Control Solutions, Inc. v. MicroDAQ.com, Inc. Et Al Trademark Complaint

EXHIBIT A

Case 3:15-cv-00748-PK Document 1-1 Filed 05/01/15 Page 1 of 19

Exhibit APage 1 of 18

LEMOINE LAW FIRM 1631 NE Br~adway Street, Box 722

Portland, OR 97232 Tel: (503) 799-9745

eFax: (213) 402-3812 [email protected]

www .lemoinefinn.com

Microdaq.co~ LTD. 879 Maple Street P.O. box439 Contoocook, NH 03229

April 6, 2015

ATTN: CEO I LEGAL DEPARTMENT

Robert R. Howard III I 0 Main Street Henniker, NH 03242

ATTN: REGISTERED AGENT for Service of Process for Microdaq.com, LTD. (Per NB Sec. of State records)

VIA u:s. MAIL, and U.S. Certified Mail, return receipt requested.

VIA U.S. MAIL, and U.S. Certified Mail, return receipt requested.

RE: Control Solutions, Inc., v. Microdaq.co~ Inc. Civil Case No.: 15CV08320 Circuit Court of the State or Oregon, Columbia County Service of Process

Dear Sir or Madame:

Pursuant to Oregon Rules of Civil Procedure enclosed is the SUM:MONS and COMPLAINT in the above referenced matter, filed April 3, 2015.

Enclosures: SUMMO S COMPLAINT



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If you need help in finding an attorney, you may contact the Oregon State Bar's Lawyer Referral Service online at www.oregonstatebar.org or by calling (503) 684-3763 (in the Portland Metropolitan area), or toll-free elsewhere in Oregon at (800) 452-7636.

Dated: ?i/~

STATE OF OREGON

County of Multnomah

) ) SS. )

ine, OR Bar No.: 13234 Lemoine aw Finn 1631 NE Bro~dway Street, Box 722 Portland, OR 97232 Tel: (503) 799-9745 Fax: (213) 402-3812 Email: [email protected]

Attorney for Plaintiff, CONTROL SOLUTIONS, INC.

exact and complete copy of the original swnmons

19 TO THE PERSON SERVING TIIlS SU1\1MONS:

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You are hereby directed to serve a true copy of this 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, and an Affidavit of Service upon documents which you shall attach hereto.

Page2 of2 SUMMONS

LEMOINE LAW FIRM 1631 NE Broadway Street, Box 722

Portland, OR 97232 (503) 799-9745



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41312015 4:17:45 PM 15CV08320

IN THE CIRCUIT COURT OF THE STA TE OF OREGON

COUNTY OF COLUMBIA

CONTROL SOLUTIONS, INC., ) Case No. )

Plaintiff, ) COMPLAINT FOR DAMAGES )

vs. ) (UNLAWFUL BUSINESS PRACTICES, ) TRADEMARK INFRINGEMENT)

MicrodaQ.com, Inc., a New Hampshire ) NOT SUBJECT TO MANDATORY corporation, )

Does I through 10, ) ARBITRATION )

Defendants. ) Prayer Amount: $1,200,000 ) ) (Filing Fee Per ORS 21.160) Ul ?; -a.._ ;z:ij~ 15 Scio a.& ~ I:) c.. B- 16

Lil :z ~ ...l;::; .-

' NOW INTO COURT, though undersigned counsel, comes Plaintiff, Control Solutions, Inc., 17

18 which avers as follows:

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20 Plaintiff, Control Solutions, Inc., is a corporation organi7.ed under the laws of the State of

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Oregon, duly registered and in good standing with the Oregon Secretary of State, and with its

principal place of business at 35851 Industrial Way, Suite D, St Helens, OR. County of

Columbia. Control Solutions is in the business of selling certified, calibrated thennometers and

25 data "loggers," devices that record temperature readings over time. Control Solutions has been in

26 business since 1996, selling throughout the 50 U.S. states and internationally.

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Pagel of IS COMPLAINT FOR DAMAGES

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Gano f Oigllally signed by Gano LemoiM \'. DN:cncG..noLemolne, ooLemoine Uiw Firm. ou, nolemoln tmolnefir

.---m S o.te:2015.o4.o6~7:014J7'0(1



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2 Defendant, Microdaq.com, Ltd., is a corporation organi7.ed under the laws of the State of New 3

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Hampshire, having its principal place of business at 879 Maple Street, P.O. Box 439,

Contooc-00~ NH 03229, with its Agent for Service of Process being listed as Robert R. Howar~

6 Ill, 10 Main Street, Henniker, NH 03242. Defendant is also in the business of selling certified

7 and calibrated temperature reading and logging devices, advertising its devices via the internet in

8 all 50 U.S. states, including Oregon.

9 3. 1 O Does 1 through 10 are presently unknown persons. 11

12 4.

This action is brought pursuant to: 13

14 ORS 646.608 (Additional unlawful business, trade practices);

15 ORS 646.638 (Civil action by private party);

16 ORS 647.135 et seq, (Trademark counterfeiting);

17 ORS 647.107, (Trade Name Anti-dilution statute); 18 Interference with prospective business advantage; 19

Intentional Interference with Economic Relations ; 20

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Common Law Trademark Infringement;

15 U.S.C. 1114 (Trademark Infringement);

15 U.S.C. 1125, Section 43(a) of the LANHAM ACT;

24 and such other laws as may be applicable.

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Jurisdiction is proper in this Honorable Court pursuant to ORCP 4(D)(l - 2), Local injwy;

28 foreign act, and because, upon infonnation and belief, Defendant has used the Control Solutions' Page2of15 COMPLAINT FOR DAMAGES



I trademark{s), trade name{s), and product name{s) in connection with the sale of goods and/or 2 provision of services within this State, or has engaged in acts or omissions within this State 3

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causing injury to Control Solutions, or has engaged in acts or omissions outside of this State causing injury within this State, or has otherwise established contacts within this State sufficient

6 to permit the exercise of personal jurisdiction.

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8 Venue is proper in this Honorable Court and Circuit pursuant to ORS 14.030 and 14.080 in that

9 the causes of action, business losses and financial hann., and injury to Control Solutions' 1 O business and business interests occurred in St. Helens, OR, in the County of Columbia.

7. 11

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13 Control Solutions advertises and sells its thermometers and temperature logger devices

14 throughout the United States and internationally, through its web domain

15 "www.vfcdataloggers.com," and through its comj>any name, Control Solutions, Inc., and has 16 been doing so since 2009.

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Having advertised and sold its thermometers and temperature logger devices throughout the 19

United States through its web domain "www.vfcdataloggers.com" since 2009, Control Solutions 20

21 has established common law trademark and trade name rights and protection in the marks

22 "www.vfcdataloggers.com" and "Control Solutions" from 2009 in the geographic areas in which

23 those marks were used.

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The web domain "www.vfcdataloggers.com" was initially obtained, register~ and used by

Control Solutions on the internet in 2009, thereby reinforcing Control Solutions' common law

trademark and trade name rights and protection in that mark from 2009 forward. 28

Page 3of15 COMPLAINT FOR DAMAGES



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acceptance.

13.

Defendant, Microdaq.com, Ltd., ("Microdaq") was formed, according to the New Hampshire

Secretary of State information, on November 13, 2000.

14.

On or about February 28, 2015, Control Solutions learned that Defendant, Microdaq.com, Ltd.,

was using Control Solutions' trademarks, trade names, product names and/or part numbers in

Google advertising "Adword" campaigns purchased/placed by Defendant, such that an internet

user searching one of Control Solutions' trademarks, trade names and/or product names/numbers

would receive as a search result a reference and hyperlink to Defendant/Defendant's website and

purchasing system instead of Control Solutions, Inc.

15.

In so doing, Defendant misappropriated Control Solutions' trademarks, trade names and product

names, including but not limited to:

vfcdatalogger

VFC Data Logger

VFC5000

Control Solutions Data Logger

Control Solutions Logger

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In so doing, Defendant drove customers that had searched for a Control Solutions trademark,

trade name, product name/number away from Control Solutions website and purchasing system,

and to Defendant's website and purchasing system.

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product/part numbers, replying as follows:

I want to start off by apologizing to you and let you know that both AdWords campaigns have been removed. I had no idea that we had a campaign running that targeted part numbers unique to Control SolutionsNFCDAT ALOGGERS.com. This is unacceptable and I can assure you it won't happen again. MicroDAQ.com, Ltd. prides itself on always being honest with its customers and advertising a product we don't sell, such as your VFC-5000 logger, goes against this core value. Had I known of it I would have never approved it being run.

I understand how customers might be misled by the campaign given your trademarked VFCDAT ALOGGERS.com

20.

The above communication is an admission that Defendant was running Adword campaigns

utilizing Control Solutions' trademarks, trade names, product names and/or numbers.

21.

As the result of the foregoing actions Control Solutions lost sales of its products with such sales

going to Defendant instead.

22.

Because Control Solutions typically receives revenue from recertifying devices it has sold to

customers, loss of sales because of Defendant's wrongful conduct has also resulted in Control

Solutions loss of future revenue which would have been generated from the future sale of

additional devices to prior customers, along with revenue which would have been generated from

annual re-calibration/certification of previously sold devices.

CLAIMS FOR RELIEF (ORS 646.608, Unlawful Businessffrade Practices)

23.

Control Solutions incorporates the allegations of all paragraphs above.

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Defendant's conduct constitutes unlawful business and trade practices in that, in the course of

business, Defendant ( 1) caused the likelihood of confusion or of misunderstanding as to the

sources, sponsorship, or approval of goods and/or services, (2) caused the likelihood of

confusion or of misunderstanding as to affiliation, connection, or association with, or

certification by, another, (3) represented goods and/or services as having sponsorship, approval,

characteristics, qualities as to goods and/or services that did not have such sponsorship, approval,

characteristics or qualities, and in such other ways as will be proven at trial.

CLAIM FOR RELIEF (ORS 646.638, Civil Action by Private Party)

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26.

Defendant's acts in violation of ORS 646.608 entitle Control Solutions to actual damages,

punitive damages, equitable relief, and reasonable attorneys fees and costs.

CLAIM FOR RELIEF (ORS 647.135, Trademark counterfeiting)

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Defendant's acts constitute trademark counterfeiting pursuant to ORS 647.135 in that Defendant

knowingly and with the intent to sell or distribute and without the consent of the registrant,

Control Solutions, used, displayed, advertised, distributed, and offered for sale, items and

services that were identified using a counterfeit of Control Solutions mark(s).

CLAIM FOR RELIEF (ORS 647.105, Remedies for Infringement)




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29.


Defendants acts in violation of ORS 647 et seq entitle Control Solutions to, among other

damages, all profits the Defendant derived and all damages Control Solutions suffered from the

use, display or sale or Control Solutions marks.

3 l.

It is alleged Defendant acted in bad faith, thereby entitling Control Solutions to three times the

sum of the Defendant' s profits and Control Solutions damages and reasonable attorneys fees.

CLAIM FOR RELIEF (ORS 647.107, Injunctive Relief)

32.

To the extent Defendant is or in the future does improperly use Control Solutions trademarks,

trade names, product names/numbers, Control Solutions is entitled to injunctive relief pursuant to

ORS 647.107.

CLAIM FOR RELIEF (Interference with Prospective Business Advantage)

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Defendant's conduct constitutes interference with prospective business advantage as (1) an

economic interest existed in internet users that searched Control Solutions trademarks, trade

names, product names/numbers, that, as evidenced by the search by such users, had a probability

of future economic benefit to Control Solutions, (2) Defendant knew or should have known of

such prospective relationship, (3) Defendant's wrongful acts disrupted such relationship, (4) the

Page 9 of IS COMPLAINT FOR DAMAGES



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Control Solutions has been and may continue to be damaged by Defendant's actions unless

Defendant is enjoined from using Control Solutions marks. 41.

Defendant's actions have been willful and malicious, with full knowledge of Control Solutions'

trademark rights, and in deliberate or reckless disregard of Control Solutions' rights. As a 6

1 consequence, Control Solutions is entitled to injunctive relief, damages, its costs, Defendant's 8 profits, and punitive damages.

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lO To the extent Defendant's supervisory personnel were unaware of the Google Adword 11

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campaigns improperly misappropriating and misrepresenting Control Solutions' trademarks,

trade names and/or product names/numbers, Defendant is liable for the acts of its employees

14 through respondeat superior.

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CLAIM FOR RELIEF (15 U.S.C. 1114, Trademark Infringement of the Registered Mark)

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Control Solutions incorporates the allegations of all previous paragraphs above.

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20 Control Solutions is the sole owner of the Control Solutions mark "vcfdataloggers.com.., US PTO 21

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No. 86522855.

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The goods and services provided by Control Solutions under and through the registered mark are 24

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nearly identical to goods and services provided by Defendant under its infringing use of the mark

in Adword campaigns.

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Page 11 of 15 COMPLAINT FOR DAMAGES



1 The infringing use of the mark in Adword campaigns is very similar to the registered mark,

2 being the dominant portion of both marks, and substantially the entire mark is subsumed in 3 Defendant's infringing mark and/or use. 4

5 47.

Defendant's use of the mark in Adword campaigns has likely caused confusion and/or mistake, 6

1 and/or deceived with respect to Control Solutions prior use of the mark.

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9 Defendant's use of the mark infringes on Control Solutions registered mark, thereby causing 1 O bann and damage to Control Solutions unless Defendant is enjoined. 11

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Pursuant to 15 U.S.C. 1117, Control Solutions is entitled to an injunction, its damages

14 (trebled), costs and Defendant's profits.

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16 Defendant's actions have been willful, deliberate and malicious, with full knowledge of Control

17 Solutions rights and mark registration, and therefore this case is exceptional under 15 U .S.C. 18

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1117 entitling Control Solutions to an award of its reasonable attorneys fees.

CLAIMS FOR RELIEF (15 U.S.C. l 125(a), Federal Statutoiy False Designation of Origin)

51.

22 Control Solutions incorporates the allegations of all paragraphs above.

23 52.

24 With respect to each of Control Solutions' marks, Defendant's use bas caused confusion, 25

mistake, or has deceived as to the origin, sponsorship, or approval of Control Solutions' services. 26

Such likely confusion, mistake or deception as to the origin of Control Solutions' goods and 27

services under 15 U.S.C. l 125(a) is independent of the rights affoi:ded to Control Solutions' 28




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Registered Marks under 15 U.S.C. 1114.

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Pursuant to 15 U .S.C. 1117, Control Solutions is entitled to an injunction, its damages (trebled)

and Defendant's profits.

54.

1 Defendant's actions have been deliberate, willful and malicious with full knowledge of Control

8 Solutions' rights in the marks and in deliberate or reckless disregard of Control Solutions' rights,

9 and therefore this case is exceptional under 15 U.S.C. 1117, entitling Control Solutions to an 1 O award of its reasonable attorney fees. 11 CAUSE OF ACTION 12 (15 U.S.C. 1125, Misrepresentation in Commercial Advertising or Promotion) 13 55. 14 Control Solutions incorporates the allegations of all paragraphs above. 15

56. 16

17 In misappropriating and misrepresenting Control Solutions' trademarks, trade names and product

18 names/numbers, the Google Adword search results gave the incorrect and false impression to

19 customers searching for Control Solutions' products that Control Solutions' products were

20 available through Defendant's website, or that the companies were somehow~ ox: that 21 the companies were the same, or other confusion as to the source of goods sold. 22 57. 23

24 Defendant's misappropriations and misrepresentations in commercial advertising or promotion

25 were disseminated to users of the internet that searched for Control Solutions' trademarks, trade

26 names, product names/numbers, those users having been actually deceived or tended to be

27 deceived by the return of search results.

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Page 13 of IS COMPLAINT FOR DAMAGES



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58.

Defendant's misrepresentations were likely to influence the purchasing decisions of the persons

to whom they were disseminated and/or those who received search results based on the

misrepresentations disseminated to Google for the subsequent Adword campaign.

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7 Defendant's misrepresentations injured Control Solutions by causing Control Solutions to lose 8 customers and sales, resulting in extensive business losses from loss of direct sales and future

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services to purchasers of its products.

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Defendant's misrepresentations were made in commerce.

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14 Defendant's misrepresentations were likely to cause Control Solutions irreparable harm by

15 damaging Control Solutions' reputation and the reputation of Control Solutions' products

16 referenced herein.

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PRAYER

WHEREFORE, Control Solutions prays for judgment in its favor on all claims and for an Order:

a. that Defendant's use of Control Solutions Marks has infringed, and if continuing,

22 infringes, on Control Solutions registered Marks pursuant to Oregon Revised Statutes, and under

23 common law trademark protection, and under 15 U.S.C. 1114 and 1117, and 1125(a), and

24 such other laws as applicable. that Control Solutions has been damaged by such infringement. 25

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that such infringement was willful, malicious, and in deliberate or reckless disregard of the rights

of Control Solutions;

b. that Defendant's use of Control Solutions' Marks has, and if continuing, is likely




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to cause confusion, or mistake, or to deceive as to the origin, sponsorship, affiliation, or

association of Control Solutions or its services under 15 U.S.C. l 125(a), that Control Solutions

has been damaged by such confusion, mistake, or deception, and that Defendant's conduct was

willful and malicious and in deliberate or reckless disregard of the rights of Control Solutions;

c. that permanent injunctive relief be granted requiring Defendant, its agents,

7 officers, members and assigns, and all those in privity with them, if it/they have not yet done so,

8 to cease using Control Solutions' Marks described herein, and recall all offending materials, and

9 disseminate corrections and retractions.

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d. award Control Solutions its actual damages estimated to be in excess of

$1 ,200,000.00, a trebling of such damages as appropriate and pursuant to statute, and its costs,

and Defendant' s profits;

e. that this is an exceptional case and for an award of Control Solutions costs and

attorney's fees pursuant to applicable federal and state laws; and,

such other relief as the Court may deem proper.

g. other costs, attorneys' fees, punitive damages, and such other relief as this Court

may deem proper.

Dated: a-'


Gano Lemoi Law Firm 1631 NE Broadway Street, Box 722 Portland, OR 97232 Tel: (503) 799-9745 Fax: (213) 402-3812 Email: [email protected]

Attorney for Plaintiff, CONTROL SOLUTIONS, INC.


Control Solutions, Inc. v. MicroDAQ.com, Inc. Et Al Trademark Complaint

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