Namu v. Namu Haight Declaratory Relief Complaint

8/19/2019 Namu v. Namu Haight Declaratory Relief Complaint

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Page 1 – COMPLAINT

Darian A. Stanford, OSB No. 994491

[email protected]

Scott T. Rennie, OSB No. 144154

[email protected]

J. Curtis Edmondson WSB 43795 (pro hac vice pending)

[email protected] NELSON STANFORD111 SW Fifth Avenue, Suite 1940

Portland, OR 97204

Tel: 503.417.7777Fax: 503.417.4250

Of Attorneys for Plaintiff

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

NAMU, INC., an Oregon Corporation, dba

NAMU KOREAN AND HAWAIIAN, and NAMU KILLER KOREAN BBQ,

Plaintiff,

v.

NAMU HAIGHT, LLC., a California LimitedLiability Company; DAVID LEE, an

Individual

Defendants.

Case No.:

COMPLAINT

1. DECLARATORY RELIEF ACTION

PURSUANT TO A CLAIM OFTRADEMARK INFRINGEMENT;

2. CANCELLATION OF TRADEMARKS

AT THE UNITED STATES PATENT AND

TRADEMARK OFFICE; AND,

3. OREGON UNLAWFUL TRADE

PRACTICES ACT

(28 U.S.C. §2201)

INTRODUCTION

1. This dispute arises from the use of the word “NAMU” in connection with selling

Hawaiian-Korean barbeque in Portland. Plaintiff, Namu, Inc., Clint Colbert built the business

from scratch starting in 2010. A video of his first location was posted to the Internet on August

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23, 2010. (see https://vimeo.com/14355734). Since opening in 2010, he has expanded from this

humble start to three locations inPortland.

2. The two NAMUs, one in Portland, NAMU PDX, and one in San Francisco,

NAMU SFO, have coexisted peacefully for years. This is largely due to the fact that the Bay

Area and the Northwest are distinct geographic regions for the purpose of gastronomic tourism.

Where San Francisco is home to many ultra-gourmet restaurants, Portland prides itself on its

accessibility to international style street food.

3. Without provocation, or any evidence that consumers in the Northwest and

consumers in the Bay Area are confused by the two businesses, NAMU SFO’s lawyers

demanded that NAMU PDX stop using the word “NAMU”.

4. NAMU PDX cannot “stop” using the name NAMU any more than NAMU SFO

can stop using their name without suffering irreparable harm.

5. This declaratory relief action requests an order from this Court that NAMU PDX

may use the word “NAMU” in connection with serving food in the Pacific Northwest and to

enjoin NAMU SFO from advertising and marketing their restaurant services under the name

Namu in the same region.

PARTIES

3. Namu, Inc., (“Plaintiff” or “ NAMU PDX”) is an Oregon Corporation which operates

three food carts throughout the Greater Metropolitan Area. Plaintiff has continuously operated its

food carts in interstate commerce under the names Namu Korean & Hawaiian, and Namu Killer

Korean BBQ. Plaintiff has never had a physical operation outside of the Greater Metropolitan

Area.

4. Based on information and belief, Namu Haight, LLC, (“Defendant “or “ NAMU SFO”)

is a California Limited Liability Company which has operated the Namu Gaji Restaurant in San

Francisco. Based on information and belief, Defendant has operated under the name “Namu

Gaji” . NAMU SFO has filed for two USPTO trademarks: App. Serial No. 85/461,412

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(“NAMU” word), and App. Serial No. 85/738,256 (“NAMU” design plus word).

5. Further, based on information and belief, Defendant has never operated a restaurant

outside the San Francisco Bay Area and its name has never been used in interstate commerce.

JURISDICTION AND VENUE

6. This action arises under the Declaratory Relief Act, 28 U.S.C. §2201 et seq., and 28

U.S.C. §1331. The Court has personal jurisdiction over Defendant for the following reasons:

Defendant made unprovoked and unwarranted demands to Plaintiff based on Plaintiff’s use of its

name in the usual course of its business located within this judicial district; on information and

belief Defendant ordered that Plaintiff cease using its commercial name pursuant to its rights at

Common Law; and, on information and belief, Defendant ordered that Plaintiff cease using its

commercial name pursuant to its rights under the Lanham Act 15 U.S.C. 1051 et seq.

7. Venue for this action is proper under 28 U.S.C. §1391(b)(2) because substantially all

of the events giving rise to this action have occurred within this judicial district.

FACTUAL BACKGROUND

Geographic Regions and Relevant Markets

6.

The Pacific Northwest Region (“PNW”) is generally divided into two geographic

sub areas: the Northwest Coast and the Northwest Plateau. (https://en.wikipedia.org/ wiki/

Pacific_ Northwest). Within the Northwest Coast region, there are three metropolitan markets:

Portland, Seattle, and Vancouver. Collectively these three markets have approximately 7.5M

people.

7. The San Francisco Bay Area (SFBA) is a region located near San Francisco, CA

that includes Nine California Counties: Alameda, Contra Costa, Marin, Napa, San Francisco, San

Mateo, Santa Clara, Solano, and Sonoma. Likewise, these nine counties also have a population of

approximately 7.5M people. See https://en.wikipedia.org/wiki/San_Francisco_Bay_Area.

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8. Due to the large distance between San Francisco and Portland, and great climatic

differences (PNW has rain, SFBA does not), restaurant consumers are drawn primarily from local

populations. While, visitors and food critics may be out of town guests when they visit NAMU

PDX or NAMU SFO they never confuse what city they are eating in while consuming the food

provided.

9. The mark which is used by NAMU SFO appears below:

The Beginning of NAMU PDX and Clint Colbert

9. Beginning in 2010, Plaintiff’s owner, Clint Colbert (“Colbert”) set out with the sole

commercial purpose of providing high quality Hawaiian and Korean Barbeque. Mr. Colbert’s

goal was to start a food cart in Portland with the goal expanding in the PNW and Northwest Coast

region.

10. Upon opening in April 2010, Namu PDX was located at 33rd and Hawthorne in

Southeast Portland under the name “Namu Killer Korean BBQ” using the Namu Design. (shown

below). Subsequently, in June 2010, NAMU PDX move to Southeast 43rd and Belmont, with

new signage as “Namu Korean & Hawaiian.” At the time of opening his restaurant, Colbert was

not aware of any other restaurant and/or food service provider in the Greater Metropolitan Area,

or the United States operating under the name “Namu.” NAMU PDX has grown substantially,

and has added two additional locations in the PNW at Southeast 28th and Division, and in the

South Waterfront known as the Gantry, located on Southwest Moody Avenue. Each of the three

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locations uses the “Namu Korean & Hawaiian” name and symbol, as shown below:

11. Throughout the six year period Plaintiff has always remained in Portland as part of

PNW. NAMU PDX has continuously used the Namu name and has been recognized by customers

in Portland, and the PNW region. NAMU PDX has seen their establishments praised in food

guides for their respective localities. (Exhibit A).

NAMU SFO’s Demand Letters

12. On January 26, 2016, without any provocation, Defendant sent a cease and desist letter

(“January Demand Letter”) to Colbert’s former business partner, Gary Evans (“Evans”),

demanding that Namu, Inc. cease and desist its use of the Namu Korean and Hawaiian and Namu

Killer Korean BBQ names. The January Demand Letter states that Namu Gaji name enjoys

protection at common law and under the Lanham Act. (Exhibit B).

David Lee’s Fraudulent Trademark Applications

13. David Lee applied for, and was granted a word mark, “Namu Gaji,” U.S. Trademark

Regustration No. 4,777,130 (“‘130 Mark”). The ‘130 mark was registered on July 21, 2015.

(Exhibit C).

14. David Lee also applied for, and was granted a design plus word mark, U.S. Trademark

Registration No. 4,334,874, (“‘874 Mark”). The ‘874 Mark was registered on May 14, 2013.

(Exhibit D).

15. The basis for the ‘130 and ‘874 registration was David Lee’s representation to the

USPTO that David Lee is the individual who owns the mark. A search of the San Francisco

County Fictitious Business Name Registry contradicts this; rather, “Namu Gaji” is owned by

“Namu Haight, LLC.” (Exhi bit E). Currently, the California Secretary of State has suspended

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Namu Haight, LLC from conducting business activity. (Exhibit F).

16. The United States Trademark Manual of Examination Procedure (“TMEP”) clearly

states that the owner of the mark must been the applicant. TMEP §1201; Chien Ming Huang v.

Tzu Wei Chen Food Co. Ltd , 849 F.2d 1458, 7 U.S.P.Q.2d 1335 (C.A. Fed., 1988).

Counsel Could not Resolve this Dispute

17. On February 19, 2016 (“February Letter”), Plaintiff replied to then January Demand

Letter acknowledging Defendant’s letter and arguing that Defendant’s held no common law rights

to the Namu name in the Metropolitan Area. (Exhibit G). Counsel for NAMU PDX and NAMU

SFO have exchanged subsequent letters with no resolution.

COUNT 1

DECLARATORY JUDGMENT OF NON-INFRINGEMENT

18. NAMU PDX repeats and realleges each of the allegations set forth in paragraphs 1

through 17, and the same incorporated herein by reference.

19. NAMU SFO asserts that it holds superior rights to the word mark “Namu Gaji” and

similar names to Plaintiff.

20. NAMU SFO has never operated an establishment under the “Namu Gaji” nor any

other similar name in the PNW.

21. NAMU SFO’s federally protected rights under the ‘130 and ‘874 registrations do not

exist based on its fraud on the USPTO.

22. NAMU PDX has been using the names “Namu Korean & Hawaiian” and “Namu

Killer Korean BBQ” continually in commerce since 2010.

23. Therefore, NAMU SFO holds no rights to “Namu Gaji” or similar names at common

law within the PNW.

/ / /

/ / /

/ / /

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COUNT 2

TRADEMARK CANCELLATION OF THE ‘130 and ‘874 Marks

24. NAMU PDX repeats and realleges each of the allegations set forth in paragraphs 1

through 23, and the same are incorporated herein by reference.

25. David Lee applied for two trademarks at the USPTO stating he was the owner of the

‘130 and ‘874 marks.

26. David Lee’s representation was false and fraudulent in view of the FBN filing in San

Franscisco County that Namu Haight, LLC owns the “Namu Gaji” mark. Further, the actual

owner of the mark, Namu Haig, LLC, has been suspended by the California Secretary of State.

COUNT 3

VIOLATION OF OREGON’S UNLAWFUL TRADE PRACTICES ACT

27. NAMU PDX repeats and realleges each of the allegations set forth in paragraph 1

through 26, and the same are incorporated herein by reference.

28. NAMU SFO made demands that it has valid USPTO marks, namely the ‘130 Mark

and the ‘874 Mark, and asserted other enforceable rights in the name NAMU. Further, NAMU

SFO demanded that NAMU PDX should cease using the NAMU name.

29. NAMU SFO’s demands were, in fact, false. These false demands have damaged

NAMU PDX to the extent that it has been forced to seek legal advice on responding to these

demands. Further, NAMU PDX is damages insofar as it cannot expand in the PNW without the

damoclean sword of litigation hangin over its business. Finally, the value of NAMU PDX has

been significantly dimished while NAMU SFO’s unwarranted and meritless demands are pending

as any potential buyer would be forced to discount the goodwill associated with the NAMU PDX

name.

/ / /

/ / /

/ / /

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PRAYER FOR RELIEF

ON ALL COUNTS

A. NAMU PDX seeks declaratory judgment that it is the priority holder to the mark

“Namu” and variations thereof in the class of goods for restaurant services within the PNW;

B. NAMU PDX seeks declaratory judgment that NAMU SFO, David Lee, their agents,

servants, assigns, and all other related parties, do not hold any rights to the “Namu” mark or any

variations thereof in the PNW;

C. A temporary restraining order, preliminary and permanent injunction against NAMU

SFO, David Lee, their agents, servants, assigns, or related parties from interfering with NAMU

PDX customers in the PNW, by claiming they are the owner of “Namu” or similar sounding

names in the class of goods for restaurant services within the PNW;

D. Cancellation of the ‘130 Mark and the ‘874 Mark for f raudulent registrations by David

Lee in front of the USPTO;

E. Actual damages pursuant to Oregon’s Unlawful Trade Practices Act;

G. Reasonable Attorney Fees;

H. Costs of Suit; and,

I. Any and all other appropriate nondiscriminatory measures to overcome the above

described actions of Defendant.

DATED: March 15, 2016

SLINDE NELSON STANFORD

By: /s/ Darian A. Stanford.

Darian A. Stanford, OSB No. 994491Email: [email protected]

Scott T. Rennie, OSB No. 144154

Email: [email protected]

Attorney for Plaintiff

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EXHIBIT A

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10/291/

owned and operated

by

Gary Evans and Clint Colbert,.

Namu offers up only a few items, but those items sate

your BBQ appetite. The pulled pork, a hunk of love that

had been marinating

all

day is served w

i

th cabbage and

a

superb

h

omemade honey horseradish sauce on

a

toasted bun. The pork, sourced locally

fro

m Sweet Briar

Farms was decadent and the entire sandwich melted In

my mouth. was supposed to brtng It home to share,

but it never made it off the lot. O her items on the menu

include Korean

short

ribs

-

rice served with peanu

t

sauce, some ribs, cucumber salad, klmchee and sesame

spinach. For 7, that is quite a meal. They offer a veggie

bowl which, from

a

review by Bar Pilot over at the

Portland Monthly, is a spicy, satisfying safari of flavors,"

Gotta try that sometime.

21 Comments

Namu

Hawth

o

rne, always

a

destination spot for

many Portlanders, Is now

a

destination for

food

cart

lovers. With Cartopia at SE 12th

and Hawthorne redefining late

ni

ght nosh,

and the venerable Whole Bowl up around

40th, Hawthorne knows food. Now, a new

pod has spring up in front of House of

Vintage at SE 33rd. Namu, a cool hand-bullt

ca rt with a

rustic steel

roof is

one o

f

those

new carts serving up

a

tasty menu of

Korean

BBQ.

The Story:

Location: SE 43rd and Belmont

dleselbor

June 17, 2010 Written by dieselboi

Namu

Killer

Korean

Q

Aovrnns~

.'.f.H-

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


11/29ttp://www.foodcartsporUand.com/2010I06/17/namu-killer-korean-bblj

Chrlsttne

says:

June

25,

2010 at 9:37 am

Awesome cart Super delicious and wonderful. Had the vegan bowl and it was completely

worth it. Peanut sauce on the rice was drool-worthy

/lili Amber

Case

says:

11.j j June 22, 2010 at

12:40

pm

Hey there's a Mexican cart/truck right next door to this one in front of the Vintage place. I had

their veggie burrito and Itwas quite tasty. Check It out

~ J says:

~,:,· June 21, 2010 at

11:42

am

I love the vegan bowl herel I only wish they offered tofu in the bowl. But it

is

the perfect mix of

rice, spinach, cucumber, and kim chi MMMM. And the portion is appropriate, not too much

and not too little.

df Kr1sttna

says:

llfi ' June

17,

2010 at4:30 pm

I love this cart so much. The pulled pork is the perfect blend of sweet and salty, and every bite

is juicier than the last. The $1 kimchi is also pretty delicious. I haven't gotten around to trying

out the other meats (along with the short ribs, they also have

a

chicken sandwich), but

hopefully I will soon.

~'£

Natalle

says:

·

~: June

17, 2010 at B:13 am

Comments

Filed Under: Debit/Credit Cara

Accepted

Dinner Korean, Lunch,

Salads

, Sandwiches. SE 43rd and Belmont;

Southeast-Portlan

d,

Vegetarian Options Weekends

f Facebook 'o

j

- Twitter

l

Cr Google ~ Reddit

j ii/Iii

Ema .

II

.

[

6 Print. :

INSERT_MAP

Hours: Daily,

11

am-7pm

Phone: 503 828 4260

• Pulled Pork Sandwich: sweet horseradish sauce, pulled pork, cabbage and BBQ sauce on

toasted bun - 5

• Korean Short Ribs: rice w/peanut sauce, ribs, kimchee, cucumber salad and sesame spinach -

7

•

Veggie Bowl: rice, cucumber salad, sesame spinach, kimchee, drizzled with peanut sauce - 4

sample Menu:

Namu

is

just the start of the great carts opening at 33rd and Hawthorne. They are open daily to

serve you up both lunch and dinner. Since they only have

a

few items, you know they focus their

energy to make them the best they can. Drop on by Namu, say hi to Gary and Clint. check out

their

cool cart and let them know Food Carts Portland sent ya.

Namu

1912016

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12/291/

.sfgate.com/restaurantslbarbites/articlelNamu-Gaji-i n-S-F-Heppy-hour-for-whole-fam

ily-4180656.php

If you have miniature soba slurpers, it's a great opportunity to

try the

California-inspired

Korean restaurant's

bar

menu and deals on drinks without having to worry about the crowd

Bar bite and kid-friendly aren't usually said in

the

same breath, and certainly not in

crowded Mission District restaurants. Yet Namu Gaji bridges

that

gap by offering a kk

menu during its happy hour, when the restaurant isn't as packed.

Sous chef Daniel Lim cooks a piece of beef on the grill at Namu Gaji in San Francisco.

IMAGE

1

OF 4

By

Tara Duggan Updated

3:11

pm, Wednesday, January

9, 2013

ADVERTISEMENT

Namu Gaji in S F : Happy

hour for whole f mily

SF

G TE

http://www.sfgate.com/restaurants/barbites/article/Namu-Gaji-in-S-F-Happy-hour-for-whole-family-4180656.php

Namu Gajl inS.F.: Haw,

hour

for wholefamlly-SFGate

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13/29http://www.sfgate.com/restaurants/barbites/article/Nam u-Gaji-in-S-F-Happy-hcu-for-whole-family-4180656.php

Also

on tap:

During happy hour, the Seitokujunmai ginjo sake goes for 6, and

there

are

always soju shots for 2.

Signature

drink:

During happy hour, beers on tap are 3, including the proprietary Tillie'

Union Ale

,

a rice ale made by Magnolia Brewery. Wine is also available at a discount, like

th

Jo

Landron Atmospheres

brut

sparkler ( 6).

Killer app: Korean tacos { 3 each) are a must-order, with their nori wrapper. Kids can

chose from options like a rice plate with mung bean sprouts, kimchi, toasted seaweed

and

a

hot dog { 9) or a mini version

of

the okonomiyaki, a savory pancake with shredded

vegetables

and

meat { 6).

Best seat:

While

bar

seats rim

the

restaurant, the handful facing the traditional charcoal

grill make for good meal-side entertainment.

The crowd:

During happy hour, some families come in; otherwise it's younger couples and

groups of friends.

The vibe: Warm and casual, with thick wood-slab tables, wood rafters and trim, lots of

bar

seating and

a

long communal table.

Namu Gaji is

run

by chef Dennis Lee and his brothers David

and

Daniel. After opening

a

restaurant

in

the

Richmond District

and

gaining a broader audience with a Ferry Plaza stam

the

brothers

relocated

to

Dolores Park

last

year.

Namu Gaji

in

S.F.:

HSWY

hour f whole family- SFGate

19/2016

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14/29


EXHIBIT B

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


15/29

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,. .

.

. .

.

__ . ~ ,

.

_

.• .

•.~•t~~ ~

:l,~

,

yeur

.

-0.1;,~, Q&met ,~amu

:Citt~H-~~~ ~i(orean

Haw~·i~n

~ an.9. ' 'N J ~Ut,r]{g~ :·aarr ·1 .. :~~~Jl

t

7011ffbo

~

-:

~

-

.i

·

:

•arious

oeatf()ttS

in.Pottland

~

--

~gon

,

·

wll,i~

-

sar.e-

~

con

..

,ty

:iq 1

:o.,,aJentt$

tt1a~;

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


16/29

. . . . .

H~~ght

trusts

you

meant no. hatm

to it ill

taking

the .term "aamu" for

.

your

,own

use

matter.may· ~tiU be resplved,ainicably withy.our·cooperation. In

regard. and to protect its rights and avoid confusion, .N .amu ,~ui.?9, tliatyou ~

·

oftluftenn

"name" in

connection

with your food carts

and

.

transr,r to

It

y(lµf

URL namufoodoart.com.

· · ·

Nam11 .

Haight~s

·willingness to ami~iy ettle: this

m

~t

it

ij~~

0:f::~

:'

i;JJ~$

'

seriou$ly.

Yo.~

a~ent

Witlihithe

.next

1

:

0:

l

iiiys''.·af·eeasc:

,

Use

term

5

~natnu'•

~~ to

·

adop~ • -replacement nan,~. t.h,ti~. 1'Qt l;~,tf~~y

umilat. will

fier action ori Namu

Haight'.s

part unn~s.aa:y •. ?{~ fi~ y.~ur

~g~

t-

and retuming this

letter

no ·1tter ,thmi:Febtuary S/20lti

.,

··we ~p~ :)fOUJ'

;®o~().n,JII thismatter·and-lookfotwata to.y&tt~~speedf~ly.

.. ..

. .

.

•

.. :. -·

:

r¢~tttl,:come

o

:

our.attention

that you are usin.gthe

tenn·'~namun

in ·eonnect:ion

•rts

as

~tained

ln tht

'

name '~Na.mu .

Food

Cart,

••.Namu Korean.-~

j&Ni:mp KillerKo

r

ean

BBQt and as :contained iA

·the

internet .demaJtt · -

''na,nufoodcart.eomt which

are

confusingly

si

milar

ti)

Namu.

Hajgitr•s

tr,tde._,._.

: ·

use of the

infringini names is likely to

cause c~t~ers-of

.Namu

Flajg~t's.

:

i,.- . _ .

->,

as well as the general national audience

. familiar.with

its restaurant,, to

: .-.:

\ ·\

a

connection

between

you and its

restautants,.whi'ch there

is

not. ' .

eurr~ntly owns U.S .~Tr.a~em~k Registra~·onsfortbe ~ord ~rk N.A~L:_OAJ .

;

4777130).and·for

.

the

NAlvlU d~gn.mark(No._433.4874),

both

~n oonn1:°tton.w1tb

and bar

services,

in~ludjng

carryout .~ces;

restaunmt

and

cat~ng

.

.

'' The

NAMU

and

NAMU

OAJJ

trademark, are recognized

nationaUy

~

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


17/29

Date

Print

Name ed

Title

Signature

Accepted

and

Agreed,

as an

Authorized Signatory:

Very truly yours,

Nothing

in this letter

shall be construed

as a

waiver

of

any

ngbt or

remedy

available

to

Namu

Haight internationally

and/or

in the

United

Statea. an 0f which ·

ar~ expressly

reserved.

Gary Bvans

January

26)2016

Page

3 .

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


18/29


EXHIBIT C

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


19/29

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


20/29

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


21/29


EXHIBIT D

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


22/29

May 14, 2013

(REGISTRANT) Lee, David INDIVIDUAL UNITED STATES 778 11th Avenue San Francisco

CALIFORNIA94118

4334874

February 26, 2013

85738256

September 25, 2012

1A

1A

25.03.06 - Backgrounds covered with wood graining; Wood graining (background)

NAMU

The English translation

of namu

in

the mark is tree or ''wood .

IC 043. US 100 101. G S: Restaurant and bar services, including restaurant carryout services;

Restaurant and catering services. FIRST USE: 20061201. FIRST USE IN COMMERCE: 20061201

(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS

Use the Back button

of

the Internet Browser

t

•

TT11R

St :i1u

JSSIGtl St atu s

Word Mark

Translations

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Services

Mark Drawing

Code

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Filing Date

Current Basis

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Basis

Published for

Opposition

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Number

Registration Date

owner

return t TESSJ

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fSOR

.

I

Start

~·---

Jump

i ----

-

~

···..

Llat

At: OR ·- ·· -·

to

record: Record

8

out of 14

iiiiiiHii 14¥ili •%1GtMH ;;; ;; IPA M WbiMiMW 4 4 4

IJIMiiM •iiiH•f·i

IIMMII

IAiiMN

~~~ o ~t

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23/29

.HOME I SITE INDEX SEARCH I eBUSINESS

I

HELP PRIVACY POLICY

illi

LIVE

Color is not claimed as a feature of the mark. The mark consists of a crosscut of a wooden tree with

the word namu in the lower right hand corner.

SERVICE MARK

PRINCIPAL

Vijay K. Toke

ttorney of

Record

Description of

Mark

Type of Mark

Register

Live/Dead

Indicator

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


24/29


Exhibit E

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


25/29

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


26/29


EXHIBIT F

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


27/291/

Privac:t statement Free Document.Readers

Copyright

©

2016 Ca lifomia Secretary of

State

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to Search Results

odify Search New. Search Printer Frlendly

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• For information o checking or reserving a name, refer to Name Availabili~.

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Indicates the information is not contained in the Cali fornia Secretary of State's database.

Note: If the agent for serviceof process s a corporation, the addressof the agent may be requested

by ordering a status report.

101 LUCAS VALLEY RD STE 300

SAN RAFAEL CA 94903

~ ' t

t


28/29


EXHIBIT G

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&


29/29

Regards

Nothin

g in this le

tter s

ha

ll

be construed as a

w

ai

v

er o

f

any

rig

ht

or re

medy

av

ailable to Na

mu

Inc

.

interna

tion

all

y

a

n

d/or

in the Unit

e

d

St

a

t

es, all

of w

hich

ar

e express

l

y r

eserv

ed.

Therefor

e, Nam

u

In

c.

w

i

ll

c

o

ntinue

t

o

u

se

it

s

trad

e

n

ames

Na

mu Korean & Hawa

ii

a

n

and

Narnu Killer Korean BBQ within

th

e

Port

l

and OR Metropolitan r a until

s

uch time that Namu

Haight LLC can provid

e

credible legal

a

uthority s

upportin

g its right to use the name Namu

Namu Gaji

and/

or the Namu

Woo

d d

esi

g

n

in the

Portl

and Me

tro

p

olit

an

Ar

ea.

Thu

s,

w

hile

N

arnu

Inc

.

under

s

tand

s

your

p

ositi

on

w

e

respectfull

y dis

a

gree

t

hat you

current

ly

ho

ld a

n

y

c

ommon law ri

g

hts

or otherwi

se,

t

o use the

na

me

N

amu or

Na

mu Ga

ji w

ithin the

P

o

rtland

OR

Metropolitan Area Moreov

er

any rights you may have in Namu

Namu Gaji

and

o

r

the

N

amu Wood

de

s

i

gn

did not vest until after

N

amu

In

c. 's date o

f

first use

i

n this region rendering them une

nfor

ceab

l

e

.

Thank you fo

r

y

our

l

etter

on beh

a

l

f of

the Lee bro

th

ers and Namu Ha

i

ght LLC . Namu Inc .

wishes to resolve this ma

tter

in a timel

y

and cost effective manner As you are aware

Namu

K

orean

Hawaiian

and Narnu Kil

l

er Korean BB

Q

have been in cons

i

stent use in commerce

thr

oughout the

Portla

nd

O

R

Met

ropo

lit

an

rea

since 20 I 0 .

A

s

yo

u are also

aware

the Portland Me

t

ro

p

o

li

tan re

a

is

expansive

w

ith a radius o

f

nea

rl

y 50 m

il

es in a

ll d

i

rect

ions (e.g.

ro

ughly

Long

view, WA

-

No

rt

h;

Sherid

an,

O

R

- West

; Gov

ernme

nt Cam

p

OR

-

East;

a

nd

Sa

lem,

O

R

-

Sou

t

h).

It

is clea

r fr

om yo

ur

trademark filings that

Na

mu

H

aight

LLC did not use its mark in interstate commerce prior to November

1

2011; more th

a

n a year after Namu

Inc. 's first use in the Portland M

e

tropolitan

Are

a .

D

ear

M

r.

Tok

e

R

E: Use

of

Namu Namu

Ga

ji

Propri

etary

Mar

ks

Namu Haight, LLC Dispute with Namu Inc.

Mr.

Vij

ay T

ok

e

Coba

lt

LLP

918 Parke

r

Street

B

uildin

g A21

Be

rk

eley, CA

9

4710

T:

510

.841 .98

00

F:

510.

295

.2401

E: v

ij

[email protected]

ia

r

gular mail and email

F

ebruar

y

1

9,

201

6

SCOTT T

. R

NNIE

scott@s

in

e

ne

l

son

.com

!"#$ &'()*+,*--./&*01 23+45$67 ( 89:$; -&

Namu v. Namu Haight Declaratory Relief Complaint

Documents

Transcript of Namu v. Namu Haight Declaratory Relief Complaint