Hinrichs, Proudfoot and Skov, Inc. v. McBassi and Company, Inc.

7/27/2019 Hinrichs, Proudfoot and Skov, Inc. v. McBassi and Company, Inc.

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COMPLAINT FOR TRADEMARK

INFRINGEMENT AND UNFAIR COMPETITION

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

EUGENE DIVISION

HINRICHS, PROUDFOOT AND SKOV,

INC., a Delaware Corporation

Plaintiff,

v.

MCBASSI AND COMPANY, INC., a

Maryland Corporation,

Defendant.

Civil No. _________


INFRINGEMENT AND UNFAIR

COMPETITION

JURY TRIAL DEMANDED

Kevin M. Hayes, OSB #012801

Email: [email protected] SPARKMAN, LLP

121 S.W. Salmon Street, Suite 1600

Portland, Oregon 97204

Telephone: 503-595-5300Facsimile: 503-595-5301

Attorneys for Plaintiff

HINRICHS, PROUDFOOT AND SKOV, INC.

Case 3:13-cv-01784-BR Document 1 Filed 10/07/13 Page 1 of 11 Page ID#: 1


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Plaintiff Hinrichs, Proudfoot and Skov, Inc., doing business as Good Company,

through its attorneys, complains of Defendant McBassi & Company, Inc. (McBassi)

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 GOOD COMPANY MARK AND THE NATURE OF THE ACTION1. Good Company owns the mark GOOD COMPANY and has been using

the mark for over a decade for its business consultation services.

2. Good Company also owns the design mark shown below and has been

using that mark for over a decade for its business consultation services:

3. Good Company owns Federal Trademark Registration No. 4294238 for

the GOOD COMPANY design mark shown in Paragraph 2 for [b]usiness consultation

services related to an organization's environmental planning performance and sustainable

development performance.

4. Defendant, McBassi, is using the mark GOOD COMPANY in connection

with providing business consultation services.

5. Defendant is selling GOOD COMPANY marked products in Eugene,

Oregon, as shown in the screen capture from the UO Bookstore copied below.



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6. Defendant also is offering for sale GOOD COMPANY marked products

all over the country to any person with Internet access, including in Oregon and Eugene,

Oregon, through its own bookstore at http://mcbassi.com/store-3/, as shown in the screen

capture from the Defendants website at McBassi.com shown below:



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7. Defendant is advertising its GOOD COMPANY services all over the

country on You Tube, as shown below



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8. Defendant also is attempting to register with the United States Patent and

Trademark Office nationwide rights in the mark GOOD COMPANY INDEX in

Application No. 85411715 for [p]roviding independent ratings and reviews of other

businesses for commercial purposes.

9. Defendant advertises having presented at one or more conferences in

Oregon in its list of Selected Past Presentation on its website at www.mcbassi.com.

10. Good Company brings this suit to stop McBassi from causing confusion

with Good Companys senior GOOD COMPANY trademark.



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II. THE PARTIES11. Plaintiff Good Company is a Delaware corporation operating in the state

of Oregon with its principal place of business at 65 Centennial Loop #B Eugene, Oregon,

97401. Good Company is located and does business within this judicial district.

12. Defendant McBassi is a Maryland corporation with a principal place of

business in Golden, Colorado. McBassi is doing business in this judicial district.

III. JURISDICTION AND VENUE13. This Court has jurisdiction over the subject matter of this action because

this action arises under the Federal Trademark Act, 15 U.S.C. 1051-1127, jurisdiction

being conferred in accordance with 15 U.S.C. 1121 and 28 U.S.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 U.S.C. 1338(b) and 1367. Venue is proper

under 28 U.S.C. 1391(b) in that Defendant is doing and transacting business within this

judicial district and has committed acts complained of herein in this judicial district (or

those acts have been aimed at and felt within this judicial district).

IV. THE FACTS14. McBassi uses GOOD COMPANY for its business consultation services

as shown in the screen capture below from McBassis website at

http://www.goodcompanyindex.com/services/:



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15. McBassi uses the mark GOOD COMPANY in connection with offering

business consultation services to third parties.

16. McBassi also uses the mark GOOD COMPANY INDEX for providing

independent ratings and reviews of other businesses for commercial purposes.

17. McBassis trademark application for GOOD COMPANY INDEX has

been refused by the United States Patent and Trademark Office over Good Companys

Registration No. 4294238 for the GOOD COMPANY design mark.

18. On information and belief, McBassi is aware of Good Companys GOOD

COMPANY trademark.

19. Despite being aware of Good Companys GOOD COMPANY mark, and

even being refused registration by the United States Patent and Trademark Office in view



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of Good Companys GOOD COMPANY mark, McBassi continues to use GOOD

COMPANY and GOOD COMPANY INDEX.

20. McBassis actions are knowing, willful, and without Plaintiffs

authorization. Defendants are liable for the resulting acts of unfair competition, and

trademark infringement.

V. CAUSES OF ACTIONA. Unfair Competition21. Good Company repeats and re-alleges each and every allegation contained

in the above paragraphs of this Complaint as though fully set forth herein.

22. 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.

23. Defendants use of the GOOD COMPANY and GOOD COMPANY

INDEX in commerce as alleged hereinabove is likely to cause confusion, mistake, or

deception as to the affiliation, connection, or association of Defendant with Plaintiff Good

Company or as to the origin, sponsorship, or approval of the products and services of

Defendant and those of Plaintiff Good Company, and misrepresents the nature,

characteristics, and qualities of these products and services.

24. The acts of Defendant 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.

25. Good Company is without an adequate remedy at law because Defendants

unfair competition is causing irreparable injury to Good Company, and unless said acts are



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enjoined by this Court, they will continue and Good Company will continue to suffer

irreparable injury.

26. Defendants acts of unfair competition, if not enjoined, will cause Good

Company to sustain monetary damages, loss, and injury.

B. Trademark Infringement27. Good Company repeats and realleges each and every allegation contained

in the above paragraphs of this Complaint as though fully set forth herein.

28. The acts of Defendant constitute trademark infringement in violation of 15

U.S.C. 1114(1)(a) and Oregon common law.


INDEX as alleged hereinabove is likely to cause confusion, mistake, or deception as to

the source, sponsorship, or approval of the products and services of Defendant in that

others are likely to believe that Defendants services are in some way legitimately

connected with, sponsored or licensed by, or otherwise related to Good Company.


INDEX was made with actual or constructive knowledge of Good Companys rights in

GOOD COMPANY.


INDEX is without Good Companys consent or permission.

32. Defendants acts of trademark infringement, unless enjoined, will cause

Good Company to sustain monetary damages, loss, and injury.



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PRAYER FOR RELIEF

WHEREFORE, Plaintiff Good Company prays that, pursuant to 15 U.S.C.

1116 to 1125 and Oregon state law:

A. The Court finds that Good Company owns valid and subsisting trademarkrights in GOOD COMPANY and

.

B. Defendant be held liable under each claim for relief set forth in thisComplaint.

C. The Court grant an injunction that Defendant, its affiliated companies, andits/their agents, servants, employees, and attorneys, and all other persons in active concert

or participation with them, be enjoined from using GOOD COMPANY (however spelled

or punctuated, whether capitalized, abbreviated, singular or plural, printed or stylized,

whether alone or in combination with any word(s), punctuation or symbol(s), and

whether used in caption, text, orally or otherwise), or any other reproduction, counterfeit,

copy, colorable imitation or confusingly similar variation of GOOD COMPANY, as a

trademark or service mark, trade name or domain name, or in advertising, distribution,

sale, or offering for sale of consulting services.

D. The Court order as part of the injunction that Defendant withdraw itstrademark application that comprises GOOD COMPANY.



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E. The Court order as part of the injunction and pursuant to 15 U.S.C. 1116(a) that Defendant file with the Court and serve on Plaintiff within thirty days after

the service on the Defendant of the injunction, a report in writing under oath setting forth

in detail the manner and form in which the Defendant has complied with the injunction.

F. Defendant be required to pay to Good Company profits made inconnection with its use of GOOD COMPANY and/or GOOD COMPANY INDEX,

pursuant to 15 U.S.C. 1117 and the equity powers of this Court.

G. Defendant be required to pay to Good Company its reasonable attorneysfees and disbursements incurred herein, pursuant to 15 U.S.C. 1117 and the equity

powers of this Court.

H. Defendant be required to pay Good Company the costs of this action.I. The Court award Good Company such other and further relief as this

Court deems just and equitable.

J. Jury trial is demanded.Respectfully submitted,

Dated: October 7, 2013 By: _s/ Kevin M. Hayes______________

Kevin M. Hayes, OSB #012801

Email: [email protected]

121 S.W. Salmon Street, Suite 1600Portland, Oregon 97204

Telephone: 503-595-5300

Facsimile: 503-595-5301

Attorneys for Plaintiff

HINRICHS, PROUDFOOT AND SKOV, INC.


Hinrichs, Proudfoot and Skov, Inc. v. McBassi and Company, Inc.

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Transcript of Hinrichs, Proudfoot and Skov, Inc. v. McBassi and Company, Inc.