRADEMARK/TRADENAME
non-profit corporation. INFRINGEMENT AND UNFAIR COMPETITION)
DEFENDANT.
NATURE OF ACTION
1.
This is an action for equitable relief, including injunctive and declaratory relief, seeking
redress for injury caused by knowing tradename infringement in violation of 15 U.S.C § 1125(a),
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Case 6:18-cv-00764-MC Document 1 Filed 05/03/18 Page 2 of 8
ORS § 647.107, and the federal and state common law protecting trademarks.
2.
This Court has subject matter jurisdiction over this action 15 U.S.C. § 1121, 28 U.S.C. §
3.
This Court has supplemental jurisdiction over Plaintiff’s Oregon claims pursuant to 28
U.S.C. § 1367, because the state claims arise from the same nucleus of operative facts as the
federal claims.
4.
substantial part of the events or omissions giving rise to these claims occurred in this District.
PARTIES
5.
Plaintiff Westcare is an Oregon corporation with its principal place of business located in
Salem, Oregon. Westcare primarily conducts business in the Willamette Valley, where it offers
6.
non-profit corporation with its principal place of business located in Henderson, Nevada. The
Foundation operates long-term and short-term care facilities for vulnerable populations
7.
Plaintiff and Defendant both use the term “Westcare” (hereafter “the Mark”) to identify
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FACTUAL BACKGROUND
8.
9.
continuously used the term “Westcare” and “Westcare Management” to identify its business and
particular management services to the Oregon public for approximately thirty (30) years.
10.
services for public and private facilities dedicated to the long-term care of elderly individuals,
physically or mentally disabled persons, and veterans. Westcare’s substantial marketing efforts
have fostered goodwill in Oregon and its customers and business contacts recognize and
associate the Mark with Westcare’s high-quality management and consulting services.
11.
Westcare is the senior user within Oregon state under both federal and state law.
12.
Westcare registered the Mark as its tradename with the United States Patent and
13.
Defendant began using the Mark in Oregon on or around June 27, 2012—approximately
twenty-five (25) years after Westcare began identifying its business and services with the Mark.
14.
Defendant identifies its operations in the State of Oregon through promotional materials
and other means using the terms “WestCare,” “WestCare Oregon,” “Westcare Veterans
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15.
Defendant and Plaintiff provide related services in the same geographic area and both
entities use the Mark to identify their businesses and particular services. Unsurprisingly,
consumers and business associates of both parties in the regional marketplace have consistently
confused the identity, relationship and/or affiliation between the two companies.
16.
On or around June 8, 2016, Westcare first became aware of Defendant’s use of the Mark
in Oregon, when a client confused Westcare with Defendant’s facility known as “WestCare
17.
On or around January 16, 2017, Westcare fielded numerous calls from confused and
concerned clients, business associates, and friends following a Statesman Journal article
18.
Since June of 2016 Westcare has consistently witnessed actual confusion between its
services and those offered by Defendant. Evidence of actual confusion includes, for example,
emails intended for Defendant but mistakenly sent to Westcare, Defendant’s business cards
arriving at Westcare’s office, BOLI contacting Westcare for Defendant’s unpaid payroll taxes,
and multiple instances of mistaken affiliation and/or association between the two entities at
Governor’s Advisory Committee meetings and conferences involving the Oregon Department of
Veterans Affairs.
19.
On or around April 25, 2017, Westcare notified Defendant that it holds common-law
tradename rights in the Mark, and that these rights take geographic and temporal priority over
immediately stop using the Mark in Oregon and commence business under a unique regional
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20.
On or around May 11, 2017, Defendant responded in a letter, which communicated its
unwillingness to adopt a DBA for its Oregon operations and referred the matter to outside
counsel.
21.
On or around June 27, 2017, Westcare again sent a letter requesting use of a DBA.
22.
On or around July 10, 2017, Defendant’s counsel sent Westcare a letter effectively
23.
Since July of 2017, Defendant continues to use the Mark in Oregon to identify its
24.
25.
26.
Westcare owns the Mark as demonstrated by its continuous use of the Mark to advertise,
promote, and identify its business and its particular management and consulting services within
27.
Westcare’s use of the Mark predates Defendant’s infringing use of the Mark in Oregon.
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28.
Defendant uses the Mark in commerce without Westcare’s consent in a manner that
29.
Defendant’s infringement, if not enjoined, will continue, and such infringement has no
30.
31.
32.
Defendant began using the Mark in Oregon after Westcare had already made the Mark
regionally famous.
33.
Defendant’s use of the Mark is likely to and/or has already diluted the strength of the
34.
Defendant’s infringement, if not enjoined, will continue. If not enjoined, Defendant’s use
of the Mark will continue to dilute the strength of the Mark in Oregon, thereby injuring
Westcare’s business.
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35.
36.
Defendant uses the Mark in a manner that is likely to cause confusion and mistake, and to
deceive consumers and others as to the affiliation, association, and/or connection between
Westcare.
37.
competition. Defendant’s acts have created actual confusion and the likelihood of confusion,
resulting in irreparable harm to Westcare. Westcare does not have an adequate remedy at law.
38.
Westcare is entitled to injunctive relief preventing Defendant from further use of the
Mark in Oregon.
NOW THEREFORE, Plaintiff Westcare hereby prays for the following relief by awarded
therein:
employees, and all those acting in concert with them, on a temporary, preliminary,
1. Using the Mark in any manner to advertise, promote, sell, or offer any
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3. Taking any actions or using any similar names or marks that are
d) Granting such other legal or equitable relief as the Court may deem just and
proper.
SAALFELD GRIGGS PC
4818-9217-5199, v. 5
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