Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 1 of 14 Page ID#: 1 Kevin M. Hayes, OSB #012801 Email: kevin.hayes@klarquist.com KLARQUIST SPARKMAN, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 Telephone: 503-595-5300 Facsimile: 503-595-5301 Attorney for Plaintiff Mackenzie Architecture, Inc. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON PORTLAND DIVISION MACKENZIE ARCHITECTURE, INC., an Oregon Corporation, Civil No. 0:14-cv-00886 v. Plaintiff, COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION MACKENZIE ENGINEERING, INC. d/b/a MACKENZIE, an Oregon Corporation, and GROUP MACKENZIE INCORPORATED ARCHITECTURE PLANNING & INTERIOR DESIGN, a Washington Corporation, DEMAND FOR JURY TRIAL Defendants.
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 2 of 14 Page ID#: 2 Plaintiff Mackenzie Architecture, Inc., doing business as Mackenzie Architecture, through its attorneys, complains of Defendant Mackenzie Engineering, Inc. s, ( Mackenzie Engineering use of the mark MACKENZIE and Defendant Group Mackenzie Incorporated Architecture Planning & Interior Design ( Group Mackenzie use and registration of the mark MACKENZIE (collectively Defendants, 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 MACKENZIE ARCHITECTURE MARK AND THE NATURE OF THE ACTION 1. Mackenzie Architecture owns the mark MACKENZIE ARCHITECTURE and has been using the mark for at least nearly a decade for its architecture services. 2. Before Mackenzie Architecture adopted its MACKENZIE ARCHITECTURE mark, it used other marks comprising MACKENZIE. 3. Until recently, Defendant, Mackenzie Engineering used the mark GROUP MACKENZIE for its engineering services, which also included, in some cases, architecture services. It is believed that Defendant Group Mackenzie also used the mark GROUP MACKENZIE for its engineering services, which also included, in some cases, architecture services. It is unclear which of Defendants actually own the mark GROUP MACKENZIE as Mackenzie Engineering has stated that the mark is its mark, but Group Mackenzie is the listed owner of the trademark registration that was for GROUP MACKENZIE and has been improperly amended to MACKENZIE alone (Reg. No. 2091725. It is believed that Mackenzie Engineering and Group Mackenzie are related entities acting in concert with each other. Page 1
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 3 of 14 Page ID#: 3 4. It is believed that one or both of Defendants used the mark GROUP MACKENZIE for their services from around sometime around 1996 until about August 2013. 5. In that time period, it is believed that Plaintiff and Defendants were able to coexist using their respective marks, MACKENZIE ARCHITECTURE and GROUP MACKENZIE. 6. But then, around August 2013, Defendants dropped GROUP from the mark GROUP MACKENZIE and began operating under the mark MACKENZIE alone. 7. Defendants change to simply MACKENZIE usurps rights in all MACKENZIE formative marks and confuses consumers into mistakenly believing that Defendants and Plaintiff are associated, or that one is infringing the other. 8. Making the situation even worse in this case, Defendant Mackenzie Engineering also uses the Internet search heading for its website Mackenzie Architecture, which is of course, Plaintiff s mark. 9. Plaintiff brings this suit to stop Defendants from causing confusion with Plaintiff s MACKENZIE ARCHITECTURE mark. II. THE PARTIES 10. Plaintiff Mackenzie Architecture Inc. is an Oregon corporation operating in the state of Oregon with its principal place of business in Portland, Oregon. Plaintiff is located and does business within this judicial district. 11. Defendant Mackenzie Engineering, Inc. is an Oregon corporation operating in the state of Oregon with its principal place of business in Portland, Oregon. Defendant is located and does business within this judicial district. Page 2
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 4 of 14 Page ID#: 4 12. Defendant Group Mackenzie Incorporated Architecture Planning & Interior Design s Trademark Registration No. 2091725 states that Group Mackenzie is a Washington Corporation. Thus, it is believed that it is a Washington Corporation. Group Mackenzie s principal place of business is believed to be in Portland, Oregon, as Trademark Registration No. 2091725 states that the address for Group Mackenzie is in Portland, Oregon. Defendant is located and does business within this judicial district. III. JURISDICTION AND VENUE 13. 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 Defendants are transacting business within this judicial district and have committed acts complained of herein in this judicial district (or those acts have been aimed at and felt within this judicial district. IV. THE FACTS 14. Plaintiff has used the mark and been known as MACKENZIE ARCHITECTURE for architectural services since at least as early as 2005. 15. Plaintiff s owner s (Hilary Mackenzie father, Tom Mackenzie, was a founder of Defendant Mackenzie Engineering, Inc. in the 1960 s. On information and belief, Defendants were aware of Plaintiff s use of MACKENZIE ARCHITECTURE since at least 2005 and other MACKENZIE formative marks since at least the 1990s. Page 3
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 5 of 14 Page ID#: 5 16. Defendants did not begin use of the mark MACKENZIE alone until about August 2013. Before that time, Defendants did not use the mark MACKENZIE alone for their services. Instead, Defendants used the mark GROUP MACKENZIE for their services. 17. Defendants did not begin use of Mackenzie Architecture, shown below in Defendant Mackenzie Engineering, Inc. s Internet search heading until sometime in or after August 2013. 18. Defendants use an Internet search heading comprising Mackenzie Architecture in connection with offering architecture services to third parties. 19. Defendants use the mark MACKENZIE alone in connection with offering architecture services to third parties. Page 4
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 6 of 14 Page ID#: 6 20. Defendant Mackenzie Engineering, Inc. has taken telephone calls for Mackenzie Architecture and answered affirmatively that it was Mackenzie Architecture when asked. Defendant has then transferred the callers to employees in its architectural services department. A person in Defendant s employ has also admitted that Defendant s change to use of MACKENZIE alone for architecture services could cause confusion with MACKENZIE ARCHITECTURE. 21. Defendant Group Mackenzie is listed as the owner of federal trademark registration no. 2,091,275, which was initially for the mark GROUP MACKENZIE for architectural services; engineering services in the fields of civil, structural and transportation engineering. 22. Defendant Group Mackenzie amended trademark registration no. 2,091,275 from GROUP MACKENZIE to simply MACKENZIE by deleting GROUP in or about August 2013. 23. To amend trademark registration no. 2,091,275, Defendant Group Mackenzie told the United States Patent and Trademark Office that: The removal of the term GROUP does not impact the commercial impression of the GROUP MACKENZIE mark and that consumers are unlikely to have assigned any meaning to the term GROUP as a source identifier, and have instead perceived the term MACKENZIE as the source of the GROUP MACKENZIE mark, and that dropping GROUP does not constitute a material alternation of the original mark. 24. Defendant was wrong. 25. The mark MACKENZIE and the mark GROUP MACKENZIE have different commercial impressions and are not interchangeable. Page 5
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 7 of 14 Page ID#: 7 26. The two marks are different in at least that the first conveys the commercial impression that the mark owner and source of the services operate as a group, while the second carries no such connotation and conveys no such commercial impression. 27. Defendant Mackenzie Engineering, Inc. has even admitted that GROUP MACKENZIE conveys the commercial impression that the services offered under the mark are a full range of integrated design services and that the mark owner employs shareholder system. 28. Moreover, Defendant Group Mackenzie deleted the first word of its mark - and placement of a word as first in a mark tends to make that term dominant in a mark and be remembered by consumers. Thus, GROUP in GROUP MACKENZIE likely served as a differentiating element. 29. Regarding its change of its mark from Mackenzie Engineering, Inc. to GROUP MACKENZIE back in the 1990s, and highlighting the special commercial impression that Defendant Mackenzie Engineering, Inc. believed was conveyed by GROUP MACKENZIE, Defendant Mackenzie Engineering, Inc. has stated that: The new name [GROUP MACKENZIE] reflects the full range of integrated design services and heralds a change in company ownership moving toward a shareholder system in which employees are vested in the firm's success. (See the screen capture copied Page 6
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 8 of 14 Page ID#: 8 below. 30. The mark MACKENZIE alone lacks the commercial impression of a full range of integrated design services and a shareholder system of company ownership. 31. The Patent and Trademark Office did not republish Defendant Group Mackenzie s new mark, MACKENZIE, to allow the public to oppose Defendant Group Mackenzie s registration of the mark. Thus, Plaintiff had no chance to oppose the registration. 32. Defendants actions are knowing, willful, and without Plaintiff s authorization. Defendants are liable for the resulting acts of unfair competition, and trademark infringement. Page 7
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 9 of 14 Page ID#: 9 V. CAUSES OF ACTION A. Unfair Competition 33. Plaintiff, Mackenzie Architecture, repeats and re-alleges each and every allegation contained in the above paragraphs of this Complaint as though fully set forth herein. 34. 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. 35. Defendants use of the MACKENZIE and Mackenzie Architecture, in commerce for architecture services 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 services of Defendants and those of Plaintiff, and misrepresents the nature, characteristics, and qualities of those services. 36. 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. 37. Plaintiff is without an adequate remedy at law because Defendants unfair competition is causing irreparable injury to Plaintiff, and unless said acts are enjoined by this Court, they will continue and Plaintiff will continue to suffer irreparable injury. 38. Defendants acts of unfair competition, if not enjoined, will cause Plaintiff to sustain monetary damages, loss, and injury. B. Trademark Infringement 39. Plaintiff repeats and realleges each and every allegation contained in the above paragraphs of this Complaint as though fully set forth herein. Page 8
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 10 of 14 Page ID#: 10 40. The acts of Defendants constitute trademark infringement in violation Oregon common law. 41. Defendants use of MACKENZIE and Mackenzie Architecture, 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 Defendants services are in some way legitimately connected with, sponsored or licensed by, or otherwise related to Plaintiff. 42. Defendants use of MACKENZIE and Mackenzie Architecture, was made with actual or constructive knowledge of Plaintiff s rights in MACKENZIE ARCHITECTURE. 43. Defendants use of MACKENZIE and Mackenzie Architecture, is without Plaintiff s consent or permission. 44. Defendants acts of trademark infringement, unless enjoined, will cause Plaintiff to sustain monetary damages, loss, and injury. C. Improper Amendment 45. Plaintiff repeats and realleges each and every allegation contained in the above paragraphs of this Complaint as though fully set forth herein. 46. Defendant Group Mackenzie s amendment of trademark registration no. 2,091,275 was improper. 47. The Patent and Trademark Office should not have allowed Defendant Group Mackenzie to amend trademark registration no. 2,091,275 from GROUP MACKENZIE to MACKENZIE. Page 9
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 11 of 14 Page ID#: 11 48. GROUP MACKENZIE and MACKENZIE have different commercial impression. 49. The Court should utilize its power under 15 USC 1119 to rectify the trademark register to change Defendant Group Mackenzie s registration back to GROUP MACKENZIE. D. Improper Ownership 50. Plaintiff repeats and realleges each and every allegation contained in the above paragraphs of this Complaint as though fully set forth herein. 51. Defendant Group Mackenzie s trademark registration no. 2,091,275 is indicated in United States Patent and Trademark Office records as being owned by GROUP MACKENZIE INCORPORATED ARCHITECTURE PLANNING & INTERIOR DESIGN CORPORATION WASHINGTON 0690 SW BANCROFT STREET PO BOX 69039 PORTLAND OREGON 97201. 52. United State Patent and Trademark Office assignment records indicate that Registration No. 2091725 for GROUP MACKENZIE was assigned from Mackenzie/Saito & Associates, P.C. to Group Mackenzie Incorporated Architecture Planning & Interior Design on September 30, 1996. 53. On information and belief and according to the Washington Secretary of State records there is and has been no Washington entity known as Group Mackenzie Incorporated Architecture Planning & Interior Design. 54. As it appears that Registration No. 2091725 was assigned to a non-existent entity, the Court should utilize its power under 15 USC 1119 to rectify the trademark register to cancel Registration No. 2091725. Page 10
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 12 of 14 Page ID#: 12 PRAYER FOR RELIEF WHEREFORE, Plaintiff, Mackenzie Architecture, prays that, pursuant to 15 U.S.C. 1116 to 1125 and Oregon state law: A. The Court finds that Plaintiff owns valid and subsisting trademark rights in MACKENZIE ARCHITECTURE. B. Defendants be held liable under each claim for relief set forth in this Complaint. C. The Court grant an injunction that Defendants, their affiliated companies, and their agents, servants, employees, and attorneys, and all other persons in active concert or participation with them, be enjoined from using MACKENZIE alone (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, copy, colorable imitation or confusingly similar variation of MACKENZIE alone, as a trademark or service mark, trade name or domain name, or in advertising, distribution, sale, or offering for sale of architectural services. D. The Court grant an injunction that Defendants, their affiliated companies, and their agents, servants, employees, and attorneys, and all other persons in active concert or participation with them, be enjoined from using the term MACKENZIE adjacent the term ARCHITECTURE, such as in Mackenzie Architecture. E. The Court order as part of the injunction and pursuant to 15 U.S.C. 1116(a that Defendants file with the Court and serve on Plaintiff within thirty days after the service on the Defendants of the injunction, a report in writing under oath setting Page 11
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 13 of 14 Page ID#: 13 forth in detail the manner and form in which the Defendants have complied with the injunction. F. The Court utilize its power under 15 USC 1119 to order the Patent and Trademark Office to rectify the trademark register by cancelling trademark registration no. 2,091,275 or changing Defendant Group Mackenzie s trademark registration no. 2,091,275 back to GROUP MACKENZIE. G. Defendants be required to pay to Plaintiff s damages from Defendants use of MACKENZIE alone for architectural services, pursuant to 15 U.S.C. 1117 and the equity powers of this Court. H. Defendants be required to pay to Plaintiff profits made in connection with their use of MACKENZIE alone for architectural services, pursuant to 15 U.S.C. 1117 and the equity powers of this Court. I. Defendants be required to pay to Plaintiff its reasonable attorneys fees and disbursements incurred herein, pursuant to 15 U.S.C. 1117 and the equity powers of this Court. J. Defendants be required to pay Plaintiff the costs of this action. K. The Court award Plaintiff such other and further relief as this Court deems just and equitable. Respectfully submitted, Dated: June 2, 2014 By: _s/ Kevin M. Hayes Kevin M. Hayes, OSB #012801 Email: kevin.hayes@klarquist.com Klarquist Sparkman, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 Telephone: 503-595-5300 Page 12
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 14 of 14 Page ID#: 14 Facsimile: 503-595-5301 Attorneys for Plaintiff Mackenzie Architecture, Inc. Page 13
Case 3:14-cv-00886-AA Document 1-1 Filed 06/02/14 Page 1 of 1 Page ID#: 15 CIVIL COVER SHEET (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM. I. (a PLAINTIFFS DEFENDANTS MACKENZIE ARCHITECTURE, INC. MACKENZIE ENGINEERING, INC. d/b/a MACKENZIE and GROUP MACKENZIE INCORPORATED ARCHITECTURE PLANNING& INTERIOR DESIGN (b (EXCEPT IN U.S. PLAINTIFF CASES (c (Firm Name, Address, and Telephone Number (IN U.S. PLAINTIFF CASES ONLY (If Known II. BASIS OF JURISDICTION (Place an X in One Box Only III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff (For Diversity Cases Only and One Box for Defendant PTF DEF PTF DEF (U.S. Government Not a Party or and (Indicate Citizenship of Parties in Item III IV. NATURE OF SUIT (Place an X in One Box Only CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES PERSONAL INJURY PERSONAL INJURY PROPERTY RIGHTS LABOR SOCIAL SECURITY PERSONAL PROPERTY REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS FEDERAL TAX SUITS Habeas Corpus: IMMIGRATION Other: V. ORIGIN (Place an X in One Box Only VI. CAUSE OF ACTION VII. REQUESTED IN COMPLAINT: VIII. RELATED CASE(S IF ANY FOR OFFICE USE ONLY (specify (Do not cite jurisdictional statutes unless diversity 15 U.S.C. 1051-1127 Trademark infringement and unfair competition CLASS ACTION DEMAND $ (See instructions: 06/02/2014 /s/ Kevin M. Hayes JURY DEMAND:
Case 3:14-cv-00886-AA Document 1-2 Filed 06/02/14 Page 1 of 4 Page ID#: 16 AO 440 (Rev. 06/12 Summons in a Civil Action UNITED STATES DISTRICT COURT for the District District of Oregon of MACKENZIE ARCHITECTURE, INC., an Oregon Corporation, Plaintiff(s v. Civil Action No. MACKENZIE ENGINEERING, INC. d/b/a MACKENZIE, an Oregon Corporation, and GROUP MACKENZIE INCORPORATED ARCHITECTURE PLANNING& INTERIOR DESIGN, Defendant(s a Washington Corporation SUMMONS IN A CIVIL ACTION 0:14-cv-00886 To: (Defendant s name and address MACKENZIE ENGINEERING, INC. SW&W Registered Agents, Inc., Agent for Service of Process 1211SW5thAve.,Suite1900 Portland, OR 97204 A lawsuit has been filed against you. Within 21 days after service of this summons on you (not counting the day you received it or 60 days if you are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ. P. 12 (a(2 or (3 you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff s attorney, whose name and address are: Kevin M. Hayes Klarquist Sparkman, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint. You also must file your answer or motion with the court. CLERK OF COURT Date: Signature of Clerk or Deputy Clerk
Case 3:14-cv-00886-AA Document 1-2 Filed 06/02/14 Page 2 of 4 Page ID#: 17 AO 440 (Rev. 06/12 Summons in a Civil Action (Page 2 Civil Action No. 0:14-cv-00886 PROOF OF SERVICE (This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l This summons for (name of individual and title, if any was received by me on (date. I personally served the summons on the individual at (place on (date ; or I left the summons at the individual s residence or usual place of abode with (name, a person of suitable age and discretion who resides there, on (date, and mailed a copy to the individual s last known address; or I served the summons on (name of individual designated by law to accept service of process on behalf of (name of organization on (date I returned the summons unexecuted because ; or, who is ; or Other (specify:. My fees are $ for travel and $ for services, for a total of $ 0.00. I declare under penalty of perjury that this information is true. Date: Server s signature Printed name and title Server s address Additional information regarding attempted service, etc:
Case 3:14-cv-00886-AA Document 1-2 Filed 06/02/14 Page 3 of 4 Page ID#: 18 AO 440 (Rev. 06/12 Summons in a Civil Action UNITED STATES DISTRICT COURT for the District District of Oregon of MACKENZIE ARCHITECTURE, INC., an Oregon Corporation, Plaintiff(s v. Civil Action No. MACKENZIE ENGINEERING, INC. d/b/a MACKENZIE, an Oregon Corporation, and GROUP MACKENZIE INCORPORATED ARCHITECTURE PLANNING & INTERIOR DESIGN, Defendant(s a Washington Corporation SUMMONS IN A CIVIL ACTION 0:14-cv-00886 To: (Defendant s name and address GROUP MACKENZIE INCORPORATED ARCHITECTURE PLANNING & INTERIOR DESIGN 0690 SW Bancroft Street PO Box 69039 Portland, OR 97201 A lawsuit has been filed against you. Within 21 days after service of this summons on you (not counting the day you received it or 60 days if you are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ. P. 12 (a(2 or (3 you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff s attorney, whose name and address are: Kevin M. Hayes Klarquist Sparkman, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint. You also must file your answer or motion with the court. CLERK OF COURT Date: Signature of Clerk or Deputy Clerk
Case 3:14-cv-00886-AA Document 1-2 Filed 06/02/14 Page 4 of 4 Page ID#: 19 AO 440 (Rev. 06/12 Summons in a Civil Action (Page 2 Civil Action No. 0:14-cv-00886 PROOF OF SERVICE (This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l This summons for (name of individual and title, if any was received by me on (date. I personally served the summons on the individual at (place on (date ; or I left the summons at the individual s residence or usual place of abode with (name, a person of suitable age and discretion who resides there, on (date, and mailed a copy to the individual s last known address; or I served the summons on (name of individual designated by law to accept service of process on behalf of (name of organization on (date I returned the summons unexecuted because ; or, who is ; or Other (specify:. My fees are $ for travel and $ for services, for a total of $ 0.00. I declare under penalty of perjury that this information is true. Date: Server s signature Printed name and title Server s address Additional information regarding attempted service, etc: