Professional Documents
Culture Documents
Document 1
Filed 07/20/16
Page 1 of 11
v.
TRADEMARK CASE
S & E GOURMET CUTS, INC. a
California corporation, d/b/a COUNTRY
ARCHER; and COUNTRY ARCHER,
INC., a suspended California corporation,
Defendant.
Upon information and belief, S & E Gourmet Cuts, Inc. (S&E) is a California
corporation having a place of business at 379 E. Industrial Rd., San Bernardino, California
92408.
Case 3:16-cv-01477-BR
3.
Document 1
Filed 07/20/16
Page 2 of 11
suspended California corporation having a place of business at 22064 Van Buren Street, Grand
Terrace, California 92313.
4.
This case arises under the trademark laws and copyright laws of the United
States pursuant to 15 U.S.C. 1051-1127 and 17 U.S.C. 101-1332. This Court has
jurisdiction of the subject matter of this action pursuant to 28 U.S.C. 1331 and 1338(a). The
request for declaratory relief is based on 28 U.S.C. 2201 and 2202.
5.
This court has personal jurisdiction over defendants, or one of them, because,
upon information and belief, defendants, or one of them, advertise and sell COUNTRY
ARCHER jerky within this state, have sent a letter into this state threatening a resident of this
state, and have otherwise established contacts within this state sufficient to permit the exercise of
personal jurisdiction. Venue is proper in this district pursuant to 28 U.S.C. 1391(b)(2) and (3).
FACTS
6.
SMOKER since 1975 for processed meats and is the owner of U.S. Trademark Registration No.
3,214,413 for the mark TILLAMOOK COUNTRY SMOKER for processed meats sold
refrigerated and unrefrigerated as snack food filed September 21, 1999, issued March 6, 2007,
and claiming a date of first use in 1975. A Trademark Office Record of this trademark
registration is attached as Exhibit A. The products with which this mark is used are referred to
hereinafter as jerky.
7.
Upon information and belief, defendants, or one of them, are the owner of U.S.
Trademark Registration No. 4,291,993 for the mark COUNTRY ARCHER for beef jerky; jerky,
filed July 2, 2012, issued February 19, 2013, and claiming a date of first use as October 1, 2000.
PAGE 2 COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
Case 3:16-cv-01477-BR
Document 1
Filed 07/20/16
Page 3 of 11
Upon information and belief, defendants, or one of them, are the owner of U.S.
Trademark Registration No. 4,423,957 for the mark COUNTRY ARCHER JERKY CO EST
1977 and Design for beef jerky; jerky, filed on July 2, 2012, issued October 29, 2013, and
claiming a date of first use of June 23, 2012. The registration states that color is not claimed as
a feature of the mark. A Trademark Office Record of this trademark registration is attached as
Exhibit C.
9.
Tillamook Country Smoker Products are sold throughout the U.S. and in foreign
countries. Upon information and belief, Tillamook Country Smoker is one of the four largest
purveyors of jerky in the United States.
10.
TILLAMOOK COUNTRY SMOKER has become well known for quality jerky.
11.
Tillamook Country Smokers use of TILLAMOOK COUNTRY SMOKER prior to adoption and
first use of the trademarks shown in Exhibits B and C.
12.
letter from the Stradling Law Firm (Stradling) on behalf of S & E Gourmet. Prior to receipt of
this letter neither Tillamook Country Smoker nor its representatives had any communication with
Stradling or defendants regarding trademarks, trade dress, copyrights or unfair competition and
were unaware that a dispute or disagreement, or even the potential for a dispute or disagreement,
existed between parties.
Case 3:16-cv-01477-BR
14.
Document 1
Filed 07/20/16
Page 4 of 11
Communications Pursuant Rule 408 of the Federal Rules of Evidence, is in truth a demand
letter accusing Tillamook Country Smoker of trademark infringement, copyright infringement,
trade dress infringement and violation of Californias Unfair Competition Law.
15.
Case 3:16-cv-01477-BR
Document 1
Filed 07/20/16
Page 5 of 11
likelihood of confusion which is the statutory language defining infringement (see 15 U.S.C.
1117(1)(a) and 1125(a)(1)(A).)
17.
Country Smoker and defendants are too similar, the July 12 letter presented the comparison
below, also attached as Exhibit D.
Case 3:16-cv-01477-BR
18.
Document 1
Filed 07/20/16
Page 6 of 11
In connection with the assertion that the respective product packaging is too
similar, the July 12 letter presented the comparison below, also attached as Exhibit E.
19.
The July 12 letter is a barely disguised threat to sue Tillamook Country Smoker
for trademark infringement, copyright infringement, trade dress infringement and violation of
Californias Unfair Competition law if Tillamook Country Smoker does not comply with
defendants demands by a specific deadline, and there is a clear and immediate justiciable
controversy between plaintiff and defendants.
20.
parties having adverse legal interests of sufficient immediacy and reality to warrant the issuance
of a declaratory judgment.
21.
Tillamook Country Smokers use of its current trademark and trade dress does
not infringe Country Archers trademark, trade dress or copyright rights, and does not violate
Californias Unfair Competition law, and there is no objectively reasonable basis for defendants
Case 3:16-cv-01477-BR
Document 1
Filed 07/20/16
Page 7 of 11
to claim that Tillamook Country Smokers use of its trademark and packaging violates Country
Archers rights.
22.
The thinly veiled threat of a lawsuit for the claims described above creates
uncertainty and apprehension and Tillamook Country Smoker requests that this Court confirm by
declaratory judgment that Tillamook Country Smoker may continue to use its trademark and
packaging as currently configured.
FIRST CLAIM FOR RELIEF
(Declaration of Non-Infringement of Trademarks)
23.
COUNTRY SMOKER and Trademark Registration No. 3,214,413. The registration is valid and
subsisting and Tillamook Country Smoker is entitled to use the mark TILLAMOOK COUNTRY
SMOKER for jerky.
25.
not violate defendants rights in either of defendants registered trademarks shown in Exhibits B
and C, nor any common law rights in said marks.
26.
The threats by defendants, or one of them, are unreasonable and in bad faith
making this case exceptional and Tillamook Country Smoker is entitled to recover its reasonable
attorney fees pursuant to 15 U.S.C. 1117(a).
SECOND CLAIM FOR RELIEF
(Declaration of Non-Infringement of Trade Dress)
27.
Case 3:16-cv-01477-BR
28.
Document 1
Filed 07/20/16
Page 8 of 11
SMOKER in the manner shown in Exhibits D and E does not violate any trademark rights of
defendants.
29.
The threats by defendants, or one of them, are unreasonable and in bad faith
making this case exceptional and Tillamook Country Smoker is entitled to recover its reasonable
attorney fees pursuant to 15 U.S.C. 1117(a).
THIRD CLAIM FOR RELIEF
(Declaration of Non-Infringement of Copyright)
31.
0001960764 for the design of the Country Archer product packaging shown below.
Case 3:16-cv-01477-BR
33.
Document 1
Filed 07/20/16
Page 9 of 11
Tillamook Country Smokers product packaging below does not violate any
34.
product packaging infringes defendants copyright rights is unreasonable and in bad faith and
Tillamook Country Smoker is entitled to recover its reasonable attorney fees pursuant to 17
U.S.C. 505.
FOURTH CLAIM FOR RELIEF
(Declaration of Non-Infringement of Cal. Bus. & Prof. Code 17200)
35.
portions of Californias Unfair Competition laws pertaining to the matters described above.
Case 3:16-cv-01477-BR
Document 1
Filed 07/20/16
Page 10 of 11
PRAYER
WHEREFORE, Plaintiff Tillamook Country Smoker prays for declaratory judgment in
its favor on all claims for relief and for an order:
A.
COUNTERY SMOKER for processed meats and its use of the mark for processed meats does
not infringe the rights of defendants, or one of them, in the mark COUNTRY ARCHER;
B.
C.
SMOKER in the manner shown in Exhibit D does not infringe any rights of defendants, or one of
them, in COUNTRY ARCHER;
D.
not infringe any copyright rights of defendants, or one of them, in defendants product packaging
including the claimed registered form of No. VA 0001960764;
F.
That Tillamook Country Smokers activities described herein do not violate Cal.
That the threats by defendants, or one of them, to sue Tillamook Country Smoker
for trademark infringement and trade dress infringement were unreasonable and in bad faith,
making this case exceptional and Tillamook Country Smoker is entitled to an award of its costs
and reasonable attorney fees pursuant to 15 U.S.C. 1117(a);
H.
unreasonable and in bad faith, and Tillamook Country Smoker is entitled to an award of its
PAGE 10 COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
Case 3:16-cv-01477-BR
Document 1
Filed 07/20/16
Page 11 of 11
Enjoining defendants from asserting that Tillamook Country Smokers use of its
trademark in the form shown herein and packaging in the form shown herein violates the
trademark, trade dress or copyright rights of defendants; and
J.